`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`NICHIA CORPORATION,
`
`Petitioner,
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`
`Patent Owner.
`
`_______________
`
`Case IPR2018-00966
`Patent 7,652,297
`
`____________
`
`
`PATENT OWNER’S RESPONSE
`
`

`

`TABLE OF CONTENTS
`
`
`
`I. 
`
`II. 
`
`INTRODUCTION ........................................................................................... 1 
`
`OVERVIEW .................................................................................................... 4 
`
`A. 
`
`B. 
`
`C. 
`
`The ’297 Patent ..................................................................................... 4 
`
`Disputed Claims .................................................................................... 5 
`
`Claim Construction ............................................................................. 10 
`
`III.  THE CHALLENGED CLAIMS ARE NOT UNPATENTABLE ................ 11 
`
`A.  Ground 1 Fails Because Loh ’842 Fails to Disclose Each Element of
`Claims 1-6 ........................................................................................... 11 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`Claim 1 ........................................................................................... 11 
`
`Claim 2 ........................................................................................... 14 
`
`Claims 3-4 ...................................................................................... 15 
`
`a) 
`
`b) 
`
`Construction of “lower portion” and “upper portion” (claims
`3 and 4) ................................................................................ 15 
`
`Loh ’842 fails to disclose the “at least one notch” located as
`set forth in claims 3 and 4 .................................................... 19 
`
`Claim 5 ........................................................................................... 20 
`
`Claim 6 ........................................................................................... 21 
`
`a) 
`
`b) 
`
`The construction of “at the intersection” (claims 6, 9, and
`15) ........................................................................................ 21 
`
`Loh ’842 fails to disclose or suggest a notch “at the
`intersection” recited in claim 6 ............................................ 23 
`
`B. 
`
`Ground 2 Fails Because Loh ’842 Fails to Disclose or Suggest Each
`Element of Claims 1-6 and 9 ............................................................... 26 
`
`- i -
`
`

`

`C. 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`Claims 1-6 ...................................................................................... 26 
`
`Claim 5 ........................................................................................... 28 
`
`Claim 6 ........................................................................................... 29 
`
`Claim 9 ........................................................................................... 31 
`
`Ground 3 Fails Because Loh ’842 in View of Fujiwara Fails to
`Disclose or Suggest Each Element of Claims 7, 8, and 10-17 ............ 34 
`
`Claims 7-8 ...................................................................................... 34 
`
`Claim 10 ......................................................................................... 36 
`
`Claims 11-14 .................................................................................. 37 
`
`Claims 15-17 .................................................................................. 37 
`
`D.  Ground 4 Fails Because Loh ’842 and Uraya Cannot be Combined in
`a Manner that Discloses or Suggests Each Element of Claims 7, 8, and
`10-17 .................................................................................................... 38 
`
`E. 
`
`F. 
`
`1. 
`
`2. 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`1. 
`
`2. 
`
`Claims 7-8 ...................................................................................... 38 
`
`Claims 10-17 .................................................................................. 39 
`
`Ground 5 Fails Because Loh ’819 Fails to Disclose Each Element of
`Claims 1-6 ........................................................................................... 40 
`
`Claim 1 ........................................................................................... 40 
`
`Claim 2 ........................................................................................... 44 
`
`Claims 3-4 ...................................................................................... 45 
`
`Claim 6 ........................................................................................... 47 
`
`Ground 6 Fails Because Loh ’819 Fails to Disclose or Suggest Each
`Element of Claims 1-6 and 9 ............................................................... 48 
`
`Claims 1-6 ...................................................................................... 48 
`
`Claims 3-4 ...................................................................................... 50 
`
`- ii -
`
`

`

`3. 
`
`4. 
`
`5. 
`
`Claim 5 ........................................................................................... 52 
`
`Claim 6 ........................................................................................... 52 
`
`Claim 9 ........................................................................................... 54 
`
`G.  Ground 7 Fails Because Loh ’819 and Fujiwara Cannot be Combined
`in a Manner that Discloses or Suggests Each Element of Claims 7, 8,
`and 10-17 ............................................................................................. 57 
`
`1. 
`
`2. 
`
`Claims 7-8 ...................................................................................... 57 
`
`Claims 10-17 .................................................................................. 60 
`
`H.  Ground 8 Fails Because Loh ’819 and Uraya Cannot be Combined in
`a Manner that Discloses or Suggests Each Element of Claims 7, 8, and
`10-17 .................................................................................................... 60 
`
`1. 
`
`2. 
`
`Claims 7-8 ...................................................................................... 60 
`
`Claims 10-17 .................................................................................. 61 
`
`IV.  CONCLUSION .............................................................................................. 62 
`
`
`
`
`
`
`
`- iii -
`
`

`

`TABLE OF AUTHORITIES
`
`Cases 
`
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) ................................................................................... 22
`
`In re Smith Int’l,
`871 F.3d 1375 (Fed. Cir. 2017) ..................................................................... 21
`
`Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc.,
`381 F.3d 1111 (Fed. Cir. 2004) ..................................................................... 11
`
`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) ............................................................. passim
`
`Statutes 
`
`35 U.S.C. § 154(a)(2) ............................................................................................... 10
`
`Rules 
`
`37 C.F.R. § 42.100(b) .............................................................................................. 10
`
`37 C.F.R. § 42.104(b) .............................................................................................. 52
`
`37 C.F.R. § 42.104(b)(5) ................................................................................... 51, 53
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`
`
`
`
`
`
`
`
`- iv -
`
`

`

`TABLE OF EXHIBITS
`
`Exhibit Description
`
`Reserved
`Deposition Transcript of Dr. Shealy
`Declaration of Thomas L. Credelle
`Curriculum Vitae of Thomas L. Credelle
`Merriam-Webster’s Collegiate Dictionary, 10th ed. (1997), pp.
`908, 941
`Merriam-Webster’s Web Dictionary, “portion”
`Merriam-Webster’s Web Dictionary, “proximate”
`The American Heritage Dictionary on the Web, “portion”
`The American Heritage Dictionary on the Web, “proximate”
`Reserved
`PTAB E2E Notice on August 16, 2018 (EXPUNGED)
`Reserved
`Email to Petitioner Serving POPR in IPR2018-00966
`(EXPUNGED)
`Email to Board Noticing Service of POPR in IPR2018-00966
`(EXPUNGED)
`
`Exhibit
`Number
`
`2001-2007
`2008
`2009
`2010
`2011
`
`2012
`2013
`2014
`2015
`2016-2199
`2200
`2201-2202
`2203
`
`2204
`
`
`
`
`
`- v -
`
`

`

`IPR2018-00966 Patent Owner’s Response
`
`Pursuant to 37 C.F.R. § 42.107, Patent Owner Document Security Systems,
`
`Inc. (“DSS” or “Patent Owner”) files this Response to the Petition, setting forth
`
`reasons why the Board should determine that claims 1-17 of U.S. Patent No.
`
`7,652,297 (the “’297 patent”) are not unpatentable, contrary to the Petition for inter
`
`partes review (“IPR”) filed by Nichia Corporation (“Petitioner”).
`
`I.
`
`INTRODUCTION
`
`The ’297 patent discloses a light emitting device having a substrate and a
`
`reflector extending from the substrate. The reflector and substrate form a cavity, in
`
`which a light emitter is located, and an encapsulant fills the cavity. At least one
`
`first notch is located in the reflector, the at least one first notch extends
`
`substantially axially around the reflector. A second notch also may be located in
`
`the reflector. The inclusion of elements claimed in the ’297 patent, including the
`
`notch(es), serves to retard or stop delamination of the encapsulant.
`
`In total, Petitioner has asserted eight separate, yet overlapping, grounds upon
`
`which it challenges the claims of the ’297 patent. The challenges are in two
`
`groups. Grounds 1-4 are based on Loh ’842.1 However, Loh ’842 does not
`
`disclose a reflector “extending from” a substrate, and other structures and features
`
`set forth in the claims of the ’297 patent.
`
`
`1 Ex. 1004, U.S. Patent No. 7,939,842 (“Loh ’842”).
`
`-1-
`
`

`

`IPR2018-00966 Patent Owner’s Response
`
`The second set of challenges, Grounds 5-8, are based on Loh ’819,2 which
`
`all fails to disclose or suggest all aspects of the claimed light emitting device. For
`
`example, Petitioner fails to meet its burden to show how Loh ’819 meets the
`
`claimed “substrate.” In fact, the Petition itself implicitly concedes that the
`
`claimed “substrate” could be missing from Loh ’819, as the Petition alternatively
`
`argues that claims 1-6 are obvious over Loh ’819 if the Board finds that Petitioner
`
`has failed to meet its burden to show that Loh ’819 discloses the claimed
`
`“substrate.”
`
`In the face of the deficiencies of its references, Petitioner often mixes and
`
`matches different embodiments when improperly asserting that the claims are
`
`anticipated or when alleging obviousness. Those attempts will be shown to be
`
`motivated by hindsight.
`
`Petitioner also sometimes acknowledges these shortcomings by looking to
`
`secondary references Fujiwara,3 Uraya,4 and Andrews5 in an attempt to fill in the
`
`gaps presented by the primary references Loh ’842 and Loh ’819. But Petitioner
`
`2 Ex. 1006, U.S. Patent No. 7,960,819 (“Loh ’819”).
`
`3 Ex. 1005, U.S. Patent No. 6,680,568 (“Fujiwara”).
`
`4 Ex. 1011, Japanese Patent Application No. 2005-174998, with certified
`
`translation (“Uraya”).
`
`5 Ex. 1007, U.S. Patent Application Publication No. 2005/0218421 (“Andrews”).
`
`-2-
`
`

`

`IPR2018-00966 Patent Owner’s Response
`
`misinterprets these references and incorrectly considers the references’ features in
`
`light of the ideas in the ’297 patent instead of the knowledge of a POSITA, and
`
`fails to provide an adequate basis to make the combination of references presented
`
`in the Petition.
`
`Other claimed aspects are not present in Petitioner’s references. For
`
`example, claim 6 of the ’297 patent recites a notch “at the intersection of” a
`
`platform and a slanted portion, and claims 9 and 15 recite a precise arrangement of
`
`two notches including a notch “at the intersection of” a platform and a slanted
`
`portion. Rather than showing such structures, Petitioner seeks to redefine the term
`
`“at the intersection” to more broadly cover notches “near” an intersection. This is
`
`improper and results in failure of Petitioner’s challenges to claims 6, 9, and 15 in
`
`both sets of Grounds. Petitioner’s challenges to claims 9 and 15 are also deficient
`
`because they fail to satisfy the other requirements of the arrangement of two
`
`notches recited in the claims.
`
`Similarly, with regard to claims 3 and 4, Petitioner attempts to render
`
`meaningless the terms “upper” and “lower” by alleging that a notch, found in a
`
`single location, is proximate to both an “upper portion” and a “lower portion.” In
`
`fact, Petitioner goes so far as to read “upper portion” and “lower portion” on two
`
`elements that are horizontally aligned side-by-side. Under the correct
`
`-3-
`
`

`

`IPR2018-00966 Patent Owner’s Response
`
`constructions and applications of those constructions, the asserted art fails to
`
`disclose all features recited in claims 3 and 4.
`
`As result of these defects, each challenged claim must survive. Each of
`
`these defects, and other defects in the Petition, are addressed below.
`
`II. OVERVIEW
`A. The ’297 Patent
`The ’297 patent is entitled “Light Emitting Device,” and Figures 1 and 2 of
`
`the ’297 patent discloses a light emitting device 100 having a substrate 110 and a
`
`reflector 114 extending from the substrate:
`
`The reflector and substrate together form a cavity 118, in which a light emitter 112
`
`is located, and an encapsulant fills the cavity. At least one notch (134, 146) is
`
`-4-
`
`

`

`IPR2018-00966 Patent Owner’s Response
`
`located in the reflector, the at least one notch extends substantially axially around
`
`the reflector. A second notch (134, 146) also may be located in the reflector. The
`
`use of the elements claimed in the ’297 patent, including the notch(es), serves to
`
`retard or stop delamination of the encapsulant.
`
`B. Disputed Claims
`Elements of an exemplary light emitting device are claimed in the ’297
`
`patent, of which claims 1-17 are at issue in this proceeding. In full, the challenged
`
`claims of the ’297 patent recite (with the highlighting many of the elements to be
`
`addressed below):
`
`1. A light emitting device comprising:
`a substrate;
`a reflector extending from said substrate, said
`reflector forming a cavity in conjunction with said
`substrate;
`a light emitter located in said cavity; and
`at least one first notch located in said reflector,
`said at least one first notch extending substantially
`axially around said reflector, said at least one first
`notch being formed by a first wall and a second wall
`wherein said first wall and said second wall extend
`substantially perpendicular to said substrate.
`
`2. The light emitting device of claim 1 and further
`comprising an encapsulant located in said cavity, wherein
`
`-5-
`
`

`

`IPR2018-00966 Patent Owner’s Response
`
`said encapsulant is also located in said at least one first
`notch.
`
`3. The light emitting device of claim 1, wherein
`said reflector has an upper portion and a lower portion,
`said lower portion being located proximate said substrate,
`said at least one first notch being located proximate said
`upper portion.
`
`4. The light emitting device of claim 1, wherein
`said reflector has an upper portion and a lower portion,
`said lower portion being located proximate said substrate,
`said at least one first notch being located proximate said
`lower portion.
`
`5. The light emitting device of claim 1, wherein
`said light emitter is electrically connected to said
`substrate.
`
`6. The light emitting device of claim 1, wherein
`said reflector comprises a slanted portion that intersects a
`platform, wherein said platform is located proximate said
`substrate; and wherein said at least one notch is located
`at the intersection of said slanted portion and said
`platform.
`
`
`-6-
`
`

`

`IPR2018-00966 Patent Owner’s Response
`
`7. The light emitting device of claim 1, wherein
`said substrate comprises at least one recessed portion and
`wherein said light emitter is located on said at least one
`recessed portion.
`
`8. The light emitting device of claim 7 and further
`comprising an adhesive located in said at least one
`recessed portion, said adhesive serving to bond said
`light emitter to said substrate.
`
`9. The light emitting device of claim 1, wherein
`said reflector comprises:
`a first wall extending substantially perpendicular to
`said substrate;
`a first platform extending from said first wall;
`a second wall extending from said first platform
`and facing said first wall, the space between said first
`wall and said second wall constituting one of said at
`least one notch;
`a second platform extending from said second
`wall toward the center of said light emitting device;
`a slanted portion extending from said second
`platform toward said substrate; and
`a third platform located on said substrate and
`intersecting said slanted portion;
`
`-7-
`
`

`

`IPR2018-00966 Patent Owner’s Response
`
`wherein a second of said at least one notch is
`located at the intersection of said third platform and
`said slanted portion.
`
`light emitting device comprising: a
`10. A
`substrate; a reflector extending from said substrate, said
`reflector forming a cavity in conjunction with said
`substrate; a light emitter located in said cavity; at least
`one first notch located in said reflector, said at least one
`first notch extending substantially axially around said
`reflector said at least one first notch being formed by a
`first wall and a second wall wherein said first wall and
`said second wall are substantially parallel to each other
`wherein said first wall and said second wall extend
`substantially perpendicular to said substrate; and at
`least one second recessed portion located in said
`substrate proximate said light emitter.
`
`11. The light emitting device of claim 10 and
`further comprising an adhesive located in said at least
`one recessed portion, said adhesive serving to bond said
`light emitter to said substrate.
`
`12. The light emitting device of claim 10 and
`further comprising an encapsulant located in said cavity,
`wherein said encapsulant is also located in said at least
`one first notch.
`
`-8-
`
`

`

`IPR2018-00966 Patent Owner’s Response
`
`
`13. The light emitting device of claim 10, wherein
`said reflector has an upper portion and a lower portion,
`said lower portion being located proximate said substrate,
`said at least one first notch being located proximate said
`upper portion.
`
`14. The light emitting device of claim 10, wherein
`said reflector has an upper portion and a lower portion,
`said lower portion being located proximate said substrate,
`said at least one first notch being located proximate said
`lower portion.
`
`15. A light emitting device comprising:
`a substrate;
`a reflector extending from said substrate, said
`reflector forming a cavity in conjunction with said
`substrate, said reflector comprising:
`a first wall extending substantially perpendicular to
`said substrate;
`a first platform extending from said first wall;
`a second wall extending from said first platform
`and facing said first wall, the space between said first
`wall and said second wall constituting a first notch;
`a second platform extending from said second
`wall toward the center of said light emitting device;
`
`-9-
`
`

`

`IPR2018-00966 Patent Owner’s Response
`
`a slanted portion extending from said second
`platform toward said substrate; and
`a third platform located on said substrate and
`intersecting said slanted portion;
`the
`located at
`is
`wherein a second notch
`intersection of said third platform and said slanted
`portion;
`a light emitter located in said cavity; and
`at least one recessed portion located in said
`substrate proximate said light emitter.
`
`16. The light emitting device of claim 15 and
`further comprising an adhesive located in said at least
`one recessed portion, said adhesive serving to bond said
`light emitter to said substrate.
`
`17. The light emitting device of claim 15 and
`further comprising an encapsulant located in said cavity.
`’297 patent, 3:32-6:8.
`C. Claim Construction
`The ’297 patent was filed in the United States on September 11, 2007, and
`
`issued on January 26, 2010. Accordingly, the ’297 patent is not expected to expire
`
`prior to any Final Written Decision in this IPR. See 35 U.S.C. § 154(a)(2); 37
`
`C.F.R. § 42.100(b).
`
`-10-
`
`

`

`IPR2018-00966 Patent Owner’s Response
`
`Petitioner states that the Board should apply the “broadest reasonable
`
`construction (‘BRI’) in light of the specification” to the ’297 patent. Pet., 10.
`
`However, the purpose of claim construction is not simply to identify potential
`
`synonyms of claim terms and swap them out without reason. Rather, because the
`
`purpose is to “accord a claim a meaning it would have to a person of ordinary skill
`
`in the art at the time of the invention,” Innova/Pure Water, Inc. v. Safari Water
`
`Filtration Systems, Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004), Patent Owner will
`
`address certain constructions below.
`
`III. THE CHALLENGED CLAIMS ARE NOT UNPATENTABLE
`Petitioner has failed to establish that each of the challenged ’297 patent
`
`claims are unpatentable over the asserted art.
`
`A. Ground 1 Fails Because Loh ’842 Fails to Disclose Each Element
`of Claims 1-6
`
`Claims 1-6 are challenged in Ground 1 based on Loh ’842 as an anticipating
`
`reference. As explained below, Petitioner’s challenge based on Loh ’842 alone
`
`fails.
`
`Claim 1
`
`1.
`[1b] “a reflector extending from said substrate”
`
`In part, claim 1 of the ’297 patent recites “a reflector extending from said
`
`substrate.” The Petition relies on the embodiment shown in Figure 8B of Loh ’842
`
`as disclosing this element. But, contrary to Petitioner’s assertion, Loh ’842 does
`
`-11-
`
`

`

`IPR2018-00966 Patent Owner’s Response
`
`not disclose this element of claim 1. Petitioner asserts that Loh’s lens coupler 106
`
`corresponds to the claimed “reflector.” Loh ’842 shows that there are two layers
`
`(red and purple) between the substrate 102 (green) and lens coupler 106 (yellow),
`
`which Petitioner has equated with the claimed reflector.
`
`
`
`However, the lens coupler 106 does not “extend[] from said substrate,” as recited
`
`in claim 1. Instead, lens coupler 106 extends from the red, unlabeled layer, which
`
`is not shown by Petitioner to be part of “said substrate.”
`
`Patent Owner’s expert, Mr. Thomas Credelle, explains that a POSITA would
`
`not consider Loh ‘842’s lens coupler 106 to “extend[] from” the substrate 102. Ex.
`
`2009 at ¶23. According to Mr. Credelle, “[a] POSITA in 2007 would not consider
`
`any layer grown, deposited or formed on the substrate to be part of the substrate.”
`
`Id. Instead, the red and purple layers shown in Loh ‘842 are additional layers
`
`-12-
`
`

`

`IPR2018-00966 Patent Owner’s Response
`
`added on top of the substrate after the substrate has been fabricated. His
`
`conclusion comports with common sense. The claim defines the starting point of
`
`reflector to be at the surface of the substrate, from which it extends, not separated
`
`from the substrate by intervening layers. This is not a claim construction
`
`argument. It is a straightforward application of the claims, as written.
`
`Moreover, Petitioner’s expert, Dr. Shealy, testified that the purple and red
`
`layers were adhesives, and that the purple layer was described as the mounting pad.
`
`Ex. 2008 at 69:20-70:15. But Loh ‘842 explicitly describes the mounting pad as
`
`being separate from the substrate. Loh ‘842 states:
`
`Mounting pad 109 may be mounted to substrate 102 with
`electrical connections being made to LED 110 for
`applying an electrical bias.
`
`Loh ’842 at 5:27-31 (emphasis added). The mounting pad, which Dr. Shealy says
`
`is the purple layer, is separate from the substrate. That is consistent with Mr.
`
`Credelle’s testimony. Ex. 2009 at ¶¶18-23. For at least this reason, Petitioner’s
`
`challenge of claim 1 based on Loh ’842 alone fails.
`
`[1c] “said reflector forming a cavity in conjunction with said substrate”
`
`Claim 1 also recites “said reflector forming a cavity in conjunction with said
`
`substrate.” Petitioner relies upon Figure 8B as allegedly disclosing this claim
`
`feature. Petitioner points to the lens coupler 106 (as corresponding to the
`
`“reflector”) and substrate 102 as disclosing this claim element. But the substrate
`
`-13-
`
`

`

`IPR2018-00966 Patent Owner’s Response
`
`102 does not form the claimed “cavity.” Because the unlabeled purple layer rests
`
`on top of the substrate 102 (green), the space 400 (allegedly corresponding to the
`
`claimed “cavity”) is formed by the combination of lens coupler 106, the unlabeled
`
`red layer, and the unlabeled purple layer. Accordingly, as an additional failure of
`
`this challenge, Petitioner has failed to demonstrate the presence of claimed
`
`arrangement of the reflector, substrate, and cavity.
`
`[1d] “a light emitter located in said cavity”
`
`Claim 1 recites “a light emitter located in said cavity.” Loh ’842 does not
`
`disclose this element because “said cavity” in the claims must be defined by a
`
`substrate and reflector. But, as mentioned above, the substrate does not form the
`
`“cavity.” Thus, Loh ’842 does not disclose this element either.
`
`Claim 2
`
`2.
`“The light emitting device of claim 1 and further comprising an
`encapsulant located in said cavity, wherein said encapsulant is also
`located in said at least one first notch.”
`
`Claim 2 recites “an encapsulant located in said cavity.” Loh ’842 does not
`
`disclose this element because “said cavity” in claim 1 must be defined by a
`
`substrate and reflector. But, as mentioned above, the substrate does not form the
`
`“cavity.” Thus, Loh ’842 does not disclose this element.
`
`Second, Petitioner has improperly combined multiple embodiments in its
`
`analysis of dependent claim 2. The present ground (Ground 1) is an anticipation
`
`-14-
`
`

`

`IPR2018-00966 Patent Owner’s Response
`
`ground. Being a dependent claim, claim 2 implicitly includes all of the limitations
`
`of independent claim 1. For claim 1, Petitioner primarily relied upon the
`
`embodiment shown in Figure 8B of Loh ‘842 as allegedly disclosing each element
`
`of claim 1. But for claim 2, Petitioner relies upon the embodiments shown in
`
`Figures 4C, 8C, and 8D. This is clearly improper in an anticipation challenge.
`
`Petitioner cannot combine multiple different embodiments and argue that the
`
`combination anticipates a claim. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d
`
`1359, 1371 (Fed. Cir. 2008). Thus, Petitioner has failed to show that Loh ’842
`
`anticipates claim 2 for this additional reason.
`
`Claims 3-4
`
`3.
`“3. The light emitting device of claim 1, wherein said reflector has an
`upper portion and a lower portion, said lower portion being located
`proximate said substrate, said at least one first notch being located
`proximate said upper portion.”
`
`“4. The light emitting device of claim 1, wherein said reflector has an
`upper portion and a lower portion, said lower portion being located
`proximate said substrate, said at least one first notch being located
`proximate said lower portion.”
`
`a)
`
`Construction of “lower portion” and “upper portion”
`(claims 3 and 4)
`
`Petitioner asserts that “lower portion” of claims 3 and 4 should be construed
`
`as “the part proximate the substrate and the lowest notch,” and “upper portion” of
`
`claims 3 and 4 should be construed as “the part proximate the upper edge of the
`
`reflector and the highest notch.” Pet., 16.
`
`-15-
`
`

`

`IPR2018-00966 Patent Owner’s Response
`
`Petitioner’s proposed constructions are wrong at least because they do not
`
`require that the “upper portion” be vertically higher and above the “lower portion.”
`
`In the following excerpt of Figure 1, the ’297 patent shows that the claimed “upper
`
`portion” is vertically higher than the claimed “lower portion” and located above
`
`the “lower portion.”
`
`
`
`Even Petitioner’s depiction of the “upper portion” and the “lower portion” show
`
`the “upper portion” to be higher than the “lower portion” and located above the
`
`“lower portion.” Pet., 15.
`
`Further, another problem with Petitioner’s proposed constructions is that it
`
`implicitly requires that there be two notches in the reflector. For example,
`
`Petitioner construes “lower portion” to mean “the part proximate the substrate and
`
`the lowest notch.” Pet., 16 (emphasis added). Referring to the “lowest notch”
`
`-16-
`
`

`

`IPR2018-00966 Patent Owner’s Response
`
`implicitly requires that there be a second notch whose location is the point of
`
`reference for the first notch. In other words, there have to be at least two notches
`
`in order to determine which is the lowest notch. But dependent claims 3 and 4,
`
`which recite the “lower portion” and the “upper portion,” do not require more than
`
`one notch. Claim 3 states that “said at least one first notch being located proximate
`
`said upper portion.” Claim 4 has similar language. Each of those claims only
`
`refers to “said at least one first notch.” No second notch is recited. Those claims
`
`depend from claim 1. Claim 1 also only refers to “at least one first notch.” No
`
`second notch is recited. Petitioner’s claim constructions of these terms should be
`
`rejected.
`
`In its Institution Decision, the Board concluded that it was “not persuaded
`
`that the entirety of the ‘upper portion’ must be vertically higher and above the
`
`‘lower portion,’ with no overlap.” Paper, 14, p. 7. But the use of the word
`
`“portion” by itself dictates that there cannot be overlap. Merriam-Webster’s
`
`Collegiate Dictionary defines “portion” as “an individual’s part or share of
`
`something: such as … a share received by gift or inheritance.” Ex. 2011, Merriam-
`
`Webster’s Collegiate Dictionary, 10th ed. (1997), p. 908. Using Webster’s
`
`example, no portion of an inheritance is shared. Instead, the term is defined as “an
`
`individual’s part or share.” Patent Owner’s expert, Mr. Credelle, agrees with that
`
`analysis. Ex. 2009 at ¶18. The ‘297 patent defines the “lower portion” as follows:
`
`-17-
`
`

`

`IPR2018-00966 Patent Owner’s Response
`
`“The portion of the reflector 114 located proximate the substrate 110 is sometimes
`
`referred to as the lower portion.” Ex. 1001 at 1:42-44. Similarly, the “upper
`
`portion” is defined as follows: “The portion of the reflector 114 proximate the
`
`upper edge 124 is sometimes referred to as the upper portion.” Ex. 1001 at 63-65.
`
`Moreover, the claims require the lower portion to be “proximate” the
`
`substrate. The dictionary definition of “proximate” is “very near.” Ex. 2011,
`
`Merriam-Webster’s Collegiate Dictionary, 10th ed. (1997), p. 941. Mr. Credelle
`
`explains that a POSITA would recognize the upper and lower portions do not
`
`overlap. Ex. 2009 at ¶¶18-25; see also Ex. 1001 at 1:15-18; 1:42-44; 1:63-65,
`
`1:65-67; 2:53-56 (“proximate”); Ex. 1001 at 1:63-67; 2:1-3; 3:52-59; 4:48-55
`
`(“upper portion”); Ex. 1001 at 1:42-44; 3:52-59; 4:48-55 (“lower portion”). Thus,
`
`the upper portion must be vertically higher than the lower portion, and the two
`
`portions cannot overlap. The upper portion must be proximate (i.e., very near) the
`
`upper edge 124. The lower portion must be proximate (i.e., very near) the
`
`substrate 110.
`
`Dr. Shealy takes the position that “upper portion” and “lower portion” could
`
`be virtually the same regions, and almost entirely overlap. Ex. 2008 at 121:9-
`
`122:10. This view, however, essentially eliminates “upper region” and “lower
`
`region” from the claims because, according to Dr. Shealy, the two can be virtually
`
`-18-
`
`

`

`IPR2018-00966 Patent Owner’s Response
`
`the same. This is clearly inconsistent with the teachings of the ‘297 patent
`
`discussed above, and is a patently unreasonable interpretation of the claims.
`
`b)
`
`Loh ’842 fails to disclose the “at least one notch” located
`as set forth in claims 3 and 4
`
`Petitioner first cites to the embodiment shown in Loh’s Figure 8B as
`
`disclosing these two claims. But the embodiment in Figure 8B has depressions
`
`406 and 408 located side-by-side and located at the same vertical height. One
`
`depression is not higher than the other. Moreover, both depressions are located
`
`midway between the top and bottom of lens coupler 106. Thus, neither depression
`
`is proximate an upper portion or a lower portion. Ex. 2009 at ¶¶24-25.
`
`Petitioner also cites to Figures 8C, 8