`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`NICHIA CORPORATION,
`Petitioner
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner
`
`Patent No. 7,652,297
`Issue: January 26, 2010
`Filed: September 11, 2007
`Inventors: Lee Kee Hon, et al.
`Title: LIGHT EMITTING DEVICE
`__________________
`
`Inter Partes Review No. IPR2018-00966
`
`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,652,297
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`
`
`TABLE OF CONTENTS
`
`
`I. Mandatory Notices (37 C.F.R. §42.8) ............................................................. 1
`
`A.
`
`B.
`
`C.
`
`Real Parties in Interest (37 C.F.R. §42.8(b)(1)) .................................... 1
`
`Related Matters (37 C.F.R. §§42.8(b)(2)) ............................................. 1
`
`Counsel and Service Information (37 C.F.R. §§42.8(b)(3)-(4)) ........... 1
`
`II.
`
`Payment of Fees (37 C.F.R. §42.103) ............................................................. 2
`
`III. Requirements for Inter Partes Review (37 C.F.R. §42.104) .......................... 3
`
`A. Grounds for Standing (37 C.F.R. §42.104(a)) ...................................... 3
`
`B.
`
`Identification of Challenge (37 C.F.R. §42.104(b)(1)-(2)) and
`Relief Requested (37 C.F.R. §42.22.(a)(1)) .......................................... 3
`
`IV. Relevant Information Concerning the Contested Patent ................................. 5
`
`A. Overview of the ’297 Patent and its Prosecution History ..................... 5
`
`B.
`
`C.
`
`Person of Ordinary Skill in the Art ....................................................... 9
`
`Claim Construction (37 C.F.R. §42.104(b)(3)) ................................... 10
`
`1.
`
`2.
`
`3.
`
`4.
`
`“reflector” .................................................................................. 11
`
`“intersects” / “intersecting” ....................................................... 12
`
`“at the intersection” ................................................................... 13
`
`“lower portion” and “upper portion” ........................................ 14
`
`V.
`
`Patentability of Specific Grounds for Petition .............................................. 16
`
`A.
`
`Prior Art ............................................................................................... 16
`
`1.
`
`2.
`
`Loh ’842 .................................................................................... 16
`
`Loh ’819 .................................................................................... 19
`
`
`
`i
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`

`

`
`
`3.
`
`4.
`
`5.
`
`6.
`
`Andrews .................................................................................... 21
`
`Nii .............................................................................................. 22
`
`Fujiwara .................................................................................... 24
`
`Uraya ......................................................................................... 25
`
`B. Ground 1: Loh ’842 Anticipates Claims 1-6 ....................................... 27
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Claim 1 ...................................................................................... 27
`
`Claim 2 ...................................................................................... 33
`
`Claims 3-4 ................................................................................. 36
`
`Claim 5 ...................................................................................... 41
`
`Claim 6 ...................................................................................... 42
`
`C. Ground 2: Loh ’842 Renders Obvious Claims 1-6 and 9 ................... 44
`
`1.
`
`2.
`
`3.
`
`4.
`
`Claims 1-6 ................................................................................. 44
`
`Claim 5 ...................................................................................... 45
`
`Claim 6 ...................................................................................... 45
`
`Claim 9 ...................................................................................... 46
`
`D. Ground 3: Loh ’842 in View of Fujiwara Renders Obvious Claims
`7-8 and 10-17 ....................................................................................... 49
`
`1.
`
`2.
`
`3.
`
`4.
`
`Claims 7-8 ................................................................................. 49
`
`Claim 10 .................................................................................... 52
`
`Claim 11-14 ............................................................................... 54
`
`Claim 15-17 ............................................................................... 55
`
`E.
`
`Ground 4: Loh ’842 in View of Uraya Renders Obvious Claims 7-
`8 and 10-17 .......................................................................................... 57
`
`1.
`
`Claims 7-8 ................................................................................. 57
`
`
`
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`
`ii
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`
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`2.
`
`Claims 10-17 ............................................................................. 60
`
`F.
`
`Ground 5: Loh ’819 Anticipates Claims 1-6 ....................................... 60
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Claim 1 ...................................................................................... 60
`
`Claim 2 ...................................................................................... 67
`
`Claims 3-4 ................................................................................. 68
`
`Claim 5 ...................................................................................... 69
`
`Claim 6 ...................................................................................... 70
`
`G. Ground 6: Loh ’819 Alone, or—Alternatively—if Not Considered
`Incorporated by Reference, in View of Andrews, Renders Obvious
`Claim 1-6 and 9 ................................................................................... 71
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Claims 1-6 ................................................................................. 71
`
`Claims 3-4 ................................................................................. 73
`
`Claim 5 ...................................................................................... 73
`
`Claim 6 ...................................................................................... 74
`
`Claim 9 ...................................................................................... 75
`
`H. Ground 7: Loh ’819 in View of Fujiwara, or—Alternatively— if
`Not Considered Incorporated by Reference, in Further View of
`Andrews, Renders Obvious Claims 7-8 and 10-17 ............................. 78
`
`I.
`
`Ground 8: Loh ’819 in View of Uraya, or—Alternatively—if Not
`Considered Incorporated by Reference, in Further View of
`Andrews, Renders Obvious Claims 7-8 and 10-17 ............................. 81
`
`VI. Conclusion ..................................................................................................... 84
`
`
`
`
`
`
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`
`iii
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`
`
`TABLE OF AUTHORITIES
`
` Page
`
`Cases
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016) ..................................... 10
`
`Geo M. Martin Co. v. Alliance Machine Sys. Int’l LLC, 618 F.3d 1294
`(Fed. Cir. 2010) ................................................................................................... 16
`
`In re GPAC Inc., 57 F.3d 1573 (Fed. Cir. 1995) ..................................................... 10
`
`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351
`(Fed. Cir. 2008) ................................................................................................... 10
`
`U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554 (Fed. Cir. 1997) .................... 10
`
`Statutes
`35 U.S.C. §102 ..................................................................................................passim
`
`35 U.S.C. §103 ..................................................................................................passim
`
`
`
`
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`iv
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`
`
`LIST OF EXHIBITS
`
`Exhibit No.
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`
`1012
`1013
`1014
`
`1015
`1016
`
`Description
`
`U.S. Patent No. 7,652,297
`File History of U.S. Patent No. 7,652,297
`Declaration of Dr. James Richard Shealy
`U.S. Patent No. 7,939,842 (“Loh ’842”)
`U.S. Patent No. 6,680,568 (“Fujiwara”)
`U.S. Patent No. 7,960,819 (“Loh ’819”)
`U.S. Patent App. Pub. No. 2005/0218421 (“Andrews”)
`U.S. Patent No. 7,279,346 to Andrews
`U.S. Patent App. Pub. No. 2003/0020077 (“Horiuchi”)
`U.S. Patent No. 7,815,343 (“Nii”)
`Japanese Patent Application No. 2005-174998 with Certified
`Translation (“Uraya”)
`Merriam-Webster’s Dictionary, 11th Ed. (2005)
`U.S. Patent No. 7,968,899 (“Karim”)
`Graf, Rudolph, “Modern Dictionary of Electronics,” 7th Ed.,
`Newnes (1999)
`U.S. Patent. App. Pub. No. 2004/0079957 (“Loh ’957”)
`Pecht, Michael et al., “Plastic-Encapsulated Microelectronics,”
`John Wiley & Sons, Inc. (1995)
`
`
`
`
`
`v
`
`

`

`
`
`
`
`Nichia Corporation (“Petitioner”) respectfully requests Inter Partes Review
`
`(“IPR”) of claims 1-17 of U.S. Patent No. 7,652,297 (Ex. 1001, “the ’297 patent”),
`
`currently assigned to Document Security Systems, Inc. (“Patent Owner”). There is
`
`a reasonable likelihood Petitioner will prevail on at least one challenged claim.
`
`I. Mandatory Notices (37 C.F.R. §42.8)
`A. Real Parties in Interest (37 C.F.R. §42.8(b)(1))
`The real parties in interest are Nichia Corporation and Nichia America
`
`
`
`Corporation.
`
`B. Related Matters (37 C.F.R. §§42.8(b)(2))
`The ’297 patent has been asserted by Patent Owner against Nichia
`
`
`
`Corporation and Nichia America Corporation in Document Security Systems, Inc. v.
`
`Nichia America Corporation, et al., No. 2:17-cv-08849, pending in the Central
`
`District of California.
`
`
`
`The ’297 patent was also asserted by Patent Owner in the following action:
`
`Document Security Systems, Inc. v. OSRAM GmbH, et al., No. 2:17-cv-05184
`
`(Central District of California).
`
`C. Counsel and Service Information (37 C.F.R. §§42.8(b)(3)-(4))
`Petitioner designates the following lead and back-up counsel:
`
`
`
`1
`
`

`

`
`
`Lead Counsel
`
`Patrick R. Colsher (Reg. No. 74,955; Tel. (212) 848-7708;
`
`patrick.colsher@shearman.com), attorney at Shearman & Sterling LLP, 599
`
`Lexington Avenue, New York, New York 10022.
`
`Backup Counsel
`
`Matthew G. Berkowitz (Reg. No. 57,215; Tel. (650) 838-3737;
`
`matthew.berkowitz@shearman.com), attorney at Shearman & Sterling LLP, 1460
`
`El Camino Real, Menlo Park, California 94025.
`
`Eric S. Lucas (Reg. No. 76,434; Tel. (212) 848-4955;
`
`eric.lucas@shearman.com), attorney at Shearman & Sterling LLP, 599 Lexington
`
`Avenue, New York, New York 10022.
`
`Thomas R. Makin (pro hac vice to be requested upon authorization; Tel.
`
`(212) 848-7698; thomas.makin@shearman.com), attorney at Shearman & Sterling
`
`LLP, 599 Lexington Avenue, New York, New York 10022.
`
`
`
`Petitioner consents to e-mail service at the above e-mail addresses and
`
`nichia-dss@shearman.com.
`
`II.
`
`Payment of Fees (37 C.F.R. §42.103)
`The Director is authorized to charge the filing fee for this Petition, as well as
`
`any other fees that may be required in these proceedings, to Deposit Account
`
`500324.
`
`
`
`
`
`2
`
`

`

`
`
`III. Requirements for Inter Partes Review (37 C.F.R. §42.104)
`A. Grounds for Standing (37 C.F.R. §42.104(a))
`Petitioner certifies that the ’297 patent is available for IPR and that
`
`Petitioner is not barred or estopped from requesting an IPR challenging the claims
`
`on the grounds identified herein.
`
`B.
`
`Identification of Challenge (37 C.F.R. §42.104(b)(1)-(2)) and
`Relief Requested (37 C.F.R. §42.22.(a)(1))
`
`Petitioner requests the Board institute IPR on claims 1-17 of the ’297 patent
`
`because they are anticipated and/or obvious under pre-AIA 35 U.S.C. §§102-103
`
`on the following grounds:
`
`Ground
`
`Prior Art
`
`1
`
`2
`3
`
`4
`
`U.S. Patent No. 7,939,842 (Ex. 1004,
`“Loh ’842”)
`Loh ’842
`Loh ’842 in view of U.S. Patent No.
`6,680,568 (Ex. 1005, “Fujiwara”)
`Loh ’842 in view of Japanese Patent
`Application No. 2005-174998 (Ex. 1011
`with certified translation, “Uraya”)
`
`Basis
`
`§102
`
`§103
`§103
`
`Claims
`Challenged
`1-6
`
`1-6, 9
`7-8, 10-17
`
`§103
`
`7-8, 10-17
`
`
`
`
`
`3
`
`

`

`5
`
`6
`
`7
`
`8
`
`
`
`U.S. Patent No. 7,960,819 (Ex. 1006,
`“Loh ’819”), whether or not U.S. Patent
`App. Pub. No. 2005/0218421 (Ex. 1007,
`“Andrews”)1 is considered incorporated
`by reference
`Loh ’819, or alternatively, if not
`considered incorporated by reference, in
`view of Andrews
`Loh ’819 in view of Fujiwara, or
`alternatively, if not considered
`incorporated by reference, in view of
`Andrews and Fujiwara
`Loh ’819 in view of Uraya, or
`alternatively, if not considered
`incorporated by reference, in view of
`Andrews and Uraya
`
`§102
`
`1-6
`
`§103
`
`1-6, 9
`
`§103
`
`7-8, 10-17
`
`§103
`
`7-8, 10-17
`
`
`
`Multiple grounds are necessitated, e.g., because Patent Owner may attempt
`
`to argue that certain references are not prior art because the ’297 patent is entitled
`
`to an earlier priority date.
`
`
`1 Andrews issued as U.S. Patent No. 7,279,346 (Ex. 1008).
`
`
`
`
`
`4
`
`

`

`
`
`IV. Relevant Information Concerning the Contested Patent
`A. Overview of the ’297 Patent and its Prosecution History
`The ’297 patent is directed to a light emitting device with a light emitter
`
`
`
`(such as an LED) located in a cavity formed by a reflector and a substrate and
`
`filled with an encapsulant (e.g., silicone). Ex. 1001 at Abstract, 1:5-9, 1:39-53.2
`
`The patent admits that such devices were known:
`
`Light emitting devices typically include a light emitting diode
`(LED) located in a cavity. The walls of the cavity may be
`reflective in order to increase the efficiency of the light-emitting
`device. The cavity is filled with an encapsulate, such as silicone,
`in order to protect the LED and the reflector.
`
`Id. at 1:5-9. However, according to the ’297 patent, the conventional configuration
`
`is undesirable because of encapsulant “delamination” that may result in damage:
`
`Encapsulants tend to delaminate or pull away from the reflector
`walls. Once the delamination has started on a small section of the
`wall, the delamination typically continues rapidly. The
`delaminated areas may enable contaminants to enter the light-
`emitting device and either cause failure or a reduction in the
`efficienc[y] of the light-emitting device. The delamination may
`
`2 For ease of reference, patent citations are to column and line numbers, and
`
`citations to patent application publications are to paragraph numbers. All other
`
`citations are to the exhibit page numbers in the lower right hand corner.
`
`
`
`
`
`5
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`

`

`
`
`also adversely affect the light pattern proximate the delaminated
`wall, which may reduce or diffract the emitted light. Eventually,
`the delamination may spread to the LED, which may cause damage
`to the LED and failure of the light-emitting device.
`
`Id. at 1:10-20; see also 2:41-51. And, “[i]n conventional light emitting devices, the
`
`LEDs may separate from the substrate if delamination occurs adjacent the LEDs.”
`
`Id. at 3:4-6.
`
`To overcome these alleged problems, the ’297 patent offers two alleged
`
`improvements: (i) the addition of one or more “notches” into the reflector walls
`
`(claims 1-17); and (ii) the addition of a recessed portion in the substrate beneath
`
`the light emitter (claims 7, 10 and 15) that is filled with an adhesive to bond the
`
`emitter to the substrate (claims 8, 11 and 16). Id. at 2:6-3:23.
`
`The “notches” are shown in Figure 13 below as “first notch 134” (red) and
`
`“second notch 146” (blue) of “reflector 114” (green) extending from “substrate
`
`110” (purple) forming “cavity 118” (orange) with “LED 112” located therein
`
`(yellow) and filled with an encapsulant. Id. at 1:39-2:40.
`
`
`3 Unless noted, all coloring and descriptions have been added to the figures.
`
`
`
`
`
`6
`
`

`

`
`
`
`
` “If delamination starts proximate the top or upper edge 124 of the reflector
`
`114, the delamination may progress down the first inner wall 126, but it will be
`
`stopped by the first notch 134” and thus, “the delamination will not be able to
`
`proceed down the slanted wall 140.” Id. at 2:53-58. “The first notch 134 also
`
`serves to anchor the encapsulant to the reflector 114, which further serves to
`
`prevent delamination. The same occurs with the second notch 146.” Id. at 2:58-
`
`61.
`
`The ’297 patent further describes that, “to more securely attach the LED 112
`
`to the substrate 110, the substrate 110 has at least one recessed portion for holding
`
`an adhesive located under the LED 112.” Id. at 3:12-14. In the only embodiment,
`
`there are “two recessed portions 160 or dimples” (pink above) that “serve to hold
`
`
`
`
`
`7
`
`

`

`
`
`the adhesive used to adhere the LED 112 to the substrate 110.” Id. at 3:14-20.
`
`“Therefore, if delamination spreads to the LED 112, the LED 112 has a lower
`
`probability of becoming dislodged from the substrate 110.” Id. at 3:20-23.
`
`The prosecution focused primarily on the lack of the claimed “notch” in the
`
`prior art of record. For example, the examiner rejected originally filed claims 1-7
`
`as being anticipated by U.S. Patent App. Pub. No. 2003/0020077 (Ex. 1009,
`
`“Horiuchi”). Ex. 1002 at 33-35. In response, the applicant amended claim 1 to
`
`specify the particular “notch” configuration:
`
`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 recessed portion notch located in said reflector, said
`at least one first recessed portion 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.
`
`Id. at 51.
`
`The applicant distinguished Horiuchi because Horiuchi “simply has a ledge
`
`6b and 7b. The walls forming the ledge 6b and 7b of Horiuchi do not extend
`
`perpendicular to the substrate as recited in claim 1. Rather, one wall is
`
`
`
`
`
`8
`
`

`

`
`
`perpendicular to the substrate and the other wall is parallel to the substrate.” Id. at
`
`57. This is shown in Horiuchi Figure 12 below (walls shown in red, and otherwise
`
`colored similarly to ’297 patent Figure 1).
`
`
`
`See also Ex. 1002 at 33-35 (examiner describing Horiuchi Figure 12). The
`
`examiner then allowed the claims because the prior art of record did not teach the
`
`particular “notch” configuration. Id. at 69-70.
`
`But, as shown herein, the claimed “notch” configurations in LED packages
`
`were well known; and the challenged claims are anticipated and/or obvious.
`
`Person of Ordinary Skill in the Art
`
`B.
`Several factors may be considered in determining the proper skill level:
`
`The person of ordinary skill in the art is a hypothetical person who
`is presumed to have known the relevant art at the time of the
`invention. Factors that may be considered in determining the level
`of ordinary skill in the art may include: (A) “type of problems
`encountered in the art;” (B) “prior art solutions to those problems;”
`(C) “rapidity with which innovations are made;” (D)
`
`
`
`
`
`9
`
`

`

`
`
`“sophistication of the technology; and” (E) “educational level of
`active workers in the field. In a given case, every factor may not be
`present, and one or more factors may predominate.”
`
`M.P.E.P. §2141.03.
`
`Here, the level of skill in the art is apparent from the cited art. See In re
`
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Petitioner submits that a person
`
`of ordinary skill in the art (“POSITA”) for the ’297 patent would have had at least
`
`a B.S. in mechanical or electrical engineering or a related field, and four years’
`
`experience designing LED packages. Ex. 1003, ¶¶24-26.4 This description is
`
`approximate, and a higher level of education or skill might make up for less
`
`experience, and vice-versa. Id.
`
`C. Claim Construction (37 C.F.R. §42.104(b)(3))
`A claim subject to IPR is to be given its broadest reasonable construction
`
`
`
`(“BRI”) in light of the specification. 37 C.F.R. §42.100(b); Cuozzo Speed Techs.,
`
`LLC v. Lee, 136 S. Ct. 2131 (2016). Only terms subject to a legitimate dispute
`
`need to be construed. See O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521
`
`F.3d 1351, 1362 (Fed. Cir. 2008); U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d
`
`1554, 1568 (Fed. Cir. 1997). The following terms should be construed under BRI:
`
`
`
`4 Declaration of Dr. James Richard Shealy.
`
`
`
`
`
`10
`
`

`

`
`
`“reflector”
`
`1.
`The term “reflector,” in claims 1, 3-4, 6, 9-10 and 13-15, means “material—
`
`mounted on the substrate in a light emitting device—having a surface that reflects
`
`light from the emitter.” Ex. 1001 at 1:39-2:27, FIGs. 1-2; Ex. 1003, ¶¶43-45.
`
`“Reflector” is described in the ’297 patent:
`
`The light-emitting device 100 includes a substrate 110 on which a
`Light Emitting Diode (LED) 112 and a reflector 114 are
`mounted…. The combination of the substrate 110 and the
`reflector 114 forms a cavity 118 in which the LED 112 is
`located…. [T]he reflector 114 has many recessed portions and the
`like that secure the encapsulant…. The reflector 114 has an outer
`circumfer[ential] wall 122 that may form the outer wall of the
`light-emitting device 100. An upper edge 124 extends around the
`circumference of the reflector 114 and may form the highest point
`of the light-emitting device 100. The portion of the reflector 114
`proximate the upper edge 124 is sometimes referred to as the
`upper portion. Light emitted from the light-emitting device exits
`the opening in the reflector 114 located proximate the upper
`portion.
`
`Ex. 1001 at 1:39-67; Ex. 1003, ¶¶44-45. This reflector (green) is shown below in
`
`Figures 1 and 2, which depict side and top plan views, respectively. Ex. 1003,
`
`¶¶44-45.
`
`
`
`
`
`11
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`

`

`
`
`
`
`“intersects” / “intersecting”
`
`2.
`The term “intersects,” in claim 6, and the term “intersecting,” in claims 9
`
`
`
`and 15, mean “if considered to be a geometric line, connects or crosses through”
`
`and “if considered to be a geometric line, connecting or crossing through,”
`
`respectively. Ex. 1003, ¶¶46-49; Ex. 1001, FIG. 1. The term “intersects” or its
`
`variations does not appear in the ’297 patent outside the claims. See generally Ex.
`
`
`
`
`
`12
`
`

`

`
`
`1001; Ex. 1003, ¶47. Claim 6 requires that “said reflector comprises a slanted
`
`portion that intersects a platform, wherein said platform is located proximate said
`
`substrate,” and claims 9 and 15 require “a third platform located on said substrate
`
`and intersecting said slanted portion.” A POSITA would have understood that the
`
`claimed intersecting does not mandate that the platform and slanted portion
`
`physically intersect, but instead that they intersect geometrically. Ex. 1003, ¶49;
`
`Ex. 1001 at 2:13-27, FIG. 1. This is shown in an excerpt of Figure 1 below,
`
`showing a slanted portion (dotted red line, extended for emphasis) intersecting
`
`with a platform (dotted yellow line, extended for emphasis) when they are
`
`considered as geometric lines. Ex. 1003, ¶49; Ex. 1001 at 2:13-27, FIG. 1.
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`“at the intersection”
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`3.
`The phrase “at the intersection,” in claims 6, 9, and 15, means “in, on or near
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`
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`the intersection.” Ex. 1003, ¶¶50-54; Ex. 1001 at 2:13-27, FIG. 1; Ex. 1012 at 4
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`(“at” is “used as a function word to indicate presence or occurrence in, on, or
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`near”). As discussed in §IV.C.2, the ’297 patent does not use the term
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`13
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`“intersection” or its variants outside the claims. Claim 6 requires that “said at least
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`one notch is located at the intersection of said slanted portion and said platform,”
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`claim 9 requires “a second of said at least one notch is located at the intersection of
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`said third platform and said slanted portion,” and claim 15 requires “a second
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`notch is located at the intersection of said third platform and said slanted portion.”
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`The only such intersection is shown in Figure 1 above, which depicts notch 146
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`located near the intersection. Ex. 1003, ¶¶50-54.
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`“lower portion” and “upper portion”
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`4.
`The ’297 patent specification, including originally filed (and only modestly
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`amended since) claims 3-4 and 13-14, define the “lower portion” and “upper
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`portion” of the reflector with reference to the reflector’s upper edge, the notches
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`(or, in the original claims, the “recessed portion”), and the substrate.
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`According to the specification:
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`The portion of the reflector 114 located proximate the substrate
`110 is sometimes referred to as the lower portion…. The portion
`of the reflector 114 proximate the upper edge 124 is sometimes
`referred to as the upper portion. Light emitted from the light-
`emitting device exits the opening in the reflector 114 located
`proximate the upper portion.
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`Ex. 1001 at 1:42-67 (emphasis added).
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`According to the issued claims:
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`14
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`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.
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`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.
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`Id. at 3:52-59; Ex. 1002 at 11 (original claims 3-4).
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`Given these bounds, Figure 1 below shows the lower portion (orange)
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`proximate substrate 110 (purple) and notch 146 (blue), and the upper portion
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`(yellow) proximate upper edge 124 (green) and notch 134 (red). Ex. 1003, ¶¶55-
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`59.
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`15
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`Thus, “lower portion” means “the part proximate the substrate and the
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`lowest notch,” and “upper portion” means “the part proximate the upper edge of
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`the reflector and the highest notch.” Id.
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`V.
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`Patentability of Specific Grounds for Petition
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`As evidenced by the prior art described herein and the declaration of Dr.
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`Shealy (Ex. 1003), it was well known to add notches and adhesive-filled recesses
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`to LED devices, in the manner claimed. The prior art teaches the same claimed
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`configurations, rendering claims 1-17 anticipated and/or obvious.
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`Prior Art
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`A.
`No prior art relied upon in the Grounds was cited during prosecution.
`
`Loh ’842
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`1.
`Loh ’842 was filed August 27, 2007, and issued May 10, 2011. Ex. 1004. It
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`is prior art under 35 U.S.C. §102(e).5
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`5 This is 15 days before the filing of the ’297 patent. Patent Owner may attempt to
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`argue the ’297 patent is entitled to an earlier priority date. If Patent Owner does
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`so, Loh ’842 would still be nonetheless compelling evidence of simultaneous
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`invention for Grounds 6-8. Ex. 1003, ¶¶63-67, 89-139, 224; see also, e.g., Geo M.
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`Martin Co. v. Alliance Machine Sys. Int’l LLC, 618 F.3d 1294, 1305 (Fed. Cir.
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`2010) (“Independently made, simultaneous inventions, made within a
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`16
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`

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`Loh ’842 is directed to conventional light emitting devices that add notches
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`(referred to as “depressions”) to a reflective lens coupler. Id. at 1:16-20, 2:42-59,
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`6:40-51, 8:24-59, FIGs. 4A-4C, 5, 8A-8G. Loh ’842 teaches that these
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`“depressions” may be, e.g., “triangular in shape,” “square shaped,” “circular or
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`curved in shape” or “any other suitable shape.” Id. at 6:40-51, 8:24-59, FIG. 8A
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`(triangle), FIG. 8B (square), FIG. 8C (circular).
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`In one embodiment, shown in Figure 8B below, the depressions 406 and 408
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`are “square shaped” at approximately the same height (shown in blue and red,
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`respectively). Id. at 8:26-27, FIG. 8B. And, like the ’297 patent, Loh ’842 also
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`discloses a light emitting package 100 consisting of a reflective lens coupler 106
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`(green) extending from a substrate 102 such as silicone (purple) forming a cavity
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`space 400 (orange) with LED 110 located therein (yellow) and filled with an
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`encapsulant 111. Id. at 5:5-6:5, 8:24-29, FIG. 8B.
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`
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`comparatively short space of time, are persuasive evidence that the claimed
`
`apparatus was the product only of ordinary mechanical or engineering skill.”
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`(internal quotation and citation omitted)).
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`17
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`

`

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`
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`Loh ’842 further discloses that “lens coupler 106 can have many different
`
`shapes and sizes and to enhance reflectivity, may include a reflective element
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`covering different portions of the coupler surface around LED 110.” Id. at 5:36-
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`39. And, Loh ’842 explicitly discloses a variety of shapes, including various
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`combinations of horizontal platforms and slanted walls. Id. at 8:24-59, FIGs. 4A-
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`4C, 8A-8G. For example, Figure 8C below includes both a platform and a slanted
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`wall, with the result that “depressions 408 are in a raised position with respect to
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`depressions 406.” Id. at 8:36-39, FIG. 8C.
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`18
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`Loh ’819
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`2.
`Loh ’819 was filed July 13, 2006, and issued June 14, 2011. Ex. 1006. It is
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`prior art under 35 U.S.C. §102(e).
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`Loh ’819 is directed to light emitting devices that add a notch (referred to as
`
`a “moat”) to a reflector cup. Id. at 8:60-9:17, 10:54-11:27, FIGs. 5, 8. Figure 8
`
`below “is a cross sectional view of a package 360 for solid state light emitting
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`devices.” Id. at 11:13-15. The package has “opposing upper sidewalls 234 that
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`define an optical cavity 250 ... [which] may be filled, for example, with a liquid
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`encapsulant material, such as liquid silicone and/or epoxy” (orange). Id. at 10:41-
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`52, 11:13-22. “The upper sidewalls 234 may include oblique inner
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`surfaces 238 that define a reflector cup above and surrounding the die mounting
`
`regions 202” (the reflector cup shown in green). Id. at 10:45-47. “[T]he
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`sidewalls 234 may include a circumferential moat 232 outside the circumferential
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`
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`19
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`

`

`
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`rim 236” (moat shown in red). Id. at 10:57-59. The package further includes
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`“light emitting devices 214” (yellow) mounted on “die mounting regions 202” of
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`“leadframe 200” with a “package body … formed on/around the lead frame”
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`(purple). Id. at 10:8-67.
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`
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`
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`Loh ’819 also incorporates by reference, in its entirety, Andrews: “The use
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`of circumferential edges and moats for control of encapsulant materials and lens
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`placement is described in detail in U.S. Pre-grant Publication No. 2005/0218421
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`[Andrews] ... which is assigned to the assignee of the present invention, the
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`disclosure of which is incorporated herein by reference.” Id. at 9:11-18. Based on
`
`these disclosures, a POSITA would have understood that Loh ’819 incorporates by
`
`reference Andrews, considered the two references as a single reference, and looked
`
`to Andrews for its explicit “moat” teachings. Ex. 1003, ¶¶70-71.
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`
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`20
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`

`

`
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`Andrews
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`3.
`Andrews published October 6, 2005. Ex. 1007. It is prior art under 35
`
`U.S.C. §102(b).
`
`Andrews teaches that it was “known to provide semiconductor light emitting
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`device type light sources in packages.” Id. at ¶0003. It further teaches it was
`
`known to include a “substrate ... on which a light emitting device ... is mounted,”
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`that “[a] reflector ... may be mounted on the substrate ... and surround the light
`
`emitting device,” and that “an encapsulant material ... is dispensed into an interior
`
`reflective cavity ... of the reflector cup….” Id. at ¶¶0003-05. As shown in Figure
`
`10A below, Andrews discloses a “reflector cup” (green) extending from “substrate
`
`2” (purple) that forms a “reflective cavity 15” (orange) that may be filled with an
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`encapsulant. The reflector cup “may include at least one moat 18 surrounding the
`
`lower sidewall 6” of the reflector cup, as well as a “second moat 24 ... formed
`
`between the upper side wall 5 and the first moat 18” (moats 18 and 24 shown in
`
`blue and red, respectively). Id. at ¶¶0049, 0051-52, 0066, 0075. An LED (yellow)
`
`is mounted in reflective cavity 15. Id. at ¶0075.
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`21
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`

`
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`Nii
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`4.
`U.S. Patent No. 7,815,343 to Nii (Ex. 1010, “Nii”) was filed August 2, 2007,
`
`and issued October 19, 2010. Ex.