`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`NICHIA CORPORATION,
`
`Petitioner
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`
`Patent Owner
`__________________
`
`Case No. IPR2018-00966
`Patent 7,652,297
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`

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`TABLE OF CONTENTS
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`
`
`
`I.
`II.
`
`Page
`Introduction ...................................................................................................... 1
`Claim Construction .......................................................................................... 2
`A.
`“a reflector extending from said substrate” ........................................... 2
`B.
`“proximate” ........................................................................................... 3
`C.
`“upper portion”/“lower portion” ........................................................... 4
`D.
`“intersects”/“intersecting”/“at the intersection” .................................... 9
`III. The Challenged Claims are Unpatentable ..................................................... 11
`A. Ground 1: Loh ’842 Anticipates Claims 1-6 ....................................... 11
`1.
`Claim 1 ...................................................................................... 11
`2.
`Claim 2 ...................................................................................... 13
`3.
`Claims 3-4 ................................................................................. 14
`4.
`Claim 5 ...................................................................................... 16
`5.
`Claim 6 ...................................................................................... 16
`Loh ’842-Based Obviousness Grounds ............................................... 19
`1.
`Ground 2: Loh ’842 Renders Obvious Claims 1-6, 9 ............... 19
`2.
`Ground 3: Loh ’842 and Fujiwara Render Obvious Claims
`7-8, 10-17 .................................................................................. 22
`Ground 4: Loh ’842 and Uraya Render Obvious Claims 7-8,
`10-17 ......................................................................................... 23
`C. Ground 5: Loh ’819 Anticipates Claims 1-6 ....................................... 24
`1.
`Claim 1 ...................................................................................... 24
`2.
`Claim 2 ...................................................................................... 26
`i
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`B.
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`3.
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`
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`

`

`
`
`D.
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`Claim 3-4 ................................................................................... 26
`3.
`Claim 5 ...................................................................................... 26
`4.
`Claim 6 ...................................................................................... 26
`5.
`Loh ’819-Based Obviousness Grounds ............................................... 26
`1.
`Ground 6: Loh ’819 Alone, or in View of Andrews,
`Renders Obvious Claim 1-6, 9 .................................................. 26
`Ground 7: Loh ’819 and Fujiwara, or in Further View of
`Andrews, Render Obvious Claims 7-8, 10-17 .......................... 29
`Ground 8: Loh ’819 and Uraya, or in Further View of
`Andrews, Render Obvious Claims 7-8, 10-17 .......................... 30
`IV. Conclusion ..................................................................................................... 30
`
`
`2.
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`3.
`
`
`
`
`
`
`
`ii
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`

`

`
`
`TABLE OF AUTHORITIES
`
` Page
`
`Cases
`Anchor Wall Sys. v. Rockwood Retaining Walls, Inc.,
`340 F.3d 1298 (Fed. Cir. 2003) ............................................................................ 6
`
`
`Biosig Instruments, Inc. v. Nautilus, Inc.,
`783 F.3d 1374 (Fed. Cir. 2015) ............................................................................ 5
`
`
`Blue Calypso, LLC v. Groupon, Inc.,
`815 F.3d 1331 (Fed. Cir. 2016) .................................................................... 16, 19
`
`
`In re Beattie,
`974 F.2d 1309 (Fed. Cir. 1992) .......................................................................... 26
`
`
`In re Geisler,
`116 F.3d 1465 (Fed. Cir. 1997) .................................................................... 13, 19
`
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ............................................................................ 26
`
`
`Itron Network Solutions, Inc. v. Acoustic Tech., Inc.,
`IPR2017-01024, Paper 49 (P.T.A.B. Aug. 21, 2018) ......................................... 13
`
`
`Kennametal, Inc. v. Ingersoll Cutting Tool Co.,
`780 F.3d 1376 (Fed. Cir. 2015) .................................................................... 16, 19
`
`
`NTP, Inc. v. Research in Motion, Ltd.,
`418 F.3d 1282 (Fed. Cir. 2005) .......................................................................... 25
`
`
`Retractable Techs., Inc. v. Becton, Dickson and Co.,
`653 F.3d 1296 (Fed. Cir. 2011) .......................................................................... 25
`
`
`Thorner v. Sony Computer Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) .................................................................... 3, 6, 9
`
`
`Wasica Fin. GmbH v. Continental Auto. Sys., Inc.,
`
`853 F.3d 1272 (Fed. Cir. 2017) .................................................................... 2, 6, 9
`iii
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`

`

`
`
`I.
`
`Introduction
`The Board correctly instituted review of claims 1-17, (see Paper 14), and
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`should find all claims unpatentable. The claims simply add one or more “notches”
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`(all claims) and an adhesive-filled recess (some claims) to an admittedly
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`“conventional light emitting device.”
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`Although the ’297 patent alleges that “[c]onventional light emitting devices
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`do not have” any notches, (Ex. 1001, 2:41-42), prior art conventional devices had
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`notches (red and blue):
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` ’297 Patent
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`
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` Loh ’819
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` Loh ’842
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`
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`
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`
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` Andrews
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`1
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`
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`The same is true for adhesive-filled recesses (pink):
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`’297 Patent
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`
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` Uraya
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` Fujiwara
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`Faced with this art, Patent Owner ignores the ’297 patent’s teachings,
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`Petitioner’s arguments, and Petitioner’s expert’s, Dr. Shealy’s, testimony. Instead,
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`Patent Owner attempts to rewrite its claims by grafting baseless restrictions
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`
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`thereon. The Board has already rejected these arguments.
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`II. Claim Construction
`“a reflector extending from said substrate”
`A.
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` The Board properly found in its Institution Decision “that the reflector may
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`be in direct or indirect contact with the substrate for it to extend from the
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`substrate.” Paper 14, 9.
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`Patent Owner does not offer an express construction that would
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`countermand this finding, arguing only that “[t]he claim defines the starting point
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`of [the] reflector to be at the surface of the substrate, from which it extends, not
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`separated from the substrate by intervening layers.” Paper 21, 13. But, the claims
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`(and specification) include no such “defin[ition].” See Wasica Fin. GmbH v.
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`
`
`2
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`

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`
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`Continental Auto. Sys., Inc., 853 F.3d 1272, 1281-82 (Fed. Cir. 2017); Thorner v.
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`Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366-68 (Fed. Cir. 2012).
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`In fact, Patent Owner’s position is contradicted by its expert, Mr. Credelle,
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`who confirmed during deposition that: (i) the claimed “a reflector extending from
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`said substrate” refers to the ’297 patent’s disclosure that “[t]he light-emitting
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`device 100 includes a substrate 110 on which… a reflector [is] mounted,” (Ex.
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`1017, 112:15-25); (ii) the patent does not provide any detail about how to mount
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`the reflector on the substrate, (id., 36:12-38:25, 52:21-53:10); and (iii) a POSITA
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`would have understood “there’s a number of possible ways” to mount a reflector
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`on a substrate, e.g., with an “adhesive layer to act as a bonding material between
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`the reflector and the substrate,” (id., 35:18-38:25, 44:25-45:23, 48:17-50:7, 60:19-
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`64:9).
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`Petitioner’s expert, Dr. Shealy, testified to the same. Ex. 2008, 70:22-74:22;
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`Ex. 1003, ¶¶94-97, 242. The prior art is also in accord. Ex. 1006, 5:37-43 (“on” or
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`“extending ‘onto’” encompasses presence of “intervening elements”); Ex. 1015,
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`¶0036 (“formed ‘on’ …. [a] substrate contemplates that additional layers may
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`intervene”); Ex. 1004, 3:34-45.
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`B.
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`“proximate”
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`Petitioner submits that “proximate” does not need construction. In contrast,
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`Patent Owner cherry-picks part of a dictionary definition (“very near”) to narrow
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`3
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`

`

`
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`the amount of nearness suggested by “proximate” itself. Paper 21, 18 (citing Ex.
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`2011) (emphasis added). However, the definition Patent Owner cites, and its
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`etymological explanation, explain that “proximate” also means “close” or “near.”
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`Ex. 2011, 4; see also Ex. 1003, ¶¶59, 119, 121-22, 151, 209-210, 232 (explaining
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`that a POSITA would have understood proximate to mean close or near); Ex. 2011,
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`4 (“proximity” means “[t]he quality or state of being proximate: CLOSENESS”);
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`Ex. 2015, 1 (“close” is a synonym for proximate).
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`Regardless, “very near” is no more effective than “proximate” for
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`eliminating the cited prior art in Petitioner’s Grounds. Whether “very near,”
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`“near,” or “close” is used as a definition for “proximate,” the art still discloses the
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`relevant claim limitations.
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`“upper portion”/“lower portion”
`C.
`The Board has already properly rejected Patent Owner’s assertion that the
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`“upper portion” and “lower portion” cannot overlap. Paper 14, 6-7. As the Board
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`noted, the patent “does not describe or define the boundaries of the upper portion
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`or lower portion by explaining what is included in the respective portions or by
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`defining the relationship of one to the other.” Id., 7.
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`Patent Owner again asserts that the upper and lower portions cannot overlap,
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`and appears to argue that the portions are limited to some small, non-overlapping
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`
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`4
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`

`

`
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`upper and lower portions projected onto Figure 1. Paper 21, 15-17. In doing so,
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`Patent Owner takes issue with both the Board and Petitioner.
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`With respect to the Board, Patent Owner argues that—because Dr. Shealy
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`has allegedly admitted that the upper and lower portions “could be virtually the
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`same regions” under the Board’s construction—the Board’s construction must be
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`wrong. Paper 21, 18 (citing Ex. 2008, 121:9-122:10). But Dr. Shealy testified
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`only that the ’297 patent is agnostic about the lower bound of the “upper portion”
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`and the upper bound of the “lower portion.” Ex. 2008, 114:5-121:20 (testifying,
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`e.g., that the upper and lower portions are “not well defined,” that “the teaching in
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`the patent is pretty loose,” and that when “one skilled reads this [patent]… they
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`can’t import a relative dimension of one versus the other, because the other
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`boundary is not really defined”); see also Biosig Instruments, Inc. v. Nautilus, Inc.,
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`783 F.3d 1374, 1382-83 (Fed. Cir. 2015) (claims do not have to precisely define
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`every mete and bound, only those necessary to understand the claimed boundaries
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`as a whole).
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`Mr. Credelle testified similarly: (i) the lower and upper portions are not well
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`defined and it is not possible to attribute a precise percentage to the portions, (Ex.
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`1017, 182:23-187:10, 91:14-25); (ii) there is no reference in the claims or the
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`specification to a “middle portion,” (id., 100:24-101:4, 102:2-6); and (iii)
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`
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`5
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`

`

`
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`depending on the size of the package, the upper and lower portions “could be
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`closer or farther apart,” (id., 102:24-103:12).
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`Moreover, not only does the ’297 patent not include any express definition
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`of the claim terms, (see Wasica, 853 F.3d at 1281-82; Thorner, 669 F.3d at 1366-
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`68), but also the use of Figure 1 for inferential definitional purposes is not helpful
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`where the POSITA must apply the claim language to other reflector sizes and
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`shapes. See Anchor Wall Sys. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298,
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`1306-07 (Fed. Cir. 2003). And nowhere does the ’297 patent say that the upper
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`and lower portions cannot overlap. See also Ex. 2008, 114:5-118:6 (Dr. Shealy
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`explaining overlap); Ex. 1003, ¶¶55-59; Paper 14, 7.
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`Patent Owner’s and Mr. Credelle’s use of extrinsic dictionary definitions to
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`suggest that “portions” must be mutually exclusive is a red herring. Paper 21, 17
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`(citing Ex. 2011; Ex. 2009, ¶18). Not only are dictionary definitions uncalled for
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`here, but also Patent Owner and Mr. Credelle read the definitions too narrowly.
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`For example, they focus on an entirely different context, viz: the apportionment of
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`a distribution, such as an inheritance. Id. Plainly, in the general case, “portions”
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`may overlap; e.g., the “portion” of pie one provides to another may well overlap
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`with the “portion” that was burned in the oven.
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`With respect to Petitioner, Patent Owner argues that Petitioner’s
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`construction requires two notches and, since all parties agree that claims 3 and 4
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`
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`6
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`

`

`
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`require a single notch, Petitioner’s construction must be wrong. Paper 21, 16-17.
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`But Patent Owner’s view is wrong. Under Petitioner’s construction, a single notch
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`is both the highest and lowest notch. Pet., 68; Ex. 1003, ¶209.
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`And, notwithstanding any of the above, even under Patent Owner’s overly
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`narrow construction, a notch in the middle is still proximate to both the upper and
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`lower portions, and the prior art would still anticipate or render obvious claims 3
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`and 4.
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`Although Mr. Credelle testified that he “regret[ted]” drawing the upper and
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`lower portions as he did, (Ex. 1017, 96:6-21, 79:19-80:7), he confirmed that: (i) it
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`is his view, as expressed in his annotated Figure 1, that the distance from the lower
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`edge of the upper portion to the top of the reflector is the patent’s teaching of the
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`maximum distance within the meaning of “proximate,” as that term relates to the
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`upper portion, (id., 77:18-78:17, 183:14-184:1); and (ii) the “notch” of claim 3,
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`therefore, is “proximate” the upper portion if the distance from the notch to the
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`lower edge of the upper portion is the same as (or less than) the distance from the
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`lower edge of the upper portion to the top of the reflector, (id., 182:23-187:10).1
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`1 Mr. Credelle testified that it is a “symmetrical argument” for claim 4, i.e., that
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`claim 4’s “notch” is proximate the lower portion if its distance to the upper edge of
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`
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`7
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`

`

`
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`This means that, according to Mr. Credelle, a notch exactly in the middle of his
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`own annotated Figure 1 would be proximate to the upper portion (green text, lines,
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`and midway bisection point added to Mr. Credelle’s annotated drawing):
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`
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`the lower portion is the same as (or less than) the distance from the upper edge of
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`the lower portion to the substrate. Ex. 1017, 92:1-93:4, 97:6-8, 130:21-131:19,
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`182:23-187:10. He also testified that notch 146 is not the claimed notch. Id.,
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`66:17-67:25, 104:2-106:8. Petitioner notes that it is somewhat difficult to square
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`Mr. Credelle’s testimony logically, particularly given the differences in the
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`respective heights of the upper and lower portions in Mr. Credelle’s annotated
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`Figure 1 and given that the only notch in the ’297 patent that he asserts qualifies as
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`the claimed notch is notch 134.
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`
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`8
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`

`

`
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`D.
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`“intersects”/“intersecting”/“at the intersection”
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`Patent Owner does not address Petitioner’s construction of “intersect[s/ing].”
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`Instead, Patent Owner attempts to impart unwarranted restrictions to the phrase “at
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`the intersection”—an attempt the Board has already correctly rejected. Paper 14,
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`8-9. Patent Owner still “does not explain why Petitioner’s dictionary usage for the
`
`term ‘at’ is incorrect, or present evidence tending to show that Patent Owner has
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`disavowed or disclaimed the term ‘at the intersection’ in the manner proposed by
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`Patent Owner.” Id., 9.
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`According to Patent Owner, “[i]n the ’297 patent, ‘at the intersection’
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`always means that the notch overlaps the point of intersection between the reflector
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`wall and a platform located on the substrate.” Paper 21, 22. In support, Patent
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`Owner points to the exemplary embodiment in Figure 1. Id. But Patent Owner
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`does not contend that there is a clear disavowal or lexicographical intent. See
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`Wasica, 853 F.3d at 1281-82; Thorner, 669 F.3d at 1366-68. Nor does Patent
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`Owner address Dr. Shealy’s testimony that the plain and ordinary meaning of
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`“at”—from a POSITA’s perspective—is “in, on, or near.” Ex. 1003, ¶¶50-54; Ex.
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`1012, 4 (“at” “indicate[s] the presence or occurrence in, on or near”); Paper 14, 8-
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`9.
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`
`
`9
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`

`

`
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`Even if one were to consider Mr. Credelle’s cursory conclusions, they do not
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`change the result.2 His argument is not only internally inconsistent, but, in fact,
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`confirms Petitioner’s construction is correct. He argues that “[a] POSITA in 2007
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`would understand that a ‘platform’ is a solid element with a non-zero thickness and
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`a reflector slanted portion is a solid element with a non-zero thickness.” Ex. 2009,
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`¶21. Yet, he concludes that “[t]he correct interpretation of the notch 146 is that it
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`is ‘at the intersection’ of two solid surfaces,” id. (emphasis added), pointing to the
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`following figures:
`
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`Under Mr. Credelle’s theory, there is no intersection of the “solid” platform
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`and slanted portion, and thus, there can be no notch “at the intersection” of these
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`“non-zero thickness” “solid elements,” only “near” these solid elements—just as
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`Dr. Shealy explained. Ex. 1003, ¶¶49-54.
`
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`2 Tellingly, Patent Owner does not rely on Mr. Credelle in support of its proposed
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`construction. Paper 21, 21-22.
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`
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`10
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`

`

`
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`III. The Challenged Claims are Unpatentable
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`A. Ground 1: Loh ’842 Anticipates Claims 1-6
`
`1.
`
`Claim 1
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`Patent Owner and Mr. Credelle do not dispute that Loh ’842 teaches the
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`claimed “notch”—per the ’297 patent, the only allegedly novel feature of claim 1.
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`Ex. 1017, 68:12-70:10, 71:19-72:1; Ex 1001, 2:41-67; Ex. 1002, 56-57. Instead,
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`Patent Owner focuses on non-existent differences between (by the ’297 patent’s
`
`and Mr. Credelle’s admissions) “conventional” light-emitting-device elements
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`(e.g., a reflector mounted on a substrate to form a cavity, (see Ex. 1001, 1:5-9; Ex.
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`1017, 31:16-33:3, 35:10-36:11, 40:7-19, 106:19-107:18, 115:21-116:25)) and Loh
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`’842’s conventional elements. Specifically, Patent Owner argues that Loh ’842
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`fails to anticipate claim 1 because Loh ’842 uses a mounting pad to attach the
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`reflector and substrate, and, thus, it does not have (i) “a reflector extending from
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`said substrate,” (ii) “said reflector forming a cavity in conjunction with said
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`substrate,” and (iii) “a light emitter located in said cavity.” Paper 21, 11-14.
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`Loh ’842’s reflector extends from the substrate
`a.
`Patent Owner’s argument rests on the faulty premise—rejected in the
`
`Institution Decision, (Paper 14, 9)—that, as a matter of claim construction, there
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`can be no intervening material (even bonding material) between the reflector and
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`substrate.
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`
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`11
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`

`

`
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`As explained in §II.A, this is incorrect and contradicts both parties’ experts.
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`Ex. 2008, 70:22-74:22; Ex. 1003, ¶¶94-98; Ex. 1017, 35:18-38:25, 44:25-45:23,
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`48:17-50:7, 52:21-53:10, 60:19-64:9, 112:15-25.
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`There is no credible dispute that Loh ’842 teaches to mount its reflector on
`
`its substrate using, e.g., a mounting pad, “a quantity of epoxy” or “any other
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`suitable adhesive or attachment technique.” Ex. 1004, 8:7-13; Ex. 1017, 60:19-
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`64:9 (Mr. Credelle explaining that a POSITA would have understood the ’297
`
`patent’s general disclosure of mounting to encompass Loh ’842’s teachings); Ex.
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`2008, 69:7-80:10.
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`Moreover, Loh ’842 teaches that the “mounting pad” may be considered part
`
`of the “substrate.” Ex. 1004, 4:2-6 (“The package includes a substrate including a
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`mounting pad.”), 2:42-44, 11:1-7; Ex. 2008, 70:7-73:5.
`
`b.
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`Loh ’842’s reflector and substrate form a cavity
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`Similarly, Patent Owner asserts that Loh ’842’s reflector and substrate do
`
`not form a cavity because a mounting pad extends across the top of the substrate.
`
`Paper 21, 13-14. Again, Patent Owner “fails to address or explain in any way how
`
`Loh ’842’s explicit description that ‘encapsulant 111 may be deposited in a space
`
`400 defined between substrate 102, lens 104, and/or lens coupler 106’ fails to meet
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`‘said reflector forming a cavity in conjunction with said substrate.’” Paper 14, 15-
`
`
`
`12
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`

`

`
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`16 (quoting Ex. 1004, 5:45-47; emphasis in original); see also Ex. 1004, 5:45-6:10,
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`FIGs. 4A-4C, 8A-8G; Ex. 1003, ¶¶99-100.
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`Moreover, Loh ’842 teaches that the mounting pad may be considered part
`
`of the substrate. See §III.A.1.a.
`
`c.
`
`Loh ’842’s light emitter is located in the cavity
`
`Patent Owner’s argument with respect to Loh ’842’s alleged lack of “a light
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`emitter located in said cavity” is based solely on its incorrect “cavity” argument.
`
`2.
`
`Claim 2
`
`Patent Owner argues that Loh ’842 does not disclose “an encapsulant
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`located in said cavity” because Loh ’842 lacks the claimed “cavity.” This
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`argument fails for the reasons explained in §III.A.1.
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`Patent Owner also argues that “Petitioner has improperly combined
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`multiple embodiments….” Paper 21, 14-15. This is unsupported attorney
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`argument that should afforded no weight,3 and ignores Petitioner’s evidence,
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`including Dr. Shealy’s unrebutted testimony that Loh ’842 teaches that the same
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`encapsulant 111 is added to the various figures (both before the lens is added, as in
`
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`3 See, e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); Itron Network
`
`Solutions, Inc. v. Acoustic Tech., Inc., IPR2017-01024, Paper 49, 26 (P.T.A.B.
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`Aug. 21, 2018).
`
`
`
`13
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`

`

`Figure 4C, and after the lens is added, as in Figures 8B/D). Ex. 1003, ¶¶110-14;
`
`
`
`see also Paper 14, 16-17.
`
`3.
`
`Claims 3-4
`
`Claims 3 and 4 each depend from claim 1; both require that the reflector has
`
`“an upper portion” and “a lower portion,” where “said lower portion [is] located
`
`proximate said substrate.” Patent Owner does not dispute that Loh ’842 has these
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`portions. Instead, Patent Owner argues that Loh ’842 does not have claim 3’s “at
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`least one first notch being located proximate said upper portion,” or claim 4’s “at
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`least one first notch being located proximate said lower portion,” based solely on
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`its incorrect claim construction. See §§II.B-C. That should be the end of the
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`matter.
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`However, even if Patent Owner were correct that the portions cannot
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`overlap, Loh ’842 still anticipates. The claims do not require the single notch to be
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`in either portion; they require only that the notch be “proximate” to a particular
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`portion. Ex. 1001, 3:53-59. This is what Loh ’842 teaches, with notches of
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`varying heights (red and blue) proximate the upper portion and/or the lower
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`portion—itself proximate the substrate (purple):
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`
`
`14
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`

`

` Figure 8B
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`
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`Figure 8D
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`Figure 8C
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` Figure 8E
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`Figure 8F
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`
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`See also Ex. 1003, ¶¶117-131.
`
`
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`Indeed, Patent Owner does not credibly dispute that Loh ’842 discloses
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`notches that are proximate the upper and lower portions, even under its own
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`construction, and as confirmed during Mr. Credelle’s deposition. Paper 21, 19
`
`(citing Ex. 2009, ¶25); Ex. 1017, 182:10-187:10, 77:1-103:12, 129:6-131:19; see
`
`also §II.C.
`
`Unable to rebut Petitioner’s showing, Patent Owner asserts that “Petitioner
`
`has improperly combined multiple embodiments in its analysis of claims 3 and 4.”
`
`Paper 21, 19-20. As with claim 2, not only is this unsupported attorney argument,
`
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`15
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`

`

`
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`but also it ignores Petitioner’s detailed evidence explaining why a POSITA would
`
`have understood Loh ’842 to teach that the square notches are to be applied to each
`
`of the various shaped reflectors. See Ex. 1003, ¶¶118-29; Ex. 1004, 4:55-5:4, 5:32-
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`43, 6:30-8:65, FIGs. 8A-8G; see also Paper 14, 18-19 (crediting Petitioner’s
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`explanation “that Loh ’842 explicitly contemplates the combination of the
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`disclosed notch shapes”); Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331,
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`1344 (Fed. Cir. 2016); Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d
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`1376, 1381 (Fed. Cir. 2015).
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`4.
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`Claim 5
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`Patent Owner repeats its Preliminary Response attorney argument. Compare
`
`Paper 21, 21 with Paper 10, 20. The Board properly rejected it. Paper 14, 19.
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`5.
`
`Claim 6
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`Patent Owner argues that Loh ’842 does not anticipate claim 6 because (i) it
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`“do[es] not disclose or suggest a notch ‘located at the intersection of said slanted
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`portion and said platform notch [sic],’” and (ii) Petitioner improperly combines
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`embodiments. Paper 21, 21.
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`Patent Owner’s at-the-intersection argument rests exclusively on its
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`incorrect construction. See §II.D.
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`Even under that construction, Loh ’842’s Figure 8C discloses a notch “at the
`
`intersection” of a slanted portion and platform:
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`16
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`

`
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`
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`Ex. 1003, ¶136.
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`Patent Owner proffers confusing attorney argument, at odds with its own
`
`expert, that notch 406 (colored blue in Figure 8C, above) is not at the intersection
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`of a platform and slanted portion because its “upper edges … are located at the
`
`same height and, thus, are not in the slanted portion, or at an intersection of the
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`slanted portion and a platform.” Paper 24, 24. This argument’s weakness can be
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`seen by a side-by-side comparison of Dr. Shealy’s annotation of Loh ’842’s Figure
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`8C (left) and Mr. Credelle’s annotation of Figure 1 of the ’297 patent (right), both
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`depicting a notch at the intersection when the platform and slanted portions are
`
`extended in a geometric line:
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`
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`17
`
`
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`

`

`Ex. 1003, ¶136; Ex. 2009, ¶21. And, in non-annotated versions:
`
`
`
`
`
`
`
`
`
`As for Patent Owner’s multiple-embodiments attorney argument, it is a
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`rehash of its Preliminary Response. Compare Paper 21, 24-25 with Paper 10, 25-
`
`26. Patent Owner asserts that “the record makes clear that neither Dr. Shealy nor
`
`Petitioner has any evidentiary basis to support the contention that a POSITA would
`
`have looked to use different depression shapes to alter the radiation patterns.”
`
`Paper 21, 25. But the record is replete with evidence from Loh ’842 itself and Dr.
`
`Shealy’s unrebutted testimony. Ex. 1004, 5:32-43, 6:30-8:65; Ex. 1003, ¶¶121-29,
`
`137; Ex. 2008, 61:9-65:3. Dr. Shealy explained at his deposition that a POSITA
`
`would have understood that different shaped notches of Loh ’842 would result in
`
`different radiation patterns. Ex. 2008, 60:14-22 (Loh ’842 doesn’t “specifically
`
`say ‘radiation pattern’ [at 5:32-43], but they say ‘Can be positioned for directing
`
`the light upwards and away from the package.’ So that’s radiation patterns implicit
`
`in that statement.”), 61:9-62:10 (Loh ’842 at 6:30-8:65 “talk[s] about the notches
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`
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`18
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`

`

`
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`controlling the meniscus, and of course the meniscus has a pronounced effect on
`
`the radiation pattern”).
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`Moreover, Patent Owner again ignores Petitioner’s expert-supported
`
`explanation why a POSITA would have understood Loh ’842 to teach that its
`
`square notches are to be applied to each of the various shaped reflectors. See Ex.
`
`1003, ¶¶119-29, 135-39; Ex. 1004, 4:55-5:4, 5:32-43, 6:30-8:65, FIGs. 8A-8G; see
`
`also Paper 14, 18-19; Blue Calypso, 815 F.3d at 1344; Kennametal, 780 F.3d at
`
`1381.
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`B.
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`Loh ’842-Based Obviousness Grounds
`
`Patent Owner’s opposition to Grounds 2-4 is based solely on attorney
`
`argument, and is a rehash of its previously-rejected arguments. See, e.g., Geisler,
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`116 F.3d at 1470.
`
`1. Ground 2: Loh ’842 Renders Obvious Claims 1-6, 9
`Claims 1-6
`a.
`Patent Owner argues that Petitioner has failed to show why a POSITA
`
`would have been motivated to use square-shaped notches in various Loh ’842
`
`figures. This argument is wrong for the same reasons discussed in §§III.A.3, 5,
`
`and further fails to address the additional evidence Petitioner put forth in Ground 2.
`
`Most important, Patent Owner entirely ignores Nii (and Dr. Shealy’s
`
`explanation thereof), which explicitly teaches using square-shaped notches to
`
`
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`19
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`

`

`
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`reduce delamination, e.g., at the top of a reflector. Ex. 1010, 2:5-25, 10:47-55,
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`11:56-62, 20:27-32, FIG. 1C; Ex. 1003, ¶¶73-78, 142; Paper 14, 22.
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`Dr. Shealy explained that a POSITA would have found it obvious to
`
`substitute square notches to increase surface area, thereby better preventing
`
`delamination:
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`Q. To the knowledge of a person of ordinary skill in the art at the
`time of filing here of the ’297 patent… would a square notch be
`better at preventing delamination than a round notch?
`A. The Nii reference describes the surface area of the notch as being
`the important parameter to prevent delamination. And so the
`surface area of a square notch would be larger than the surface
`of a circular notch or a triangular notch. So according to the
`teachings of that, the larger the surface area of the notch, the
`more effective it would be.
`Ex. 2008, 87:1-17 (objection omitted); see also 87:19-89:5, 92:15-93:13; Ex. 1003,
`
`¶¶72-78, 142.
`
`And, while Patent Owner makes much of the claimed notch and reflector
`
`shapes to argue that Loh ’842 would not render obvious claims 1-6, it ignores
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`Petitioner’s evidence, including Dr. Shealy’s explanations both (i) as to why a
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`POSITA would have used different shaped notches and various reflector shapes
`
`and configurations, (see, e.g., Ex. 1003, ¶¶121-29, 137, 141; Ex. 2008, 61:9-65:3;
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`Ex. 1004, 5:32-43, 6:30-8:65), and (ii) that the ’297 patent places no significance
`
`
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`20
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`

`

`
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`on the shape of its notches or its “conventional” reflector, a point confirmed by Mr.
`
`Credelle. Ex. 1003, ¶141; Ex. 1017, 104:2-108:14, 74:13-75:5.
`
`Claim 5
`b.
`As with Ground 1, Patent Owner repeats its already-rejected Preliminary
`
`Response attorney argument. Compare Paper 21, 28-29 with Paper 10, 29; Paper
`
`14, 22.
`
`Claim 6
`c.
`Patent Owner’s argument regarding claim 6 fails, both for the reasons
`
`discussed in §III.B.1.a, and additional reasons.
`
`While Patent Owner concedes that Nii teaches adding notches for the
`
`purpose of preventing delamination, it concludes that “Petitioner’s argument
`
`[regarding delamination] is purely based on improper hindsight.” Paper 21, 31.
`
`Patent Owner ignores Nii’s teachings, as well as Dr. Shealy’s testimony explaining
`
`why a POSITA would have applied a square-shaped notch to various reflector
`
`shapes. Ex. 1003, ¶¶72-78, 150 (Nii teaches to use square-shaped notches to
`
`increase surface area to better prevent delamination), ¶¶121-29, 137 (Loh ’842
`
`teaches to use squared-shaped notches in each reflector shape), ¶¶141-42
`
`(explaining Loh ’842 and Nii), ¶149 (obvious to use various shaped reflectors); Ex.
`
`2008, 87:1-89:5, 92:15-93:13; Ex. 1010, 2:5-25, 10:47-55, 11:56-62, 20:27-32,
`
`FIG. 1C.
`
`
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`21
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`

`
`
`Claim 9
`d.
`Patent Owner’s attorney argument fails for essentially the same reasons
`
`discussed in §§III.A.5, III.B.2.a, c. See also Paper 14, 22-24. Additionally, Patent
`
`Owner never addresses Dr. Shealy’s testimony—supported by Loh ’842 and Nii—
`
`that “a POSITA would have thought to use a variety of combinations taught by
`
`Loh ’842 to create a variety of configurations—such as combining Figures 8B and
`
`8C—in order to enhance radiation efficiency, alter radiation pattern and minimize
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`encapsulant delamination.” Ex. 1003, ¶160; see also ¶¶161-62; Ex. 2008, 87:1-
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`89:5, 92:15-93:13.
`
`2. Ground 3: Loh ’842 and Fujiwara Render Obvious Claims
`7-8, 10-17
`For claims 7-8, Patent Owner repeats its Preliminary Response attorney
`
`argument. Compare Paper 21, 34-36 with Paper 10, 34-36.4
`
`Patent Owner does not rebut that it would have been obvious to combine
`
`Loh ’842 with Fujiwara. Paper 21, 34-36. Instead, Patent Owner argues that
`
`Fujiwara does not disclose an adhesive-filled recess. Id. As the Board recognized,
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`“Fujiwara describes a resin inserted in a concave portion of a substrate which
`
`
`4 The parties agree that, for Grounds 3-4 and 7-8, the obviousness of claims 10-17
`
`rises and falls with other claims having effectively the same scope.