`
`
`
`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 PRELIMINARY RESPONSE
`
`

`

`TABLE OF CONTENTS
`
`
`
`I. 
`II. 
`
`INTRODUCTION ........................................................................................... 1 
`OVERVIEW .................................................................................................... 5 
`A. 
`The ’297 Patent ..................................................................................... 5 
`B. 
`Disputed Claims .................................................................................... 6 
`C. 
`Claim Construction ............................................................................. 11 
`III.  THE CHALLENGED CLAIMS ARE NOT UNPATENTABLE ................ 12 
`A.  Grounds 1-4 Fail Because Petitioner Fails to Show that Loh ’842 Was
`Filed Prior to the Invention of the ’297 Patent .................................... 14 
`Ground 1 Fails Because Loh ’842 Fails to Disclose Each Element of
`Claims 1-6 ........................................................................................... 15 
`Claim 1 ........................................................................................... 15 
`Claim 2 ........................................................................................... 17 
`Claims 3-4 ...................................................................................... 18 
`a) 
`Construction of “lower portion” and “upper portion” (claims
`3 and 4) ................................................................................ 18 
`Loh ’842 fails to disclose the “at least one notch” located as
`set forth in claims 3 and 4 .................................................... 20 
`Claim 5 ........................................................................................... 21 
`Claim 6 ........................................................................................... 22 
`a) 
`The construction of “at the intersection” (claims 6, 9, and
`15) ........................................................................................ 22 
`Loh ’842 fails to disclose or suggest a notch “at the
`intersection” recited in claim 6 ............................................ 24 
`
`B. 
`
`1. 
`2. 
`3. 
`
`4. 
`5. 
`
`b) 
`
`b) 
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`- i -
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`

`

`C. 
`
`E. 
`
`F. 
`
`1. 
`2. 
`3. 
`4. 
`
`Ground 2 Fails Because Loh ’842 Fails to Disclose or Suggest Each
`Element of Claims 1-6 and 9 ............................................................... 26 
`Claims 1-6 ...................................................................................... 26 
`1. 
`Claim 5 ........................................................................................... 29 
`2. 
`Claim 6 ........................................................................................... 29 
`3. 
`Claim 9 ........................................................................................... 32 
`4. 
`D.  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 ......................................................................................... 37 
`Claims 11-14 .................................................................................. 37 
`Claims 15-17 .................................................................................. 37 
`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 
`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 ........................................................................................... 41 
`1. 
`Claim 2 ........................................................................................... 45 
`2. 
`Claims 3-4 ...................................................................................... 46 
`3. 
`Claim 5 ........................................................................................... 47 
`4. 
`Claim 6 ........................................................................................... 48 
`5. 
`G.  Ground 6 Fails Loh ’819 Fails to Disclose or Suggest Each Element of
`Claims 1-6 and 9 .................................................................................. 49 
`
`1. 
`2. 
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`- ii -
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`

`

`Claims 1-6 ...................................................................................... 50 
`1. 
`Claims 3-4 ...................................................................................... 52 
`2. 
`Claim 5 ........................................................................................... 53 
`3. 
`Claim 6 ........................................................................................... 53 
`4. 
`Claim 9 ........................................................................................... 55 
`5. 
`H.  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 ............................................................................................. 58 
`Claims 7-8 ...................................................................................... 59 
`Claims 10-17 .................................................................................. 61 
`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 .................................................................................................... 61 
`Claims 7-8 ...................................................................................... 61 
`1. 
`Claims 10-17 .................................................................................. 63 
`2. 
`IV.  CONCLUSION .............................................................................................. 63 
`
`
`1. 
`2. 
`
`I. 
`
`
`
`
`
`- iii -
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`

`

`TABLE OF AUTHORITIES
`
`Cases 
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) ................................................................................... 23
`In re Smith Int’l,
`871 F.3d 1375 (Fed. Cir. 2017) ..................................................................... 22
`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
`SAS Institute Inc. v. Iancu,
`138 S. Ct. 1348 (2018) .............................................................................. 1, 12
`Statutes 
`35 U.S.C. § 154(a)(2) ............................................................................................... 11
`35 U.S.C. § 314(a) ................................................................................................... 12
`35 U.S.C. § 316 ........................................................................................................ 12
`35 U.S.C. § 316(a)-(b) ............................................................................................. 13
`35 U.S.C. §102(e) .................................................................................................... 14
`Rules 
`37 C.F.R. § 42 .......................................................................................................... 12
`37 C.F.R. § 42.100(b) .............................................................................................. 11
`37 C.F.R. § 42.104(b) ....................................................................................... 52, 54
`37 C.F.R. § 42.107 ..................................................................................................... 1
`37 C.F.R. § 42.108(a) ............................................................................................... 12
`37 C.F.R. § 42.108(b) .............................................................................................. 12
`
`- iv -
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`

`

`37 C.F.R. § 42.108(c) ............................................................................................... 12
`37 C.F.R. § 42.120(a) ................................................................................................. 1
`Other Authorities 
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,612 (Aug. 14, 2012) .............. 13
`
`
`
`- v -
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`

`

`IPR2018-00966 Patent Owner’s Preliminary Response
`
`Pursuant to 37 C.F.R. § 42.107, Patent Owner Document Security Systems,
`
`Inc. (“DSS” or “Patent Owner”) files this preliminary response to the Petition,
`
`setting forth reasons why the Petition for inter partes review (“IPR”) of U.S. Patent
`
`No. 7,652,297 (the “’297 patent”), claims 1-17, as requested by Nichia Corporation
`
`(“Petitioner”) should be denied.1
`
`I.
`
`INTRODUCTION
`To obtain institution of a challenge presented in the Petition, the Board’s
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`Rules require Petitioner to show that the challenge demonstrates a reasonable
`
`likelihood of success. The Board’s Rules also require an evaluation of all such
`
`challenges on a ground-by-ground and claim-by-claim basis. As SAS Institute Inc.
`
`v. Iancu, 584 U.S. ___, 138 S. Ct. 1348 (2018), requires a binary institution
`
`decision, if any challenge in the Petition is deficient, there should be no institution
`
`of the entire Petition. Nichia’s Petition includes numerous deficient challenges,
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`both against all grounds and claims in those grounds, which should result in no
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`institution of an IPR against the ’297 patent.
`
`
`1 By submitting this Preliminary Response, no waiver of any argument is intended
`
`by Patent Owner. Patent Owner will have a right to file “a response to the petition
`
`addressing any ground for unpatentability not already denied” should the Board
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`institute inter partes review. 37 C.F.R. § 42.120(a).
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`-1-
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`

`

`IPR2018-00966 Patent Owner’s Preliminary Response
`
`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.
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`The construction of elements claimed in the ’297 patent, including the notch(es),
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`serves to retard or stop delamination of the encapsulant.
`
`In total, Petitioner has asserted eight separate, yet overlapping, grounds upon
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`which it challenges the claims of the ’297 patent. The challenges are in two
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`groups. Grounds 1-4 are based on Loh ’842,2 which is not demonstrated to be
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`prior art to the ’297 patent. While Petitioner notes the close filing date of Loh ’842
`
`relative to the filing date of the ’297 patent, Petitioner does not rebut the
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`circumstantial evidence that an invention cannot be made, and a patent application
`
`drafted, in less than two weeks. Moreover, Patent Owner will explain that Loh
`
`’842 does not disclose a reflector “extending from” a substrate, and other structures
`
`set forth in the claims of the ’297 patent.
`
`The second set of challenges, Grounds 5-8, are based on Loh ’819,3 which
`
`fails to disclose or suggest the aspects of the claimed light emitting device. For
`
`2 Ex. 1004, U.S. Patent No. 7,939,842 (“Loh ’842”).
`
`3 Ex. 1006, U.S. Patent No. 7,960,819 (“Loh ’819”).
`
`-2-
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`

`

`IPR2018-00966 Patent Owner’s Preliminary Response
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`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
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`motivated by hindsight.
`
`Petitioner also sometimes acknowledges these shortcomings by looking to
`
`secondary references Fujiwara,4 Uraya,5 and Andrews6 in an attempt to fill in the
`
`gaps presented by the primary references Loh ’842 and Loh ’819. But Petitioner
`
`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.
`
`4 Ex. 1005, U.S. Patent No. 6,680,568 (“Fujiwara”).
`5 Ex. 1011, Japanese Patent Application No. 2005-174998, with certified
`translation (“Uraya”).
`6 Ex. 1007, U.S. Patent Application Publication No. 2005/0218421 (“Andrews”).
`
`-3-
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`

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`IPR2018-00966 Patent Owner’s Preliminary Response
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`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
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`single location, is proximate to both an “upper portion” and a “lower portion.” In
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`fact, Petitioner goes so far as to read “upper portion” and “lower portion” on two
`
`things that are horizontally aligned side-by-side. Under the correct constructions
`
`and applications of those constructions, the asserted art fails to disclose all features
`
`recited in claims 3 and 4.
`
`As result, each challenge is deficient and must be denied.
`
`
`
`
`
`-4-
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`

`

`IPR2018-00966 Patent Owner’s Preliminary Response
`
`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 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 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 construction of
`
`elements claimed in the ’297 patent, including the notch(es), serves to retard or
`
`stop delamination of the encapsulant.
`
`-5-
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`

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`IPR2018-00966 Patent Owner’s Preliminary Response
`
`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 IPR 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
`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,
`
`-6-
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`

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`IPR2018-00966 Patent Owner’s Preliminary Response
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`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.
`
`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.
`
`
`-7-
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`

`

`IPR2018-00966 Patent Owner’s Preliminary Response
`
`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;
`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
`
`-8-
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`

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`IPR2018-00966 Patent Owner’s Preliminary Response
`
`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.
`
`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.
`
`
`-9-
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`

`

`IPR2018-00966 Patent Owner’s Preliminary Response
`
`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;
`a slanted portion extending from said second
`platform toward said substrate; and
`a third platform located on said substrate and
`intersecting said slanted portion;
`wherein a second notch
`the
`located at
`is
`intersection of said third platform and said slanted
`portion;
`a light emitter located in said cavity; and
`
`-10-
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`

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`IPR2018-00966 Patent Owner’s Preliminary Response
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`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).
`
`Petitioner states that the Board should apply the “broadest reasonable
`
`construction (‘BRI’) in light of the specification” to the ’297 patent. Pet., 10. As
`
`the purpose of claim construction is not simply to identify potential synonyms of
`
`claim terms and swap them out without reason; rather, 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
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`-11-
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`

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`IPR2018-00966 Patent Owner’s Preliminary Response
`
`constructions below while reserving the right to challenge Petitioner’s construction
`
`of those terms, and to assert its own construction of those terms, if trial is
`
`instituted.
`
`III. THE CHALLENGED CLAIMS ARE NOT UNPATENTABLE
`In order to justify the institution of an inter partes review, a petitioner must
`
`establish that there is a “reasonable likelihood that the petitioner would prevail
`
`with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. §
`
`314(a). Further, prior to SAS Institute Inc. v. Iancu, 584 U.S. ___, 138 S. Ct. 1348
`
`(2018), the Director, as required by 35 U.S.C. § 316, implemented regulations in a
`
`manner that required claim-by-claim and ground-by-ground evaluation and
`
`permitted claim-by-claim and ground-by-ground institution. See 37 C.F.R. § 42.
`
`In particular, 37 C.F.R. § 42.108(a) allowed the Board to “authorize the review to
`
`proceed on all or some of the challenged claims and on all or some of the grounds
`
`of unpatentability asserted for each claim.” Additionally, 37 C.F.R. § 42.108(b)
`
`allowed the Board to “deny some or all grounds for unpatentability for some or all
`
`of the challenged claims” prior to institution of inter partes review. When denying
`
`a ground, 37 C.F.R. § 42.108(b) stated that such a “[d]enial of a ground is a Board
`
`decision not to institute inter partes review on that ground.” Moreover, under the
`
`heading “Sufficient grounds,” 37 C.F.R. § 42.108(c) provided that “Inter partes
`
`review shall not be instituted for a ground of unpatentability unless the Board
`
`-12-
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`

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`IPR2018-00966 Patent Owner’s Preliminary Response
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`decides that the petition supporting the ground would demonstrate that there is a
`
`reasonable likelihood that at least one of the claims challenged in the petition is
`
`unpatentable.” (emphasis added).
`
`In implementing these final rules, the Agency stated, “The Board will
`
`identify the grounds upon which the review will proceed on a claim-by-claim
`
`basis. Any claim or issue not included in the authorization for review is not part of
`
`the review.” See 77 Fed. Reg. 48,689. Indeed, the Agency specifically stated that
`
`the regulations did not adopt comments requesting that “all challenged claims to
`
`be included in the inter partes review when there is a reasonable likelihood of
`
`prevailing with respect to one challenged claim.” See 77 Fed. Reg. 48,702-03.
`
`Post-SAS, and though required under 35 U.S.C. § 316(a)-(b), the Agency has
`
`not issued new rules that would permit the Board to institute all grounds against all
`
`challenged claims even though a petitioner failed to establish a reasonable
`
`likelihood of prevailing on all challenged claims and all grounds. Therefore,
`
`should the Board find any challenge to any claim deficient, the sole permissible
`
`outcome, consistent with both the binary decision required under SAS and the
`
`Board’s governing regulations, is for the Board to deny institution of this inter
`
`partes review.
`
`Here, Petitioner has failed to establish that each of the challenged ’297
`
`patent claims are unpatentable over the asserted art. For the reasons discussed
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`-13-
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`

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`IPR2018-00966 Patent Owner’s Preliminary Response
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`below, the Board should deny the Petition and decline to institute the inter partes
`
`review.
`
`A. Grounds 1-4 Fail Because Petitioner Fails to Show that Loh ’842
`Was Filed Prior to the Invention of the ’297 Patent
`The Loh ’842 patent is used as the primary reference for Grounds 1-4. It is
`
`Petitioner’s burden to establish that each reference relied upon is in fact prior art.
`
`Petitioner asserts that Loh ’842 is prior art under 35 U.S.C. §102(e). As applied to
`
`Loh ’842, section 102(e) requires that Loh ’842 was filed as a patent application by
`
`another in the United States before the invention of the subject matter claimed in
`
`the ’297 patent. But Loh ’842 was filed only 15 days before the ’297 patent was
`
`filed. Pet., 16 n.5. Given that this is such a short time period, there is ample
`
`circumstantial evidence to support that the Loh ’842 is not prior art to the ’297
`
`patent. Petitioner, for example, has not shown that the amount of time required to
`
`prepare a patent application for filing is less than 15 days or any other
`
`circumstances that would show that the invention of ’297 patent occurred after the
`
`filing date of Loh ’842. Thus, Petitioner has failed to meet its burden of
`
`establishing that Loh ’842 qualifies as prior art. Accordingly, trial should not be
`
`instituted due to Grounds 1-4 for this reason alone.
`
`
`
`
`
`-14-
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`

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`IPR2018-00966 Patent Owner’s Preliminary Response
`
`B. 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, and no trial should be instituted due to Petitioner’s Ground 1 challenge.
`
`1.
`Claim 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
`
`not disclose this element of claim 1. Petitioner asserts that Loh’s lens coupler106
`
`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.
`
`-15-
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`

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`IPR2018-00966 Patent Owner’s Preliminary Response
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`
`
`Thus, the lens coupler 106 does not “extend[] from said substrate,” as recited in
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`claim 1. Instead, lens coupler 106 extends from the red, unlabeled layer, which is
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`not shown by Petitioner to be part of “said substrate.”
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`[1c] “said reflector forming a cavity in conjunction with said substrate”
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`Claim 1 also recites “said reflector forming a cavity in conjunction with said
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`substrate.” Petitioner relies upon Figure 8B as allegedly disclosing this claim
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`feature. Petitioner points to the lens coupler 106 (as corresponding to the
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`“reflector”) and substrate 102 as disclosing this claim element. But, the substrate
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`102 does not form the claimed “cavity.” Because the unlabeled purple layer rests
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`on top of the substrate 102 (green), the space 400 (allegedly corresponding to the
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`claimed “cavity”) is formed by the combination of lens coupler 106, the unlabeled
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`red layer, and the unlabeled purple layer. Accordingly, Petitioner has failed to
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`IPR2018-00966 Patent Owner’s Preliminary Response
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`demonstrate the presence of claimed arrangement of the reflector, substrate, and
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`cavity.
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`[1d] “a light emitter located in said cavity”
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`Claim 1 recites “a light emitter located in said cavity.” Loh ’842 does not
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`disclose this element because “said cavity” in the claims must be defined by a
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`substrate and reflector. But, as mentioned above, the substrate does not form the
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`“cavity.” Thus, Loh ’842 does not disclose this element.
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`2.
`Claim 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.”
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`Claim 2 recites “an encapsulant located in said cavity.” Loh ’842 does not
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`disclose this element because “said cavity” in claim 1 must be defined by a
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`substrate and reflector. But, as mentioned above, the substrate does not form the
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`“cavity.” Thus, Loh ’842 does not disclose this element.
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`Second, Petitioner has improperly combined multiple embodiments in its
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`analysis of dependent claim 2. The present ground (Ground 1) is an anticipation
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`ground. Being a dependent claim, claim 2 implicitly includes all of the limitations
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`of independent claim 1. For claim 1, Petitioner primarily relied upon the
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`embodiment shown in Figure 8B of Loh ‘842 as allegedly disclosing each element
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`of claim 1. But for claim 2, Petitioner relies upon the embodiments shown in
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`IPR2018-00966 Patent Owner’s Preliminary Response
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`Figures 4C, 8C, and 8D. Petitioner cannot combine multiple different
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`embodiments and argue that the combination anticipates a claim. See Net
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`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Thus,
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`Petitioner has failed to show that Loh ’842 anticipates claim 2 for this additional
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`reason.
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`3.
`Claims 3-4
`“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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`a)
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`Construction of “lower portion” and “upper portion”
`(claims 3 and 4)
`Petitioner asserts that “lower portion” of claims 3 and 4 should be construed
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`as “the part proximate the substrate and the lowest notch,” and “upper portion” of
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`claims 3 and 4 should be construed as “the part proximate the upper edge of the
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`reflector and the high