Paper No. 33
`Trials@uspto.gov
`571-272-7822 Entered: October 30, 2019
`
`
`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 B2
`
`____________
`
`
`
`Before SALLY C. MEDLEY, SCOTT C. MOORE, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: October 30, 2019
`
`
`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 B2
`
`____________
`
`
`
`Before SALLY C. MEDLEY, SCOTT C. MOORE, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`IPR2018-00966
`Patent 7,652,297 B2
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`I. INTRODUCTION
`Nichia Corporation (“Petitioner”)1 filed a Petition for inter partes
`review of claims 1–17 of U.S. Patent No. 7,652,297 B2 (Ex. 1001, “the
`’297 patent”). Paper 2 (“Pet.”). Document Security Systems, Inc. (“Patent
`Owner”) filed a Preliminary Response. Paper 10 (“Prelim. Resp.”). Upon
`consideration of the Petition, we instituted an inter partes review, pursuant
`to 35 U.S.C. § 314, as to claims 1–17 based on all challenges set forth in the
`Petition. Paper 14 (“Decision on Institution” or “Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 21, “PO Resp.”), Petitioner filed a Reply to Patent Owner’s
`Response (Paper 24, “Reply”), and Patent Owner filed a Sur-Reply (Paper
`26, “Sur-reply”). On July 30, 2019, we held an oral hearing. Paper 32
`(“Tr.”).
`
`A. Related Matters
`The parties indicate that the ’297 patent is the subject of several court
`proceedings. Pet. 1; Paper 3, 2.
`
`B. The ’297 Patent
`The specification of the ’297 patent describes a light-emitting device.
`Ex. 1001, Abstract. Figure 1 is reproduced below:
`
`
`1 Petitioner, Nichia Corporation, identifies Nichia America Corporation as a
`real party-in-interest. Pet. 1.
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`2
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`Figure 1 depicts a side cut away of an embodiment of a light-emitting
`device.
`As seen from the above, light-emitting device 100 includes substrate
`110, light emitting diode (LED) 112, and reflector 114. Id. at 1:39–41.
`Cavity 118 is filled with encapsulant. Id. at 1:48–50. Reflector 114 has an
`outer wall 122 with an upper edge 124. Id. at 1:59–63. First inner wall 126,
`first platform 128, and second inner wall 130 form a first notch 134, which
`extends axially around reflector 114. Id. at 2:6–9. First notch 134 serves to
`hold encapsulant within cavity 118. Id. at 2:9–10. A second platform 138
`extends from second inner wall 130 to a slanted wall 140. Id. at 2:13–15. A
`second notch 146 is located between slanted wall 140 and a third platform
`148 and extends along and around reflector 114. Id. at 2:19–21. Second
`notch 146 may be filled with encapsulant. Id. at 2:21–23. Gap 152 exists
`between reflector 114 and LED 112 and may contain contacts used to supply
`power to LED 112. Id. at 2:33–35. A single wire bond 154 extends between
`gap 152 and LED 112 and may supply power or signals to LED 112. Id. at
`2:36–38.
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`C. Illustrative Claim
`Petitioner challenges claims 1–17 of the ’297 patent. Claims 1, 10,
`and 15 are independent claims. Claim 1 is reproduced 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.
`Id. at 3:36–47.
`
`D. Asserted Grounds of Unpatentability
`We instituted trial based on all asserted grounds of unpatentability
`under 35 U.S.C.2 as follows (Dec. 4–5, 40):
`Challenged Claims
`35 U.S.C. §
`1–6
` 102(e)
`1–6, 9
` 103(a)
` 7, 8, 10–17
` 103(a)
`
`Reference(s)/Basis
`Loh ’8423
`Loh ’842
`Loh ’842 and Fujiwara4
`
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the ’297
`patent has an effective filing date before the effective date of the applicable
`AIA amendments, we refer to the pre-AIA versions of 35 U.S.C. §§ 102 and
`103.
`3 U.S. Patent No. 7,939,842 B2, filed Aug. 27, 2007, issued May 10, 2011
`(Ex. 1004, “Loh ’842”).
`4 U.S. Patent No. 6,680,568 B2, issued Jan. 20, 2004 (Ex. 1005, “Fujiwara”).
`4
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`Challenged Claims
`7, 8, 10–17
`1–6
`1–6, 9
`1–6, 9
`7, 8, 10–17
`7, 8, 10–17
`7, 8, 10–17
`7, 8, 10–17
`
`35 U.S.C. §
` 103(a)
` 102(e)
` 103(a)
` 103(a)
` 103(a)
` 103(a)
` 103(a)
` 103(a)
`
`II. ANALYSIS
`
`Reference(s)/Basis
`Loh ’842 and Uraya5
`Loh ’8196
`Loh ’819
`Loh ’819 and Andrews7
`Loh ’819 and Fujiwara
`Loh ’819, Fujiwara, and
`Andrews
`Loh ’819 and Uraya
`Loh ’819, Uraya, and
`Andrews
`
`A. Principles of Law
`To prevail in its challenge to Patent Owner’s claims, Petitioner must
`demonstrate by a preponderance of the evidence8 that the claims are
`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). To establish
`anticipation under 35 U.S.C. § 102, each and every element in a claim,
`arranged as recited in the claim, must be found in a single prior art reference.
`See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir.
`
`
`5 Japanese Patent Application No. 2005-174998, published June 30, 2005
`(Ex. 1011, “Uraya”).
`6 U.S. Patent No. 7,960,819 B2, filed July 13, 2006, issued June 14, 2011
`(Ex. 1006, “Loh ’819”).
`7 U.S. Patent Application Publication No. 2005/0218421 A1, filed Jan. 27,
`2005, published Oct. 6, 2005 (Ex. 1007, “Andrews”).
`8 The burden of showing something by a preponderance of the evidence
`simply requires the trier of fact to believe that the existence of a fact is more
`probable than its nonexistence before the trier of fact may find in favor of
`the party who carries the burden. Concrete Pipe & Prods. of Cal., Inc. v.
`Constr. Laborers Pension Tr. for S. Cal., 508 U.S. 602, 622 (1993).
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`2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed.
`Cir. 2001). Although the elements must be arranged or combined in the
`same way as in the claim, “the reference need not satisfy an ipsissimis verbis
`test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d
`1331, 1334 (Fed. Cir. 2009) (accord In re Bond, 910 F.2d 831, 832–33 (Fed.
`Cir. 1990)).
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time of the invention to a
`person having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550
`U.S. 398, 406 (2007). The question of obviousness is resolved on the basis
`of underlying factual determinations including (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of ordinary skill in the art; and (4) when in evidence,
`objective indicia of nonobviousness. Graham v. John Deere Co., 383 U.S.
`1, 17–18 (1966).
`
`Level of Ordinary Skill
`B.
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citation omitted). Petitioner argues that the level of skill in the art is
`apparent from the cited art. Pet. 10. Petitioner further relies on the
`testimony of Dr. James R. Shealy, who testifies that a person with ordinary
`skill in the art “would have had at least a B.S. in mechanical or electrical
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`engineering or a related field, and four years’ experience designing LED
`packages.” Id. (citing Ex. 1003 ¶¶ 24–26). Patent Owner does not propose a
`definition. See PO Resp.
`For purposes of this Decision, we adopt Dr. Shealy’s assessment of a
`person with ordinary skill in the art. We further agree with Petitioner, and
`find, that the prior art of record in the instant proceeding reflects the
`appropriate level of ordinary skill in the art, which is consistent with Dr.
`Shealy’s assessment.
`
`C. Claim Construction
`In this inter partes review, we construe the claim terms in the ’297
`unexpired patent according to their broadest reasonable construction in light
`of the specification of the ’297 patent. 37 C.F.R. § 42.100(b) (2017);
`Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`(upholding the use of the broadest reasonable interpretation standard).9
`Consistent with the broadest reasonable construction, claim terms are
`presumed to have their ordinary and customary meaning as understood by a
`person of ordinary skill in the art in the context of the entire patent
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
`
`
`
`9 A recent change to this rule does not apply here because the Petition was
`filed before November 13, 2018. See Changes to the Claim Construction
`Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial
`and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (amending
`37 C.F.R. § 42.100(b) effective November 13, 2018).
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`1. “a reflector extending from said substrate”
`All of the challenged independent claims recite “a reflector extending
`from said substrate.” We preliminarily construed “a reflector extending
`from said substrate” to mean that the reflector may be in direct or indirect
`contact with the substrate for it to extend from the substrate. Dec. 9. Patent
`Owner disagrees with our interpretation, while Petitioner agrees with it. See,
`e.g., PO Resp. 11–13; Reply 2–3; Sur-reply 1–3.
`In essence, Patent Owner argues that “a reflector extending from said
`substrate” means that the reflector must be in direct physical contact with the
`substrate in order for it to extend from the substrate. PO Resp. 11–13 (citing
`Ex. 2009 ¶¶ 18–23; Ex. 2008, 69:20–70:15; Ex. 1004, 5:27–31). For
`example, Patent Owner argues that the claims “define[] the starting point of
`reflector to be at the surface of the substrate, from which it extends, not
`separated from the substrate by intervening layers.” Id. at 13.
`Each of the challenged independent claims 1, 10, and 15 recites “a
`reflector extending from said substrate.” The claim language, however, does
`not itself include that the starting point of the reflector must be at the surface
`of the substrate in order for it to extend from the substrate, e.g., be in direct
`contact with the substrate as Patent Owner argues. Id. at 13. Patent Owner
`does not direct us to where in the Specification of the ’297 patent there is
`support for its narrow construction that the reflector must be in direct contact
`with the substrate in order for the reflector to extend from the substrate.
`Although the Specification of the ’297 patent does not describe
`explicitly what is meant by “a reflector extending from said substrate,” the
`Specification describes that reflector 14 is mounted on substrate 110. Ex.
`1001, 1:39–41. We find that such description is relevant to understanding
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`the meaning of “a reflector extending from said substrate.” Ex. 1017,
`112:15–25 (Mr. Credelle testifying that the claim phrase is referring back to
`“Column 1, line 38”). As pointed out by Petitioner, both experts testify that
`a person having ordinary skill in the art at the time of the invention would
`have understood that one method of mounting would be with an adhesive
`layer to bond a reflector to a substrate. Reply 2–3 (citing Ex. 1017, 35:18–
`38:25, 44:25–45:23, 48:17–50:7, 52:21–53:10, 60:19–64:9, 112:15–25; Ex.
`2008, 70:22–74:22). Thus, we disagree with Patent Owner’s proposed
`narrow construction that the reflector must be in direct contact with the
`substrate, e.g., with no intervening layers such as adhesive between the
`reflector and substrate, because such a construction would exclude the full
`breadth of what would be understood as the invention. The Specification of
`the ’297 patent, as understood by a person having ordinary skill in the art at
`the time of the invention does not support such a narrow construction.
`Rather, we find that a person having ordinary skill in the art at the time of
`the invention would have understood the Specification of the ’297 patent
`supports a construction that would include indirect contact between the
`reflector and the substrate, e.g., a layer of adhesive between the substrate
`and reflector in order to mount (attach) the reflector to the substrate. See Ex.
`1017, 35:18–38:25, 44:25–45:23, 48:17–50:7, 52:21–53:10, 60:19–64:9,
`112:15–25; Ex. 2008, 70:22–74:22.
`Patent Owner’s argument that Petitioner is attempting to rewrite the
`claims to require a reflector on a substrate, rather than extending from a
`substrate is misplaced. It is Patent Owner in the first instance that argues for
`a narrow construction that would require a reflector directly on a substrate.
`Sur-reply 2; Tr. 46:5–14. Petitioner merely responded to Patent Owner’s
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`proposed construction. Reply 1–2. For all of these reasons, we do not adopt
`Patent Owner’s construction that “a reflector extending from said substrate”
`means that the reflector must be in direct physical contact with the substrate.
`Rather, we construe “a reflector extending from said substrate” to mean that
`the reflector may be in direct or indirect contact with the substrate for the
`reflector to extend from the substrate.10
`
`2. “upper portion”/“lower portion”
`Claims 3, 4, 13, and 14 recite that the “reflector has an upper portion
`
`and a lower portion, said lower portion being located proximate said
`substrate.” Patent Owner argues that the upper portion must be vertically
`higher than the lower portion, and the two portions cannot overlap. PO
`Resp. 18. Petitioner argues that even under Patent Owner’s proposed
`construction, the claims are anticipated or rendered obvious by the prior art.
`Reply 7, 15. We agree. As explained below with respect to the discussion
`of claims 3 and 4, even if the upper and lower portions cannot overlap as
`Patent Owner contends, we determine below that Loh ’842 anticipates or
`renders obvious the claims with these limitations. Accordingly, we need not
`construe “upper portion” and “lower portion.”
`
`3. “intersects”/“intersecting”
`Claim 6 recites a reflector comprising “a slanted portion that intersects
`
`a platform.” Each of claims 9 and 15 recites a reflector comprising “a third
`platform located on said substrate and intersecting said slanted portion.”
`
`
`10 As discussed below, we alternatively find that Loh ’842 meets even Patent
`Owner’s narrow construction that the lens coupler be in physical contact
`with the substrate.
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`Petitioner argues that the term “intersects” means “if considered to be a
`geometric line, connects or crosses through,” and the term “intersecting”
`means “if considered to be a geometric line, connecting or crossing
`through.” Pet. 12 (citing Ex. 1003 ¶¶ 46–49; Ex. 1001, Fig. 1). Petitioner
`contends that a person having ordinary skill in the art would have
`understood that the claimed intersecting does not mandate that the platform
`and slanted portion physically intersect, but instead that they intersect
`geometrically. Pet. 13 (citing Ex. 1003 ¶ 49; Ex. 1001, 2:13–27, Fig. 1).
`Petitioner’s annotated Figure 1, reproduced below, illustrates Petitioner’s
`position. Id.
`
`
`Petitioner’s annotated Figure 1 from the ’297 patent.
`As seen from the above, the red dotted line, representing the slanted
`
`portion of the reflector, intersects with the dotted yellow line, representing
`the platform portion of the reflector. Patent Owner does not disagree with
`Petitioner’s proposed interpretation of “intersects” or “intersecting.” For
`purposes of this decision, we adopt Petitioner’s proposed interpretation of
`“intersects” to mean “if considered to be a geometric line, connects or
`crosses through,” and the term “intersecting” to mean “if considered to be a
`geometric line, connecting or crossing through.”
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`4. “at the intersection”
`Claims 6, 9, and 15 recite a notch located at the intersection of a
`
`slanted portion of the reflector and a platform of the reflector. Petitioner
`argues that the ’297 patent does not use the term “intersection” or its variants
`outside of the claims. Pet. 13–14 (citing Ex. 1001, 2:13–27, Fig. 1).
`Directing attention to Dr. Shealy’s declaration and a dictionary definition for
`the term “at,” Petitioner argues that “at the intersection” means “in, on or
`near the intersection.” Id. (citing Ex. 1003 ¶¶ 50–54; Ex. 1012, 4 (Merriam-
`Webster’s Collegiate Dict., 11th Ed.)). Petitioner further contends that the
`only such intersection, shown in Figure 1 of the ’297 patent, depicts notch
`146 located near the intersection. Id. at 14 (citing Ex. 1003 ¶¶ 50–54).
`Patent Owner argues that “at the intersection” means “that the notch
`overlaps the point of intersection between the reflector wall and a platform
`located on the substrate.” PO Resp. 22. Patent Owner argues that the
`correct interpretation means that the “upper edge on one side of the notch,
`the side on the slanted portion, is higher than the upper edge of the side
`located on the platform.” Id.
`The Specification of the ’297 patent describes a second notch 146
`located between the slanted wall 140 and a third platform 148. Ex. 1001,
`2:13–27, Fig. 1. The Specification of the ’297 patent does not describe what
`it means for the notch to be “located at the intersection” of a slanted portion
`of the reflector and a platform of the reflector. We agree, however, with
`Petitioner that one of ordinary skill in the art, reading the claims in light of
`the Specification of the ’297 patent, would have understood the word “at” in
`this context to mean “in, on, or near.” Ex. 1003 ¶¶ 50–54; Ex. 1012, 4.
`Patent Owner does not explain why Petitioner’s proposed construction for
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`the term “at” would be inconsistent with the Specification or present
`evidence tending to show that Patent Owner has disavowed or disclaimed
`the meaning of “at the intersection” to support the narrow interpretation
`proposed by Patent Owner. Thus, we interpret “at the intersection” to mean
`“in, on, or near the intersection.”
`For purposes of this decision, we need not expressly construe any
`other claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed
`that are in controversy, and only to the extent necessary to resolve the
`controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co. Ltd. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid
`Techs. in the context of an inter partes review).
`
`D. Asserted Challenges Based on Loh ’842
`Petitioner contends (1) claims 1–6 are unpatentable under 35 U.S.C.
`§ 102(e) as anticipated by Loh ’842; (2) claims 1–6 and 9 are unpatentable
`under 35 U.S.C. § 103(a) as obvious over Loh ’842; (3) claims 7, 8, and 10–
`17 are unpatentable under 35 U.S.C. § 103(a) as obvious over Loh ’842 and
`Fujiwara. Pet. 27–57. In support of its showing, Petitioner relies upon the
`declaration of Dr. James R. Shealy. Id. (citing Ex. 1003).
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`1. Loh ’842 11
`Loh ’842 describes LED packages. Ex. 1004, Abstract. Figure 8B of
`Loh ’842, annotated by Petitioner, is reproduced below. Pet. 18 (citing Ex.
`1004, Fig. 8B).
`
`
`Figure 8B of Loh ’842 shows a cross-sectional side view of a light
`emitting device package, with highlighting added by Petitioner.
`As seen from the above, light emitting package 100 includes reflective
`lens coupler 106 (green), substrate 102 (purple), cavity space 400 (orange),
`LED 110 (yellow), lens 104, and encapsulant 111. Ex. 1004, 5:5–6:5, 8:24–
`29, Fig. 8B. The package further includes depressions 406 and 408 (shown
`
`11 Petitioner argues that the effective filing date of Loh ’842 is August 27,
`2007, which is fifteen days prior to the ’297 patent’s September 11, 2007
`effective filing date. Pet. 16 n. 5. Patent Owner argued, in its Preliminary
`Response, that the close dates are circumstantial evidence that Loh ’842 is
`not prior art to the ’297 patent. Prelim. Resp. 14. We preliminarily rejected
`that argument. Dec. 13–14. In its Patent Owner Response, Patent Owner
`makes no argument regarding Loh ’842 as prior art. See PO Resp.
`Arguments not made in the Patent Owner Response are considered waived.
`Scheduling Order, Paper 15, 5; see also In re Nuvasive, Inc., 842 F.3d 1376,
`1381 (Fed. Cir. 2016) (explaining that a patent owner waives an issue
`presented in its preliminary response if it fails to renew the issue in its
`response after trial is instituted).
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`in blue and red). Id. at 8:26–27. The package includes a substrate which
`includes a mounting pad. Id. at 4:1–3. Mounting pad 109 may be mounted
`to substrate 102 with electrical connections to LED 110. Id. at 5:27–29.
`
`2. Fujiwara
`Fujiwara describes a light emitting device used for a light source of a
`liquid crystal display. Ex. 1005, 1:6–7. Fujiwara Figure 13, annotated by
`Petitioner, is reproduced below. Pet. 50.
`
`
`Fujiwara Figure 13, annotated by Petitioner, is a partial sectional view
`showing an embodiment of a light emitting device.
`As seen from the above, light emitting device 1H(1) has lead frame
`21, transparent resin 3, semiconductor luminous element 4, wires 5, and
`case 7. Ex. 1005, 14:61–64. In lead frame 21, a concave portion 22 having
`a size smaller than that of lower surface 4a of element 4 is formed at a
`position in which element 4 is mounted. Id. at 15:5–9.
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`3. Discussion
`
`Claim 1
`Petitioner contends that claim 1 is unpatentable under 35 U.S.C.
`§ 102(e) as anticipated by Loh ’842 and unpatentable under 35 U.S.C.
`§ 103(a) as obvious over Loh ’842. Pet. 27–33, 44–45. For the reasons that
`follow, having considered Petitioner’s and Patent Owner’s arguments and
`evidence, we determine that claim 1 is anticipated by Loh ’842.12 Therefore,
`we need not and do not determine whether claim 1 also would have been
`obvious over Loh ’842.
`Claim 1 recites a “light emitting device comprising.” Ex. 1001, 3:36.
`Petitioner contends, and we are persuaded, that Loh ’842 describes light
`emitting device packages such as that shown above in Figure 8B, which is a
`“light emitting device.” Pet. 27 (citing Ex. 1004, 1:16–20, 2:7–59, 3:25–27,
`8:25–59, Figs. 4A–4C, 5, 8A–8G; Ex. 1003 ¶ 90). Claim 1 further recites “a
`substrate.” Ex. 1001, 3:37. We agree with Petitioner’s showing and find
`
`
`12 Although Petitioner cites to several figures in Loh ’842 as individually
`anticipating claim 1, the arguments presented by the parties as to whether
`Loh ’842 anticipates claim 1 primarily pertain to Loh ’842 Figure 8B. For
`instance with respect to whether Loh ’842 anticipates claim 1, Patent Owner
`does not argue that Petitioner improperly combined multiple embodiments.
`PO Resp. 11–26. Accordingly, we primarily focus on whether Loh ’842
`Figure 8B and related descriptions meet the claim 1 elements. This does not
`mean, however, that the other Loh ’842 figures cited by Petitioner do not
`individually also anticipate claim 1. For example, with respect to our
`discussion below regarding whether Loh ’842 anticipates claims 3, 4, and 6,
`we find that Loh ’842 Figures 8C and 8E, modified with square depressions
`anticipates those claims. Thus, similar to our discussion below, either of
`Loh ’842’s Figures 8C and 8E modified with square depressions would
`likewise anticipate claim 1.
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`that Loh ’842 describes a substrate 102 like that shown above in Figure 8B.
`Pet. 27–28 (citing Ex. 1004, 5:5–12, 8:24–34, Figs. 8A–8G; Ex. 1003 ¶¶ 90–
`93).
`Claim 1 further recites “a reflector extending from said substrate, said
`reflector forming a cavity in conjunction with said substrate.” Ex. 1001,
`3:39–40. Petitioner contends that Loh ’842’s lens coupler 106, described as
`including reflective surfaces positioned to reflect light generated by LED
`110 and being bonded to substrate 102 (or adapted for attaching to substrate
`102) through mounting pad 109 meets the claimed “reflector extending from
`said substrate.” Pet. 28–29 (citing Ex. 1004, 4:2–6, 4:46–47, 5:23–27, 5:32–
`43, 6:16–7:1, Figs. 4A–4C, 8A–8G; Ex. 1003 ¶¶ 94–98). Notwithstanding
`Patent Owner’s arguments, which we address immediately below, we find
`that Loh ’842 discloses a reflector (lens coupler 106 seen above in Figure
`8B) extending from said substrate as claimed.
`Patent Owner annotated Loh ’842’s Figure 8B is shown below.
`
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`Patent Owner annotated Figure 8B from Loh ’842 illustrates a lens
`coupler (yellow) on top of substrate 102 (green).
`Referencing an annotated Figure 8B of Loh ’842 (shown above),
`Patent Owner argues that lens coupler 106 does not extend from substrate
`102, because there are two adhesive layers, red and purple, in between the
`substrate 102 and lens coupler 106 that are separate from either the lens
`coupler 106 or the substrate 102. PO Resp. 11–13 (citing Ex. 2009 ¶ 23).
`The purple layer is described in Loh ’842 as the mounting pad 109. The red
`layer is not described at all in Loh ’842. Patent Owner’s arguments are
`based on an improper construction of “a reflector extending from said
`substrate” to mean that the reflector must be in direct physical contact with
`the substrate in order for it to extend from the substrate. Id. As explained
`above in the claim construction section of this Decision, we do not adopt
`such a narrow interpretation. We find that Loh ’842 describes a reflector
`(lens coupler 106) that extends from Loh ’842’s substrate 102. Similar to
`the description in the ’297 patent that ’297 reflector 114 is mounted on
`substrate 110, which both experts agree would have included attaching
`reflector 114 to substrate 110 using an intervening layer of adhesive, Loh
`’842 describes that lens coupler 106 is bonded13 to substrate 102 and that “a
`quantity of epoxy 600 can attach lens coupler 106 to substrate 102.
`Alternatively, any other suitable adhesive or attachment technique may be
`utilized for attaching lens coupler to substrate 102.” Ex. 1004, 6:11–12,
`8:7–12; see Ex. 1017, 35:18–38:25, 44:25–45:23, 48:17–50:7, 52:21–53:10,
`
`
`13 During his deposition, Mr. Credelle used “bonded” interchangeably with
`“mounting” or “mounted” to mean attaching one thing to another. Ex. 1017,
`60:19–64:9; Tr. 8:6–17.
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`60:19–64:9, 112:15–25; Ex. 2008, 70:22–74:22. Accordingly, we find that
`Loh ’842’s reflector 106 extends from substrate 102 under the proper claim
`construction of “a reflector extending from said substrate.”
`Alternatively, even under Patent Owner’s narrow construction that the
`lens coupler must be in direct physical contact to the substrate in order for
`the reflector to extend from the substrate, the record evidence supports
`Petitioner’s assertion that Loh ’842 meets the disputed phrase. Reply 12
`(citing Ex. 1004, 2:42–44, 4:2–6, 11:1–7; Ex. 2008, 70:7–73:5); Tr. 51:10–
`16. We credit Dr. Shealy’s testimony that a person having ordinary skill in
`the art at the time of the invention would have understood that “both of those
`layers [referring to Loh ’842 Figure 4A (which is the same as Figure 8B in
`this respect)] are adhesives” that would have been considered to be part of
`the lens coupler and substrate respectively. Ex. 2008, 70:2–73:5.14 Dr.
`Shealy’s testimony that the mounting pad would have been considered to be
`part of the substrate is consistent with Loh ’842’s description that the
`substrate includes a “mounting pad.” Ex. 1004, 2:42–44, 4:2–6, 11:1–7.
`Patent Owner argues that the mounting pad 109 is a separate layer, not
`part of the substrate, because Loh ’842 describes that mounting pad 109 may
`be mounted to substrate 102. PO Resp. 13 (citing Ex. 1004, 5:27–31).
`Patent Owner, however, does not address those descriptions of Loh ’842 that
`explain the substrate as including the mounting pad, and therefore, we are
`
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`14 Patent Owner does not dispute that a mounting pad is adhesive or that Loh
`’842 shows in some figures, only one intervening layer between the lens
`coupler and substrate, such as seen in Figures 8D–8F. PO Resp. 13. Patent
`Owner also does not present evidence to rebut Dr. Shealy’s testimony that
`Patent Owner’s annotated red layer would have been considered to be part of
`the lens coupler. Id.
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`not persuaded that a person having ordinary skill in the art would have
`understood that Loh ’842’s mounting pad 109 is necessarily separate from
`the substrate. Thus, we find that based on Dr. Shealy’s testimony and Loh
`’842’s description that mounting pad 109 is included as part of the substrate,
`Loh ’842 meets even Patent Owner’s narrow construction that the lens
`coupler is physically connected to the substrate.
`Claim 1 further recites “said reflector forming a cavity in conjunction
`with said substrate.” Ex. 1001, 3:39–40. Petitioner contends, and we agree,
`that Loh ’842’s substrate 102 and reflective lens coupler 106 together form a
`space 400, and, thus, meets the claimed “said reflector forming a cavity in
`conjunction with said substrate.” Pet. 29 (citing Ex. 1004, 5:45–6:10, Figs.
`4A–4C, 8A–8G; Ex. 1003 ¶¶ 99–100). Patent Owner argues that Loh ’842’s
`lens coupler 106 along with substrate 102 fail to form a space 400 together,
`because the space is formed by the combination of lens coupler 106 and two
`layers between the substrate 102 and lens coupler 106. PO Resp. 13–14.
`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 “said
`reflector forming a cavity in conjunction with said substrate.” Ex. 1004,
`5:45–47 (emphasis added). We find that such description meets “said
`reflector forming a cavity in conjunction with said substrate.” Pet. 29 (citing
`Ex. 1004, 5:45–6:10, Figs. 4A–4C, 8A–8G; Ex. 1003 ¶¶ 99–100).
`Claim 1 further recites “a light emitter located in said cavity.”
`Ex. 1001, 3:41. The present record supports the contention that Loh ’842’s
`LED 110, located in cavity space 400 meets the claimed “light emitter
`located in said cavity.” Pet. 30 (citing Ex. 1004, 5:33–6:10, Figs. 4A–4C,
`
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`8A–8G; Ex. 1003 ¶¶ 101–102). We are not persuaded by Patent Owner’s
`argument that Loh ’842’s space 400 does not meet the claimed cavity
`because the cavity is not defined by the substrate and reflector. PO Resp.
`14. For reasons discussed immediately above, we find that Loh ’842
`describes a cavity as claimed. Ex. 1004, 5:45–47.
`Claim 1 also recites “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
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