Paper No. 14
`Trials@uspto.gov
`571-272-7822 Entered: November 1, 2018
`
`
`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.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: November 1, 2018
`
`
`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.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`IPR2018-00966
`Patent 7,652,297 B2
`
`
`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.”).
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . and any response . . . shows 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).
`Upon consideration of the Petition and Preliminary Response, we conclude
`the information presented shows that there is a reasonable likelihood that
`Petitioner would prevail in establishing the unpatentability of claims 1–17 of
`the ’297 patent.
`
`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.
`
`2
`
`
`
`IPR2018-00966
`Patent 7,652,297 B2
`
`
`
`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 forms 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 and a slanted wall 140 extends from
`second platform 138. 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.
`
`3
`
`
`
`IPR2018-00966
`Patent 7,652,297 B2
`
`
`C. Illustrative Claims
`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
`Petitioner asserts that claims 1–17 are unpatentable based on the
`following grounds (Pet. 3–4):
`Reference(s)
`Basis
`Loh ’8422
`§ 102(e)
`Loh ’842
`§ 103(a)
`Loh ’842 and Fujiwara3 § 103(a)
`Loh ’842 and Uraya4
`§ 103(a)
`Loh ’8195
`§ 102(e)
`
`2 U.S. Patent No. 7,939,842 B2, filed Aug. 27, 2007, issued May 10, 2011
`(Ex. 1004, “Loh ’842”).
`3 U.S. Patent No. 6,680,568 B2, issued Jan. 20, 2004 (Ex. 1005, “Fujiwara”).
`4 Japanese Patent Application No. 2005-174998, published June 30, 2005
`(Ex. 1011, “Uraya”).
`5 U.S. Patent No. 7,960,819 B2, filed July 13, 2006, issued June 14, 2011
`(Ex. 1006, “Loh ’819”).
`
`Challenged Claims
`1–6
`1–6 and 9
`7, 8, and 10–17
`7, 8, and 10–17
`1–6
`
`4
`
`
`
`IPR2018-00966
`Patent 7,652,297 B2
`
`
`Reference(s)
`Loh ’819
`Loh ’819 and Andrews6
`Loh ’819 and Fujiwara
`Loh ’819, Fujiwara, and
`Andrews
`Loh ’819 and Uraya
`Loh ’819, Uraya, and
`Andrews
`
`Basis
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`Challenged Claims
`1–6 and 9
`1–6 and 9
`7, 8, and 10–17
`7, 8, and 10–17
`7, 8, and 10–17
`7, 8, and 10–17
`
`II. DISCUSSION
`
`A. Claim Construction
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b).
`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).
`
`Petitioner proposes constructions for the following claim terms found
`in the challenged claims: “reflector” (all claims); “intersects/intersecting”
`(claims 6, 9, and 15); “at the intersection” (claims 6, 9, and 15); and “lower
`portion” and “upper portion” (claims 3, 4, 13, and 14). Pet. 11–16. Patent
`Owner disagrees with Petitioner’s proposed constructions for “lower
`portion,” “upper portion,” and “at the intersection.” Prelim. Resp. 18–20,
`
`
`6 U.S. Patent Application Publication No. 2005/0218421 A1, filed Jan. 27,
`2005, published Oct. 6, 2005 (Ex. 1007, “Andrews”).
`5
`
`
`
`IPR2018-00966
`Patent 7,652,297 B2
`
`22–24. Patent Owner proposes a construction for “a reflector extending
`from said substrate” (all claims). Prelim. Resp. 15–16.
`
`1. “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.” Petitioner argues that “lower portion” means “the part proximate
`the substrate and the lowest notch” and “upper portion” means “the part
`proximate the upper edge of the reflector and the highest notch.” Pet. 16.
`Patent Owner argues that the entirety of the “upper portion” must be
`vertically higher and above the “lower portion,” with no overlap. Prelim.
`Resp. 18–19. Patent Owner further argues that Petitioner’s constructions
`incorrectly require that there be two notches in the reflector, when there is
`only one notch being claimed. Id.
`The claims already require the lower portion to be located proximate
`the substrate. Thus, we need not further interpret “lower portion” to mean a
`part proximate the substrate and Petitioner fails to provide a sufficient reason
`for doing otherwise. We further disagree with Petitioner that either the
`lower portion or the upper portion should be defined by any relationship
`with a “lowest notch” or a “highest notch,” terms that are not found in the
`claims or the ’297 patent. Petitioner has not shown sufficiently why the
`terms “lower portion” and upper portion” need to be defined in terms of a
`“lowest notch” or a “highest notch.” We would not want to add ambiguity
`into the claim language where it is not necessary to do so. Lastly, we
`disagree with Patent Owner that the entirety of the “upper portion” must be
`vertically higher and above the “lower portion,” with no overlap.
`
`6
`
`
`
`IPR2018-00966
`Patent 7,652,297 B2
`
`
`The ’297 patent describes the lower portion as that “portion of the
`reflector 114 located proximate the substrate 110” and the upper portion as
`that “portion of the reflector 114 proximate the upper edge 124.” Ex. 1001,
`1:42–44, 1:63–65. The ’297 patent does not describe or define the
`boundaries of the upper portion or lower portion by explaining what is
`included in the respective portions or by defining the relationship of one to
`the other. Thus, at this juncture of the proceeding, we are not persuaded that
`the entirety of the “upper portion” must be vertically higher and above the
`“lower portion,” with no overlap.
`
` 2. “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.”
`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.
`
`7
`
`
`
`IPR2018-00966
`Patent 7,652,297 B2
`
`
`
`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.”
`
`3. “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. Directing
`attention to a dictionary definition for the term “at” Petitioner argues that “at
`the intersection” means “in, on or near the intersection.” Pet. 13 (citing Ex.
`1003 ¶¶ 50–54; Ex. 1001, 2:13–27, Fig. 1; Ex. 1012, 4). 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.” Prelim. Resp. 23. Patent Owner argues that the correct
`interpretation means that the “upper edge on one side of the notch, the side
`
`8
`
`
`
`IPR2018-00966
`Patent 7,652,297 B2
`
`on the slanted portion, is higher than the upper edge of the side located on
`the platform.” Id.
`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
`’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. At this juncture of the proceeding, we agree with Petitioner that
`the broadest reasonable interpretation of “at” means the presence of
`something “in, on, or near.” Patent Owner does not explain why Petitioner’s
`dictionary usage for the term “at” is incorrect, or present evidence tending to
`show that Patent Owner has disavowed or disclaimed the term “at the
`intersection” in the manner proposed by Patent Owner. Thus, we interpret
`“at the intersection” to mean “in, on, or near the intersection.”
`
`4. “a reflector extending from said substrate”
`All of the challenged independent claims recite “a reflector extending
`from said substrate.” Petitioner does not provide a proposed construction for
`this phrase, but Patent Owner does. Patent Owner implicitly argues that the
`phrase means that the reflector must be in direct physical contact with the
`substrate in order for it to extend from the substrate. Prelim. Resp. 15–16.
`Patent Owner, however, does not explain or present evidence tending to
`show that Patent Owner has disavowed or disclaimed the phrase in the
`manner proposed by Patent Owner. Thus, we interpret “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.
`
`
`9
`
`
`
`IPR2018-00966
`Patent 7,652,297 B2
`
`
`For purposes of this decision, we need not expressly construe any
`other claim term at this time. 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).
`
`B. Principles of Law
`To establish anticipation, 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.
`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 (Fed.
`Cir. 1990)).
`A patent 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 the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. 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;
`
`10
`
`
`
`IPR2018-00966
`Patent 7,652,297 B2
`
`(3) the level of ordinary skill in the art;7 and (4) when in evidence, objective
`evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
`C. Discussion of Patent Owner’s Arguments Regarding SAS
`
`We begin our discussion with Patent Owner’s argument that if we
`“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.” Prelim. Resp.
`13.
`
`On April 24, 2018, the Supreme Court held that a decision to institute
`under 35 U.S.C. § 314 may not institute on fewer than all claims challenged
`in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018). SAS
`requires the Board, when instituting, to institute review of all claims in a
`petition after determining there is a reasonable likelihood that at least one of
`the claims challenged is unpatentable. Id. at 1356. In SAS, the Supreme
`Court, interpreting 35 U.S.C. § 314, held that a petitioner “is entitled to a
`final written decision addressing all of the claims it has challenged . . . .” Id.
`at 1359–60.
`
`
`7 Relying on the testimony of Dr. James R. Shealy, Petitioner offers an
`assessment as to the level of skill in the art as of the earliest effective filing
`date on the face of the ’297 patent. Pet. 9–10 (citing Ex. 1003 ¶¶ 24–26).
`At this time, Patent Owner does not propose an alternative assessment. To
`the extent necessary, and for purposes of this Decision, we accept the
`assessment offered by Petitioner as it is consistent with the ’297 patent and
`the asserted prior art.
`
`
`11
`
`
`
`IPR2018-00966
`Patent 7,652,297 B2
`
`
`Title 35, section 314(a), directs, in relevant part, that “[t]he Director
`may not authorize an inter partes review to be instituted unless the Director
`determines that the information presented in the petition . . . and any
`response . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” The Supreme Court determined that “Section 314(a) does not
`require the Director to evaluate every claim individually. Instead, it simply
`requires a decision whether the petitioner is likely to succeed on ‘at least 1’
`claim.” SAS, 138 S. Ct. at 1356. The Court explained: “[o]nce that single
`claim threshold is satisfied, it doesn’t matter whether the petitioner is likely
`to prevail on any additional claims; the Director need not even consider any
`other claim before instituting review.” Id. (emphasis original). Further, the
`Court emphasized: “Rather than contemplate claim-by-claim institution . . .
`the language [of section 314(a)] anticipates a regime where a reasonable
`prospect of success on a single claim justifies review of all.” Id. The
`Supreme Court’s interpretation of the law in SAS controls the institution
`decision. Patent Owner does not address the Supreme Court’s instructions
`in SAS concerning institution decisions. See Prelim. Resp. 13. In particular,
`Patent Owner has not provided any persuasive justification for why we
`should interpret rule 42.108(c) in a manner that would be inconsistent with
`SAS.
`
`D. Asserted Anticipation of Claims 1–6 over Loh ’842
`Petitioner contends claims 1–6 are unpatentable under 35 U.S.C.
`§ 102(e) as anticipated by Loh ’842. Pet. 27–43. In support of its showing,
`Petitioner relies upon the declaration of Dr. James R. Shealy. Id. (citing
`Ex. 1003).
`
`12
`
`
`
`IPR2018-00966
`Patent 7,652,297 B2
`
`
`1. Loh ’842
`Loh ’842 describes LED packages. Ex. 1004, Abstract. Figure 8B of
`Loh ’842 has been annotated by Petitioner and 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, 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 in blue
`and red). Id. at 8:26–27. Mounting pad 109 is mounted to substrate 102
`with electrical connections to LED 110. Id. at 5:27–29.
`
`2. Discussion
`We first consider whether Loh ’842 is prior art. The application that
`matured into Loh ’842 was filed August 27, 2007 and claims to be a
`continuation-in-part of an earlier application, filed January 27, 2005. Ex.
`1004. 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.
`
`13
`
`
`
`IPR2018-00966
`Patent 7,652,297 B2
`
`
`Patent Owner argues that because there is a short time between the
`effective filing date of Loh ’842 and the ’297 patent, Petitioner should have
`addressed the “circumstantial evidence” that Loh ’842 is not prior art to the
`’297 patent. Prelim. Resp. 14. We disagree that Petitioner should have
`speculated that Loh ’842 is not prior art based on the close dates. Patent
`Owner is in the best position to present evidence showing prior actual
`reduction to practice, or prior conception of the invention coupled with
`reasonable diligence in constructively reducing the invention to practice, and
`may do so during trial. Thus, we are not persuaded by Patent Owner’s
`argument that Petitioner has failed to show that Loh ’842 is prior art.
`Claim 1 recites a “light emitting device comprising.” The present
`record supports the contention that Loh ’842 describes light emitting device
`packages as shown above in figure 8B. 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.” The present record supports the contention that
`Loh ’842’s substrate 102 meets this element. 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.” We determine
`that the present record supports the contention 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). At this stage of the proceeding, we are not persuaded by Patent
`
`14
`
`
`
`IPR2018-00966
`Patent 7,652,297 B2
`
`Owner’s argument that Loh ’842’s lens coupler 106 does not extend from
`the substrate 102 because there are two layers between the substrate 102 and
`lens coupler 106. Prelim. Resp. 15–16. There is no indication in Loh ’842
`that there is an additional layer between mounting pad 109 and lens coupler
`106 as Patent Owner asserts. Indeed, Patent Owner has not directed us to
`evidence at this stage of the proceeding indicating that a person skilled in the
`art would have understood such a layer exists given the disclosure of Loh
`’842. In addition, Loh ’842 describes lens coupler 106 being bonded to
`substrate 102 (or adapted for attaching to substrate 102) through mounting
`pad 109 with no mention of an additional layer. Patent Owner fails to
`address, at this stage of the proceeding why lens coupler being bonded to
`substrate 102 fails to meet the claim element. To the extent that Patent
`Owner urges a narrow 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, as discussed above,
`we reject that proposed construction.
`The present record further supports the contention 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). At this stage of the proceeding, we are not persuaded
`by Patent Owner’s argument 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. Prelim. Resp. 16–17. Patent Owner fails to
`address or explain in any way how Loh ’842’s explicit description that
`
`15
`
`
`
`IPR2018-00966
`Patent 7,652,297 B2
`
`“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.
`Claim 1 further recites “a light emitter located in said cavity.” 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, 8A–8G; Ex. 1003 ¶¶ 101–
`102). At this stage of the proceeding, we are not persuaded by Patent
`Owner’s argument (Prelim. Resp. 17) that Loh ’842’s space 400 does not
`meet the claimed cavity for reasons already explained.
`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
`second wall wherein said first wall and said second wall extend substantially
`perpendicular to said substrate.” The present record supports the contention
`that either of Loh ’842’s depressions 406 and 408 meet this claimed phrase.
`Pet. 30–33 (citing Ex. 1004, 3:19–21, 6:25–51, 7:56–8:65, Figs. 4A–4C, 5,
`8A–8G; Ex. 1003 ¶¶ 103–109). Loh ’842 describes that depressions 406 and
`408 form circles having LED 110 positioned at a common center. Ex. 1004,
`7:56–8:6, Fig. 5. Patent Owner makes no arguments regarding this claim
`language at this time.
`Claim 2 recites “[t]he 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.” The present record supports the
`contention that Loh ’842’s encapsulant deposited in space 400 meets claim
`2. Pet. 33–35 (citing Ex. 1004, 4:33–40, 5:45–47, 6:17–66, 7:3–4, Figs. 4A–
`
`16
`
`
`
`IPR2018-00966
`Patent 7,652,297 B2
`
`4C, 5, 8A–8G; Ex. 1003 ¶¶ 110–116). At this stage of the proceeding, we
`are not persuaded by Patent Owner’s argument (Prelim. Resp. 17) that Loh
`’842’s space 400 does not meet the claimed cavity for reasons already
`explained. We also are not persuaded by Patent Owner’s arguments that
`Petitioner has improperly combined multiple embodiments in its analysis of
`dependent claim 2. Id. at 17–18. While it may be inappropriate to combine
`different embodiments of a single reference in an anticipation rejection, that
`does not appear to be the case here. Patent Owner’s conclusory arguments
`do not address the detailed explanation provided by Petitioner. For example,
`Petitioner argues that a person having ordinary skill in the art would have
`understood that the same encapsulant described with respect to figure 4C is
`the same encapsulant in the other figures depicting the LED package after
`lens 104 has been attached. Pet. 34. Indeed, Loh ’842 describes, that with
`each of its embodiments, including the LED package depicted in figure 8B,
`that encapsulant is present. Ex. 1004, 2:7–58, 8:24–29. Patent Owner does
`not address Petitioner’s contentions in any way.
`Claim 3 depends from claim 1 and recites “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.” Claim 4 depends from claim 1 and recites “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.” Petitioner contends, with supporting
`evidence that Loh ’842 describes an upper and lower portion of reflector
`106. Pet. 36 (annotated figure 8B showing upper and lower portions; Ex.
`1003 ¶ 118). The present record also supports the contention that
`
`17
`
`
`
`IPR2018-00966
`Patent 7,652,297 B2
`
`depressions 406 and 408 approximately bisect the reflector vertically and are
`both proximate the upper and lower portions. Pet. 36–37 (annotated figure
`8B showing upper and lower portions; Ex. 1003 ¶ 119). Petitioner argues
`that additionally, Loh ’842 describes depressions 406 and 408 at varying
`heights, where the walls of the reflective surface are inclined which also
`meets claims 3 and 4 since depression 406 is proximate the lower portion
`and depression 408 is proximate the upper portion. Pet. 37–41 (citing Ex.
`1004, 5:32–43, 6:30–8:65, Figs. 8A–8G; Ex. 1003 ¶¶ 64–67, 119–129).
`As explained above, we are not persuaded by Patent Owner’s
`arguments (Prelim. Resp. 18–20) that the entirety of the “upper portion”
`must be vertically higher and above the “lower portion,” with no overlap.
`Patent Owner also argues that the depressions 406 and 408 are located
`midway between the top and bottom of lens coupler 106, and, therefore,
`neither depression is proximate an upper portion or a lower portion. We
`disagree that notches 406 and 408 do not read on the claimed notches of
`claims 3 and 4. Those claims require that the “notch being located
`proximate said upper [lower] portion,” not that the notch is located at the
`particularly claimed portion as Patent Owner seems to suggest. Because we
`are not persuaded by Patent Owner’s arguments regarding the notches 406
`and 408 of figure 8B, we need not now address Patent Owner’s conclusory
`arguments that Petitioner has improperly combined multiple embodiments in
`its analysis of dependent claims 3 and 4. Prelim. Resp. 20–21. In any event,
`Petitioner explains that a person having ordinary skill in the art would have
`understood that Loh ’842’s described shaped notches could be used in any of
`the described embodiments, e.g., that Loh ’842 explicitly contemplates the
`
`18
`
`
`
`IPR2018-00966
`Patent 7,652,297 B2
`
`combination of the disclosed shaped notches. Pet. 37–38; see also Blue
`Calypso, LLC v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir. 2016).
`Claim 5 depends from claim 1 and recites “wherein said light emitter
`is electrically connected to said substrate.” Petitioner contends that Loh
`’842 describes that mounting pad 109 is mounted to substrate 102 with
`electrical connections being made to LED 110 for applying an electrical bias
`and that the top surface of LED 110 may be connected to electrical
`connections via one or more conductive bond wires 112. Pet. 41–42 (citing
`Ex. 1004, 5:27–31, 7:57–67; Ex. 1003 ¶¶ 132–134). Patent Owner argues
`that the LED is electrically connected to the mounting pad 109, not the
`substrate 102. Prelim. Resp. 21. At this stage of the proceeding, we are not
`persuaded by Patent Owner’s argument. In particular, Loh ’842’s LED is
`electrically connected to traces on the substrate, as seen in, for example
`figure 5, element 502. Ex. 1004, 7:57–67; see also id. at 8:13–23. This
`description in Loh ’842 is similar to the description in the ’297 patent, where
`gap 152 contains contacts (on substrate 110) used to supply power to LED
`112. Ex. 1001, 2:33–40.
`Claim 6 depends from claim 1 and recites “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.”
`Petitioner reproduces and cites to Loh ’842, Figs. 8C, 8E as showing this
`feature. Pet. 43; see also id. at 42–43 (annotated Loh ’842, Figs. 8C, 8E; Ex.
`1004, 8:24–65, Figs. 8A–8G; Ex. 1003 ¶¶ 121–139). The present record
`supports the contention that Loh ’842 describes a slanted portion of lens
`coupler 106 that intersects a platform that is proximate the substrate 102 and
`
`19
`
`
`
`IPR2018-00966
`Patent 7,652,297 B2
`
`where at least one notch 406 is located at the intersection. Patent Owner’s
`argument that Loh ’842 does not meet the claim 6 limitations is based on
`Patent Owner’s proposed construction for the phrase “at the intersection.”
`Prelim. Resp. 22–24. We explain above why we do not adopt Patent
`Owner’s proposed construction. Patent Owner also argues, in a conclusory
`manner, that Petitioner has improperly combined multiple embodiments in
`its analysis of dependent claim 6. Id. Patent Owner’s arguments are
`conclusory and do not address the detailed explanation provided by
`Petitioner. Accordingly, at this stage of the proceeding, we are not
`persuaded by Patent Owner’s arguments.
`Lastly, we are not persuaded by Patent Owner’s argument that
`Petitioner effectively concedes that Petitioner’s challenge of claims 1–6 as
`anticipated by Loh ’842 is deficient, because Petitioner also challenges those
`same claims based on an obviousness theory. Prelim. Resp. 26. We
`disagree that Petitioner has made such a concession. At this stage of the
`proceeding, based on the limited record before as, we determine that
`Petitioner has made a sufficient showing for this challenge.
`
`E. Asserted Obviousness of Claims 1–6 and 9 over Loh ’842
`Petitioner contends claims 1–6 and
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
