UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`NICHIA CORPORATION,
`Petitioner
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner
`
`U.S. Patent No. 7,652,297
`IPR2018-00966
`
`__________________
`
`
`
`
`
`
`
`
`DECLARATION OF JAMES R. SHEALY, Ph.D. IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,652,297
`
`
`
`
`Nichia Exhibit 1003
`Page 1
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`NICHIA CORPORATION,
`Petitioner
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner
`
`U.S. Patent No. 7,652,297
`IPR2018-00966
`
`__________________
`
`
`
`
`
`
`
`
`DECLARATION OF JAMES R. SHEALY, Ph.D. IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,652,297
`
`
`
`
`Nichia Exhibit 1003
`Page 1
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`
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`I.
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`INTRODUCTION
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`
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`1. My name is James Richard Shealy, Ph.D.
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`2.
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`I make this declaration in support of Petitioner Nichia Corporation’s
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`(“Petitioner”) petition for inter partes review of U.S. Patent No. 7,652,297 (“the
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`’297 patent,” Exhibit 1001), IPR2018-00966.
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`3.
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`I am over 21 years of age and otherwise competent to make this
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`declaration.
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`4.
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`Although I am being compensated for my time in preparing this
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`declaration, the opinions herein are my own, and I have no stake in the outcome of
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`the inter partes review proceeding.
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`5.
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`I am not an employee of Petitioner or any affiliate or subsidiary
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`thereof.
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`6.
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`This declaration summarizes the opinions I have formed to date. I
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`reserve the right to modify my opinions, if necessary, based on further review and
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`analysis of information that I receive subsequent to the filing of this report,
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`including in response to positions that parties to the inter partes review proceeding,
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`or their experts, may take that I have not yet seen.
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`Nichia Exhibit 1003
`Page 2
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`II. MY EXPERIENCE AND QUALIFICATIONS
`I have been involved in the science and engineering of light emitting
`7.
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`diodes (“LEDs”) for almost 40 years, as detailed in my curriculum vitae (attached
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`as Appendix A).
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`8.
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`I received a B.S. degree from North Carolina State in 1978, an M.S.
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`from Rensselaer Polytechnic in 1980, and a Ph.D. from Cornell in 1983.
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`9.
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`I joined the Cornell faculty in 1987 and am currently a professor in
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`the School of Electrical and Computer Engineering.
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`10.
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`I have been deeply involved in the research and design of LEDs over
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`the course of my career. In 1978, I joined the technical staff of General Electric’s
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`Corporate Research and Development Center under an Edison Fellowship. While
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`there, among other work, I developed GaAs epitaxial materials for high voltage
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`electronics. I also researched device fabrication by organometallic vapor phase
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`epitaxy (“OMVPE”).
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`11.
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`In 1980, I transferred to General Electric’s Advanced Electronics
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`Laboratory, where I developed materials and processes for the fabrication of
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`AlGaAs LEDs as well as developing an OMVPE reactor and related processes for
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`the fabrication of AlGaAs quantum well laser diodes. They were the highest
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`power, lowest threshold devices at the time. The AlGaAs LEDs were developed in
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`my group: from materials to device fabrication to a variety of packaging solutions.
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`Nichia Exhibit 1003
`Page 3
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`The packages included lead frame packages, hermetically sealed metal and ceramic
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`packages, and packages which combined the LED with a silicon photo transistor
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`(commonly referred to as an opto-coupler). These packages included wire bonds
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`to pads on the LED and on the package, silver epoxy die mounts, eutectic preform
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`die mounts, LED passivation, reflectors, and focusing lenses integrated into the
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`package assembly. In 1985, I was designated Principal Staff Scientist at General
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`Electric in recognition of my research contributions.
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`12. For a portion of my time at General Electric, I was also concurrently
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`working at Cornell. In 1984, my group at Cornell developed the first single
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`quantum well red laser by OMVPE. I then joined the Cornell faculty in 1987 and
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`have continued my research in OMVPE, particularly as it relates to LEDs, laser
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`diodes, and high frequency transistors. During this time, high performance
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`AlGaInP red laser diodes and LEDs were realized. The red LEDs were packaged
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`on metal submounts with an integral reflector and focusing lens to couple the LED
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`emission into plastic optical fiber bundles. I have also researched GaN and related
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`materials for both LEDs and high power transistors.
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`13.
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`In 1997, I was named the Director of Cornell’s Optoelectronics
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`Technology Center. In 1998, I was promoted to full professor at Cornell. I have
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`published in excess of 100 articles, and I am the inventor of over 15 patents, many
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`of which deal with GaN-based materials and devices. Many of the GaN-based
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`Nichia Exhibit 1003
`Page 4
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`LEDs on which I worked were realized on defect-free GaN pyramidal p-n
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`junctions with quantum well active regions. I have remained current in the field,
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`as evidenced by my publications listed in my curriculum vitae.
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`14.
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`I have also previously testified in a number of patent infringement
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`proceedings, including relating to LEDs, including materials growth, device
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`fabrication, and their packaging.
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`15.
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`I have used my education and experience researching, publishing and
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`working in the LED field, and my understanding of the knowledge, creativity, and
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`experience of a person having ordinary skill in the art in forming the opinions
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`expressed in this declaration, as well as any other materials discussed herein.
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`III. MATERIALS CONSIDERED
`In forming my opinions, I read and considered the ’297 patent and its
`16.
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`prosecution history, the exhibits listed in the Exhibit List filed with the petition for
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`inter partes review of the ’297 patent, as well as any other material referenced
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`herein.
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`17. For any future testimony I may give in this matter, I may use some or
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`all of the documents and information cited to, referred to, and identified in this
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`declaration, as well as any additional materials that are entered into evidence in
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`this matter.
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`Nichia Exhibit 1003
`Page 5
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`
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`IV. LEGAL PRINCIPLES OF ANTICIPATION AND OBVIOUSNESS
`I have been informed and I understand that a patent claim is
`18.
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`anticipated when a single piece of prior art describes every element of the claimed
`
`invention, arranged in the same way as in the claim, either expressly or inherently.
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`I have been told to consider elements to be inherently described only if they are
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`necessarily present in the piece of prior art.
`
`19.
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`I have been informed and I understand that a patent claim is
`
`unpatentable and invalid if the subject matter of the claim as a whole would have
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`been obvious to a person of ordinary skill in the art in the field of the patent as of
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`the time of the invention at issue. I have been informed and understand that the
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`following factors must be evaluated to determine whether the claimed subject
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`matter is obvious: (i) the scope and content of the prior art; (ii) the difference or
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`differences, if any, between each claim of the patent and the prior art; (iii) the level
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`of ordinary skill in the art at the time the patent was filed; and (iv) any objective
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`indicia of non-obviousness.
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`20.
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`I have been informed and I understand that the objective indicia of
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`non-obviousness (or “secondary considerations”) that should be considered
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`include, for example, the following: (i) commercial success; (ii) long-felt but
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`unresolved needs; (iii) copying of the invention by others in the field; (iv) initial
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`expressions of disbelief by experts in the field; (v) failure of others to solve the
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`Nichia Exhibit 1003
`Page 6
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`problem that the inventor solved; and (vi) unexpected results. I have been
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`informed and understand that evidence of these objective indicia must be
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`commensurate in scope with the claimed subject matter. I am not aware of any
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`objective indicia of non-obviousness relevant to the claims of the ’297 patent.
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`21.
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`I have been informed and I understand that independently made,
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`simultaneous inventions, made within a comparatively short space of time, are
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`evidence that the claimed apparatus was the product only of ordinary mechanical
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`or engineering skill.
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`22.
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`In determining whether the subject matter as a whole would have been
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`obvious at the time that the invention was made to a person having ordinary skill in
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`the art, I have been informed of and understand certain principles regarding the
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`combination of elements of the prior art. A combination of familiar elements
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`according to known methods is likely to be obvious when it yields predictable
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`results. Also, if a person of ordinary skill in the art can implement a predictable
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`variation in a prior art device, and would see the benefit from doing so, such a
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`variation would be obvious. In particular, when there is pressure to solve a
`
`problem and there are a finite number of identifiable, predictable solutions, it
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`would be reasonable for a person of ordinary skill to pursue those options that fall
`
`within his or her technical grasp. If such a process leads to the claimed invention,
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`Nichia Exhibit 1003
`Page 7
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`then the latter is not an innovation, but more the result of ordinary skill and
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`common sense.
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`23.
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`I have also been informed and understand that a teaching, suggestion
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`and motivation is a useful guide in establishing a rationale for combining elements
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`of the prior art. The test poses the question as to whether there is an explicit
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`teaching, suggestion, or motivation in the prior art to combine prior art elements in
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`a way that realizes the claimed invention. Though useful to the obviousness
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`inquiry, I understand that this test should not be treated as a rigid rule. It is not
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`necessary to seek out precise teachings; it is permissible to consider the inferences
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`and creative steps that a person of ordinary skill in the art (who is considered to
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`have an ordinary level of creativity and is not an “automaton”) would employ.
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`V. LEVEL OF ORDINARY SKILL IN THE ART
`I have been informed and understand that the disclosure of patents and
`24.
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`prior art references are to be viewed from the perspective of a person having
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`ordinary skill in the art at the time of the alleged invention. I have been told I may
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`use the short hand “POSITA” to describe this person. I have provided my opinions
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`from this perspective. I understand that the relevant time period is September 11,
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`2007, the filing date of the application that led to the ’297 patent.
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`25.
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`I have been informed and understand that prior art references can
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`provide evidence of the level of ordinary skill in the art, and that factors that may
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`Nichia Exhibit 1003
`Page 8
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`be considered in determining this level of skill can include the educational level of
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`the inventors and active workers in the field, the types of problems encountered in
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`the art, the prior art solutions to those problems, the rapidity with which
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`innovations are made, and the sophistication of the technology.
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`26.
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`It is my opinion that those of ordinary skill in the art during the
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`relevant period 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.
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`However, I note that this description is approximate, and a higher level of
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`education or skill might make up for less experience, and additional experience
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`could make up for a lower education level, for example, an M.S. in any of the
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`above fields and two years’ experience would qualify as a person of ordinary skill,
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`in my opinion.
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`VI. SUMMARY OF THE ’297 PATENT
`27. The ’297 patent describes as background typical LED devices: “Light
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`emitting devices typically include a light emitting diode (LED) located in a cavity.
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`The walls of the cavity may be reflective in order to increase the efficiency of the
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`light-emitting device. The cavity is filled with an encapsulate, such as silicone, in
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`order to protect the LED and the reflector.” Ex. 1001 at 1:5-9.
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`28. The ’297 patent states that there are problems with this typical LED
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`device, most notably, encapsulant delamination: “Encapsulants tend to delaminate
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`Nichia Exhibit 1003
`Page 9
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`or pull away from the reflector walls. Once the delamination has started on a small
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`section of the wall, the delamination typically continues rapidly. The delaminated
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`areas may enable contaminants to enter the light-emitting device and either cause
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`failure or a reduction in the efficience [sic] of the light-emitting device. The
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`delamination may also adversely affect the light pattern proximate the delaminated
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`wall, which may reduce or diffract the emitted light. Eventually, the delamination
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`may spread to the LED, which may cause damage to the LED and failure of the
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`light-emitting device.” Ex. 1001 at 1:10-20.
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`29. The ’297 patent also describes that, “[i]n conventional light emitting
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`devices, the LEDs may separate from the substrate if delamination occurs adjacent
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`the LEDs.” Ex. 1001 at 3:4-6.
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`30. The ’297 patent seeks to solve these problems by adding what it refers
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`to as “notches” in the reflector wall (which, according to the patent,
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`“[c]onventional light emitting devices do not have”). Ex. 1001 at 2:6-67. The
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`patent also describes adding “recessed portions” (or “dimples”) to the substrate of
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`the conventional LED device and filling the recessed portions/dimples with an
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`adhesive. Ex. 1001 at 3:1-22.
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`31. The patent includes two corresponding figures. “FIG. 1 is a side cut
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`away view of an embodiment of a light-emitting device.” Ex. 1001 at 1:23-24.
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`Nichia Exhibit 1003
`Page 10
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`“FIG. 2 is a top plan view of the light-emitting device of FIG. 1.” Ex. 1001 at
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`1:25-26.
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`32. Figure 1 is shown below, with annotation to illustrate certain features:
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`the “reflector 114” is shown in green; the “first notch 134” formed in the reflector
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`is shown in red; the “second notch 146” formed in the reflector is shown in blue;
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`the “substrate 110” is shown in purple; the “cavity 118” formed by the reflector
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`and substrate is shown in orange; the “LED 112” is shown in yellow; and the
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`“recessed portions 160” into which an adhesive is placed are shown in pink. Ex.
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`1001 at 1:39-3:27.
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`33. The ’297 patent describes how the “notches” function to prevent
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`delamination: “If delamination starts proximate the top or upper edge 124 of the
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`Nichia Exhibit 1003
`Page 11
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`reflector 114, the delamination may progress down the first inner wall 126, but it
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`will be stopped by the first notch 134. Therefore, the delamination will not be able
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`to proceed down the slanted wall 140. The first notch 134 also serves to anchor the
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`encapsulant to the reflector 114, which further serves to prevent delamination. The
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`same occurs with the second notch 146.” Ex. 1001 at 2:53-61.
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`34. Figure 2 (the top plan view) is shown below:
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`VII. SUMMARY OF PROSECUTION HISTORY
`I have reviewed the prosecution history of the ’297 patent and provide
`35.
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`the following summary.
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`
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`Nichia Exhibit 1003
`Page 12
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`36. During prosecution, the examiner rejected the originally filed claims;
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`for example, he rejected certain claims as being anticipated by U.S. Patent
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`Application Publication No. 2003/0020077 to Horiuchi (Exhibit 1009). Ex. 1002
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`(’297 Patent File History) at 33-35.
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`37. The applicant then amended the pending claims to “better define” the
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`claimed “notch,” explaining: “Claim 1 has been amended to better define the at
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`least one notch as being formed by a first wall and a second wall that both extend
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`substantially perpendicular to the substrate. Such a configuration is shown in the
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`specification as notch 134 with walls 126 and 130 wherein the walls 126 and 130
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`are substantially perpendicular to the substrate. The use of the walls 126 and 130
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`tends to form a deep notch that keeps an encapsulant from delaminating from the
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`reflector.” Ex. 1002 at 57. The amendment to claim 1 is shown as follows (the
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`underline shows the additions and the strikeouts show the deletions to originally
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`filed claim 1):
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`1. A light emitting device comprising:
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`a substrate;
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`a reflector extending from said substrate, said reflector forming
`a cavity in conjunction with said substrate;
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`a light emitter located in said cavity; and
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`at least one first recessed portion notch located in said reflector,
`said at least one first recessed portion notch extending
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`Nichia Exhibit 1003
`Page 13
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`
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`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.
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`Ex. 1002 at 51.
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`38. The applicant then focused on how Horiuchi failed to disclose the
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`claimed “notch” with substantially perpendicular sidewalls: “Horiuchi, on the other
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`hand, simply has a ledge 6b and 7b. The walls forming the ledge 6b and 7b of
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`Horiuchi do not extend perpendicular to the substrate as recited in claim 1. Rather,
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`one wall is perpendicular and the other wall is parallel to the substrate.
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`Accordingly, Horiuchi does not disclose all the elements of claim 1 and cannot
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`anticipate claim 1.” Ex. 1002 at 57. The applicant’s description of the ledges in
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`Horiuchi can be seen Figure 12 of Horiuchi, annotated below, where the ledges are
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`shown in red. The remainder of Figure 12 is colored the same as Figure 1 of the
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`’297 patent (reflector in green; substrate in purple; LED in yellow; and cavity in
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`orange). Ex. 1002 at 33-35.
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`Nichia Exhibit 1003
`Page 14
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`39. After this response, the examiner allowed the amended claims. Ex.
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`1002 at 65-71.
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`VIII. CLAIM CONSTRUCTION
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`40.
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`I have been informed and understand that claim construction is the
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`process of determining the meaning of words (or terms) within a patent claim. I
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`have also been informed and understand that the proper construction of a claim
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`term is the meaning that a POSITA would have given to that term.
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`41.
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`I have been informed and understand that claims in inter partes
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`review proceedings are to be given their broadest reasonable interpretation in light
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`of the specification, so long as they are not set to expire during the course of the
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`proceedings. I have been told to apply, and have applied, the broadest reasonable
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`interpretation in performing my analysis in this declaration.
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`42.
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`In comparing the claims of the ’297 patent to the prior art, I have
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`carefully considered the ’297 patent and its file history based upon my experience
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`and knowledge in the relevant field. In my opinion, the broadest reasonable
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`interpretation of the claim terms of the ’297 patent are generally consistent with the
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`terms’ ordinary and customary meaning, as a person of ordinary skill would have
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`understood them. That said, for purposes of this proceeding, I have applied the
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`following particular constructions of four claim terms when analyzing the prior art
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`and the claims.
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`Nichia Exhibit 1003
`Page 15
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`43. The term “reflector” is found in claims 1, 3, 4, 6, 9, 10 and 13-15.
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`The broadest reasonable interpretation of this term is “material—mounted on the
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`substrate in a light emitting device—having a surface that reflects light from the
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`emitter.”
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`44. This construction is consistent with the ’297 patent specification
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`which describes the “reflector” as consisting of a material that is mounted on the
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`substrate and bounded on several sides. Ex. 1001 at 1:39-2:27, Figs. 1-2. This
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`reflector can be seen in the following annotated Figures 1 and 2, below (the green
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`has been added to the diagonal lines to illustrate the reflector). Figure 1 depicts a
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`side view and Figure 2 depicts a top plan view. As can be seen in the figures, the
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`reflector includes the material (highlighted in green) that fills the space above the
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`substrate.
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`
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`Nichia Exhibit 1003
`Page 16
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`45. Consistent with the above-annotated figure, the ’297 patent describes
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`the reflector (shown in green above) as follows:
`
`
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`The light-emitting device 100 includes a substrate 110 on which a
`Light Emitting Diode (LED) 112 and a reflector 114 are mounted
`. . . . The combination of the substrate 110 and the reflector 114
`forms a cavity 118 in which the LED 112 is located . . . . [T]he
`reflector 114 has many recessed portions and the like that secure
`the encapsulant . . . . The reflector 114 has an outer
`circumfer[ential] wall 122 that may form the outer wall of the
`light-emitting device 100. An upper edge 124 extends around the
`circumference of the reflector 114 and may form the highest point
`of the light-emitting device 100. The portion of the reflector 114
`proximate the upper edge 124 is sometimes referred to as the
`Nichia Exhibit 1003
`Page 17
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`
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`upper portion. Light emitted from the light-emitting device exits
`the opening in the reflector 114 located proximate the upper
`portion.
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`Ex. 1001 at 1:39-67.
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`46. The term “intersects” is found in claim 6. The term “intersecting” is
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`found in claims 9 and 15. The broadest reasonable interpretation of these terms is
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`(i) “if considered to be a geometric line, connects or crosses through” and (ii) “if
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`considered to be a geometric line, connecting or crossing through.”
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`47. Of note, the term “intersects” (or any variations) does not appear in
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`the ’297 patent, except in the claims themselves.
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`48. Claim 6 states that “said reflector comprises a slanted portion that
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`intersects a platform, wherein said platform is located proximate said substrate.”
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`(emphasis added). Claims 9 and 15 state that “a third platform located on said
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`substrate and intersecting said slanted portion.” (emphasis added).
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`49.
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` A POSITA would have understood, based on the ’297 patent, that
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`these intersections do not mean that the platform and slanted portion must
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`physically intersect, and instead a POSITA would have understood that the
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`platform and slanted portion can intersect when viewed for the perspective of
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`extended geometric lines. The only embodiment in the ’297 patent (shown in
`
`Figure 1) depicts a single platform that is proximate the substrate, which does not
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`physically intersect a slanted portion. They do intersect, however, when
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`Nichia Exhibit 1003
`Page 18
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`considered as geometric lines. This can be seen in the excerpt of Figure 1,
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`annotated below, which depicts a slanted portion (the dotted red line) proximate
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`the substrate (purple) intersecting a platform (dotted yellow line) when the slanted
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`portion and the platform are considered as geometric lines:
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`
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`50. The term “at the intersection” is found in claims 6, 9, and 15. The
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`broadest reasonable interpretation of this term is “in, on or near the intersection.”
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`51. The term “at” is commonly understood to mean “in, on or near.” For
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`example, it is defined in the Merriam-Webster’s dictionary to be “used as a
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`function word to indicate presence or occurrence in, on, or near.” Ex. 1012 at 4
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`(emphasis added).
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`52. Again, “intersection” (or any variations) does not appear in the ’297
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`patent, except in the claims themselves.
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`Nichia Exhibit 1003
`Page 19
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`53. Claim 6 states that “said at least one notch is located at the
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`intersection of said slanted portion and said platform.” (emphasis added). Claim 9
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`states that “a second of said at least one notch is located at the intersection of said
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`third platform and said slanted portion.” (emphasis added). Claim 15 states that “a
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`second notch is located at the intersection of said third platform and said slanted
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`portion.” (emphasis added).
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`54. The only such intersection in the specification of the ’297 patent—
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`where a notch intersects a slanted portion and platform, as claimed—is shown in
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`the excerpt of Figure 1, annotated above, which depicts notch 146 located near the
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`intersection.
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`55. The terms “lower portion” and “upper portion” are found in claims
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`3, 4, 13 and 14. The broadest reasonable interpretation of “lower portion” is “the
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`part proximate the substrate and the lowest notch” and the broadest reasonable
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`interpretation of “upper portion” is “the part proximate the upper edge of the
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`reflector and the highest notch.”
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`56.
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` These broadest reasonable constructions are consistent with the
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`claims themselves and the specification (including the originally filed claims, in
`
`which these terms appear), which define these portions relative to the notches, the
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`upper edge of the reflector and the substrate. Ex. 1001 (’297 Patent) at 1:42-67;
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`Nichia Exhibit 1003
`Page 20
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`
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`Ex. 1002 (’297 Patent File History) at 11 (originally filed application claims 3 and
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`4).
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`57. The ’297 patent describes that “[t]he portion of the reflector 114
`
`located proximate the substrate 110 is sometimes referred to as the lower portion”
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`and that “[t]he portion of the reflector 114 proximate the upper edge 124 is
`
`sometimes referred to as the upper portion. Light emitted from the light-emitting
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`device exits the opening in the reflector 114 located proximate the upper portion.”
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`Ex. 1001 at 1:42-67 (emphasis added).
`
`58.
`
`Issued claim 3 states: “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.” (emphasis added). Issued claim 4 states: “The
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`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.” (emphasis
`
`added). Originally filed claims 3 and 4 are the same, except they used the term
`
`“recessed portion,” which, as discussed above (paragraphs 37-38), the applicant
`
`amended to change it to the term “notch.” Ex. 1002 at 11 (originally filed claims 3
`
`and 4), at 51 (amended claims 3 and 4).
`
`Nichia Exhibit 1003
`Page 21
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`
`
`59. A POSITA would have understood the boundaries of these lower and
`
`upper portions are as indicated in Figure 1, annotated below, which depicts the
`
`lower portion (shown in orange) proximate, or near, the substrate 110 (shown in
`
`purple) and the lowest notch 146 (shown in blue), and the upper portion (shown in
`
`yellow) proximate, or near, the upper edge 124 of the reflector (shown in green)
`
`and the highest notch 134 (shown in red).
`
`
`IX. SUMMARY OF SELECT PRIOR ART AND STATE OF THE ART
`60. All of the claimed components of the ’297 patent claims were known
`
`in the prior art, as detailed below.1
`
`61.
`
`Indeed, as discussed herein, the prior art was replete with
`
`conventional LED devices (including substrates and reflectors forming an
`
`
`1 I have been told that the references discussed herein qualify as prior art under the
`
`law.
`
`Nichia Exhibit 1003
`Page 22
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`
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`encapsulated cavity with an LED mounted therein) to which notches and adhesive-
`
`filled recess portions were added for, among other stated reasons, to eliminate the
`
`delamination peel-off problem and to alter and improve radiation patterns and
`
`efficiency. Moreover, the notches are disclosed in the prior art to take many
`
`shapes (including, for example, square, rectangular, circular and triangular) and are
`
`referred to in the prior art by varying terms—such as “depressions” (as in Loh
`
`’842), “moats” (as in Loh ’819 and Andrews), and “trenches” (as in Nii).
`
`62.
`
`I have generally used consistent color coding when comparing the
`
`illustrations of the ’297 patent and the prior art; for example, I have colored the
`
`reflectors in green, LED dies in yellow, cavities to which encapsulants are added in
`
`orange, substrates in purple, and notches in red and blue. This color coding makes
`
`clear the striking similarities between the ’297 patent and prior art.
`
`A. U.S. Patent No. 7,939,842 to Loh (Exhibit 1004)
`63. Loh ’842 is directed to a conventional LED device with “depressions”
`
`added to a reflector. It describes that these “depressions” may take a variety of
`
`shapes: “triangular in shape,” “square shaped,” “circular or curved in shape” or
`
`“any other suitable shape.” Ex. 1004 at 6:40-51, 8:24-59.
`
`64. Loh ’842 depicts these variously shaped “depressions” (which it
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`consistently describes as “depression 406” and “depression 408” throughout the
`
`specification and in each of the figures) to be formed in a variously shaped and
`
`Nichia Exhibit 1003
`Page 23
`
`
`
`sized “lens coupler” (which it also consistently describes as “lens coupler 106”
`
`throughout the specification and in each of the figures). For example, Loh ’842
`
`describes that “lens coupler 106 can have many different shapes and sizes and to
`
`enhance reflectivity, may include a reflective element covering different portions
`
`of the coupler surface around LED 110. Alternatively, lens coupler 106 can be
`
`made of a reflective material such that light LED 110 directed toward the surface
`
`of coupler 106 is reflected to contribute to package emission.” Ex. 1004 at 5:36-
`
`43.
`
`65. The variations in depressions 406 and 408 and lens coupler 106 can be
`
`seen in many figures, including Figures 4A-4C and 8A-8G.
`
`66. For example, Figure 8B, annotated below, shows “square shaped”
`
`depressions 406 and 408 (blue and red) formed in the lens coupler 106 (green)
`
`extending from substrate 102 (purple) that together form a cavity space 400
`
`(orange) with an LED 110 (yellow) and that is filled with an encapsulant 111. Ex.
`
`1004 at 5:5-6:5, 8:24-29.
`
`Nichia Exhibit 1003
`Page 24
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`
`
`
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`67. Figure 8C, annotated similarly below, shows “circular shaped”
`
`depressions 406 and 408 (blue and red) formed in the lens coupler 106 with a
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`horizontal platform and slanted wall (green) extending from substrate 102 (purple)
`
`that together form a cavity space 400 (orange) with an LED 110 (yellow) and that
`
`is filled with an encapsulant 111.
`
`
`
`
`
`Nichia Exhibit 1003
`Page 25
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`
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`B. U.S. Patent No. 7,960,819 to Loh (Exhibit 1006)
`68. Loh ’819 is directed to a conventional LED device with a “moat”
`
`added to a reflector.
`
`69. The similarities to the ’297 patent can be seen, for example, in Figure
`
`8, annotated below. The LED package in Figure 8 has “opposing upper
`
`sidewalls 234 that define an optical cavity 250 . . . [and] may be filled, for
`
`example, with a liquid encapsulant material, such as liquid silicone and/or epoxy”
`
`(cavity 250 is shown in orange in the figure below). Ex. 1006 at 10:41-52, 11:13-
`
`22. “The upper sidewalls 234 may include oblique inner surfaces 238 that define a
`
`reflector cup above and surrounding the die mounting regions 202” (the reflector
`
`cup is shown in green). Ex. 1006 at 10:45-47. “[T]he sidewalls 234 may include a
`
`circumferential moat 232 outside the circumferential rim 236” (the moat 232
`
`shown is in red). Ex. 1006 at 10:57-59. The LED package of Figure 8 also
`
`includes “light emitting devices 214” (which are shown yellow) that is mounted on
`
`the “die mounting regions 202” of “leadframe 200” with a “package body …
`
`formed on/around the lead frame” (this is shown in purple). Ex. 1006 at 10:8-67.
`
`Nichia Exhibit 1003
`Page 26
`
`
`
`
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`70.
`
` Loh ’819 also incorporates by reference other patent applications,
`
`including the Andrews reference (discussed below in paragraphs 72-74). Loh ’819
`
`states, with respect to Andrews, U.S. Patent Application Publication No.
`
`2005/0218421: “The use of circumferential edges and moats for control of
`
`encapsulant materials and lens placement is described in detail in U.S. Pre-grant
`
`Publication No. 2005/0218421 . . . which is assigned to the assignee of the present
`
`invention, the disclosure of which is incorporated herein by reference.” Ex. 1006
`
`at 9:11-18.
`
`71.
`
`It is my opinion that a POSITA would have considered that Loh ’819
`
`expressly incorporated the Andrews reference into the Loh ’819 disclosure. That
`
`is, a POSITA would have treated Andrews as if it were part of the Loh ’819
`
`Nichia Exhibit 1003
`Page 27
`
`
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`reference (i.e., treated Andrews and Loh ’819 as a single reference). A POSITA
`
`would have looked to Andrews, for example, for its particular teachings regarding
`
`the “use of circumferential edges and moats for control of encapsulant materials
`
`and lens placement.”
`
`C. U.S. Patent No. 7,815,343 to Nii (Exhibit 1010)
`72. Nii is directed to a conventional LED device that adds a “trench” to a
`
`reflector.
`
`73. Like the other references I discuss, Nii describes a conventional LED
`
`device: “Among light emitting devices that employ light emitting elements such as
`
`a
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