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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`NICHIA CORPORATION,
`
`Petitioner,
`
`v.
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`DOCUMENT SECURITY SYSTEMS, INC.,
`
`Patent Owner.
`
`_______________
`
`Case IPR2018-00966
`Patent 7,652,297
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`____________
`
`
`PATENT OWNER’S SUR-REPLY
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`
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`TABLE OF CONTENTS
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`
`
`I.
`
`II.
`
`PETITIONER DID NOT DEMONSTRATE A REFLECTOR
`“EXTENDING FROM” A SUBSTRATE IN LOH ’842 OR A
`REFLECTOR FORMING A CAVITY “IN CONJUCTION WITH” THE
`SUBSTRATE AS RECITED IN INDEPENDENT
`CLAIMS 1, 10, AND 15 ................................................................................. 1
`
`PETITIONER DID NOT SHOW THE THEORIES BASED ON LOH ’819
`SATISFY “A REFLECTOR EXTENDING FROM SAID SUBSTRATE”
`AS RECITED IN INDEPENDENT CLAIMS 1, 10, AND 15 ....................... 3
`
`III.
`
`PETITIONER DID NOT SATISFY THE REQUIREMENTS OF CLAIMS
`3, 4, 13, AND 14 .............................................................................................. 9
`
`IV. PETITIONER DID NOT SATISFY THE REQUIREMENTS OF CLAIMS
`6, 9, AND 15-17 ............................................................................................ 15
`
`V.
`
`PETITIONER DID NOT SHOW LOH ’842 HAVING A LIGHT EMITTER
`ELECTRICALLY CONNECTED TO THE SUBSTRATE AS RECITED IN
`CLAIM 5 ....................................................................................................... 17
`
`VI. PETITIONER DID NOT SHOW THAT LOH ’819 IN VIEW OF
`ANDREWS INCLUDES A LIGHT EMITTER ELECTRICALLY
`CONNECTED TO THE SUBSTRATE AS RECITED IN CLAIM 5 .......... 18
`
`VII. PETITIONER DID NOT SATISFY CLAIMS 9 AND 15............................ 19
`
`VIII. CONCLUSION .............................................................................................. 20
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`
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`
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`- i -
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`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Anchor Wall Sys. v. Rockwood Retaining Walls, Inc.,
`340 F.3d 1298 (Fed. Cir. 2003) ..................................................................... 10
`
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) ....................................................................... 7
`
`CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co. KG,
`224 F.3d 1308 (Fed. Cir. 2000) ................................................................ 2, 15
`
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) ..................................................................................... 5
`
`In re Fritch,
`972 F.2d 1260 (Fed. Cir. 1992) ....................................................................... 7
`
`In re Smith Int’l,
`871 F.3d 1375 (Fed. Cir. 2017) ............................................................ 5, 6, 13
`
`InTouch Techs., Inc. v. VGO Commc’ns., Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) ....................................................................... 7
`
`Personal Web Technologies LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ......................................................................... 7
`
`SAS Institute, Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ..................................................................................... 3
`
`Sirona Dental Sys. GmbH v. Institut Straumann AG,
`892 F.3d 1349 (Fed. Cir. 2018) ....................................................................... 3
`
`Stryker Corp. v. Karl Storz Endoscopy America, Inc.,
`IPR2015-00764 (PTAB Sept. 2, 2015) (Paper 13) .......................................... 8
`
`TRW Automotive U.S. LLC v. Magna Electronics, Inc.,
`IPR2015-00972 (PTAB Sept. 16, 2015) (Paper 9) .......................................... 7
`
`
`
`
`
`
`
`- ii -
`
`
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`TABLE OF EXHIBITS
`
`Exhibit Description
`
`Reserved
`Deposition Transcript of Dr. Shealy
`Declaration of Thomas L. Credelle
`Curriculum Vitae of Thomas L. Credelle
`Merriam-Webster’s Collegiate Dictionary, 10th ed. (1997), pp.
`908, 941
`Merriam-Webster’s Web Dictionary, “portion”
`Merriam-Webster’s Web Dictionary, “proximate”
`The American Heritage Dictionary on the Web, “portion”
`The American Heritage Dictionary on the Web, “proximate”
`Reserved
`PTAB E2E Notice on August 16, 2018 (EXPUNGED)
`Reserved
`Email to Petitioner Serving POPR in IPR2018-00966
`(EXPUNGED)
`Email to Board Noticing Service of POPR in IPR2018-00966
`(EXPUNGED)
`
`Exhibit
`Number
`
`2001-2007
`2008
`2009
`2010
`2011
`
`2012
`2013
`2014
`2015
`2016-2199
`2200
`2201-2202
`2203
`
`2204
`
`
`
`
`
`- iii -
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`
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`IPR2018-00966 Patent Owner’s Sur-Reply
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`Patent Owner Document Security Systems, Inc. (“DSS” or “Patent Owner”)
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`files this Sur-Reply in response to the Reply in support of the Petition for inter
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`partes review filed by filed by Nichia Corporation (“Petitioner”). Rather than
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`rehash prior arguments, Patent Owner will focus on certain salient issues in
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`Petitioner’s Reply, and stand on its Response for the remaining issues.
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`I.
`PETITIONER DID NOT DEMONSTRATE A REFLECTOR
`“EXTENDING FROM” A SUBSTRATE IN LOH ’842 OR A REFLECTOR
`FORMING A CAVITY “IN CONJUCTION WITH” THE SUBSTRATE AS
`RECITED IN INDEPENDENT CLAIMS 1, 10, AND 15
`
`The Petition relied on the lens coupler in the FIG. 4 and FIG. 8 embodiments
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`of Loh ’842 in an attempt to satisfy the claimed “reflector extending from” a
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`substrate. Pet., 28-29. Patent Owner demonstrated how the lens coupler in Loh
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`’842 did not extend from the substrate of Loh ’842 because it was separated by
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`unaddressed elements in Loh ’842, including a mounting pad for Loh’s lens
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`coupler. Response, 11-13. Similarly, because the cavity in Loh ’842 is formed by
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`the substrate in conjunction with other elements of Loh ’842 (including the lens
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`coupler mounting pad), it is incorrect to conclude that the lens coupler and
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`reflector “in conjunction” form the cavity. Response, 13-14.
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`In Reply, Petitioner seeks to regard the interpretation of “extending from” as
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`a matter of claim construction. Reply at 2-3. It is not. The claim defines the
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`starting point for the extension of the reflector, i.e., the reflector extends from the
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`-1-
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`IPR2018-00966 Patent Owner’s Sur-Reply
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`substrate. In fact, Petitioner’s argument is self-defeating because it relies on
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`evidence showing how a POSITA would encompass intervening elements in a
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`claim, through the use of the word “on.” What Petitioner is attempting to do here
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`is to rewrite the claim to simply require a reflector on a substrate, rather than
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`extending from a substrate. See CAE Screenplates, Inc. v. Heinrich Fiedler GmbH
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`& Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any evidence
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`to the contrary, we must presume that the use of these different terms in the claims
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`connotes different meanings.”).
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`On reply, Petitioner also attempts to depart from the Petition by relying on
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`portions of Loh ’842 that were not presented in the Petition. In particular,
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`Petitioner seeks to rely on the attachment techniques of Fig. 6 (Reply at 12 (citing
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`Loh ’842 at 8:7-11)) and the LED mounting pad of Fig. 5 (Reply at 12 (citing 2:42-
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`44 and 11:1-7, which corresponds to Loh ’842 at 7:56-59)).
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`In the FIG. 4 and FIG. 8 embodiments of Loh ’842 relied on in the Petition,
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`however, it remains uncontroverted that a mounting pad for the lens coupler is
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`shown. Further, that mounting pad exists between the lens coupler and the
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`substrate. While Petitioner seeks to state that the LED die mounting pad can be
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`considered part of the substrate, the lens coupler mounting pad is consistently
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`referenced by Loh ’842 as separate and apart from the substrate. See, e.g., Loh
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`’842 at 5:27-31; Ex. 2009 at ¶¶18-23. No modification of the FIG. 4 and FIG. 8
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`-2-
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`
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`IPR2018-00966 Patent Owner’s Sur-Reply
`
`embodiments of Loh ’819 was presented in the Petition to dispense with the lens
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`coupler mounting pad and, under SAS Institute, Inc. v. Iancu, no new modification
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`can be permitted at this stage of the proceeding. 138 S. Ct. 1348, 1355 (2018)
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`(“From the outset, we see that Congress chose to structure a process in which it’s
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`the petitioner, not the Director, who gets to define the contours of the proceeding.
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`… Nothing suggests the Director enjoys a license to depart from the petition and
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`institute a different inter partes review of his own design”). Further, it would “not
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`be proper for the Board to deviate from the grounds in the petition and raise its
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`own obviousness theory.” Sirona Dental Sys. GmbH v. Institut Straumann AG,
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`892 F.3d 1349, 1356 (Fed. Cir. 2018).
`
`Accordingly, the lens coupler in Loh ’842 relied upon by Petitioner does not
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`“extend from” the substrate. It extends from the lens coupler mounting pad. Nor
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`does any “conjunction” form a cavity, as there is no junction between the lens
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`coupler and the substrate. Independent claims 1, 10, and 15 of the ’842 patent are
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`not satisfied by Loh ’842, and claims 1-17 should survive inter partes review for
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`this reason.
`
`II.
`PETITIONER DID NOT SHOW THE THEORIES BASED ON LOH
`’819 SATISFY “A REFLECTOR EXTENDING FROM SAID SUBSTRATE”
`AS RECITED IN INDEPENDENT CLAIMS 1, 10, AND 15
`
`The Petition asserted that Loh ’819 included a reflector extending from a
`
`substrate (Pet., 61-63) or that it would have been obvious to replace the leadframe
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`-3-
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`
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`IPR2018-00966 Patent Owner’s Sur-Reply
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`in Loh ’819 with a substrate (Pet., 71-72). Patent Owner explained that the claims
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`required two separate parts, a reflector and a substrate, and that Loh ’819’s
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`package body, even when considered with its leadframe, does not satisfy both the
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`claimed “substrate” and the claimed “reflector extending from said substrate.”
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`Response at 40-42.
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`In its Reply, Petitioner continues to fail to demonstrate the two separate
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`structures of claim 1. Petitioner does not deny that, under its challenge, Loh ’819’s
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`package body is part of what Petitioner contends is the claimed reflector and also
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`what Petitioner contends is the claimed substrate. Just as extreme as Petitioner’s
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`incorrect assertion that a reflector extending from something else extended from a
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`substrate in Loh ’842, Petitioner veers to the other extreme when incorrectly
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`asserting that Loh ’819’s package body extends from itself.
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`Moreover, Petitioner’s observations about Mr. Credelle’s testimony are
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`irrelevant. That a substrate can be a base material or made of the same material as
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`a reflector does not eliminate the requirement in claim 1 of the ’297 patent that
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`there are two different structures. Also, Petitioner fails to support, or show the
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`context of, its proposition that “a packaged lead frame may constitute a substrate,”
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`Reply at 24. None of the citations provided in the Reply (Ex. 1017, 116:2-122:22,
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`33:11-35:9, 110:16-111:22, 125:4-8) support such a proposition.
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`-4-
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`
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`IPR2018-00966 Patent Owner’s Sur-Reply
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`Here, Mr. Credelle consistently testified that Loh ’819 did not include the
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`two components required by the claims of the ’297 patent, see, e.g., Ex. 1017,
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`124:16-126:16. No matter how many “different functions” (Reply at 25) Loh
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`’819’s package body performs, it is still a single structure. And the broadest
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`reasonable interpretation standard requires that any construction of “substrate” be
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`determined in light of the specification. See In re Smith Int’l, 871 F.3d 1375,
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`1382-83 (Fed. Cir. 2017) (broadest reasonable construction is “an interpretation
`
`that corresponds with what and how the inventor describes his invention in the
`
`specification, i.e., an interpretation that is consistent with the specification.”)
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`(citation and internal quotation marks omitted); Cuozzo Speed Techs., LLC v. Lee,
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`136 S. Ct. 2131, 2142 (2016).
`
`Relevant here is the Court’s reasoning in In re Smith Int’l, in which the
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`Court reversed an erroneous construction—that a “body” may encompass other
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`components—rather than the correct construction based on the specification of a
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`“body” as “a component distinct from other separately identified components.”
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`The Court reasoned:
`
`The correct inquiry in giving a claim term its
`broadest reasonable interpretation in light of the
`specification is not whether the specification proscribes
`or precludes some broad reading of the claim term
`adopted by the examiner. And it is not simply an
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`-5-
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`IPR2018-00966 Patent Owner’s Sur-Reply
`
`interpretation that is not inconsistent with the
`specification. It is an interpretation that corresponds with
`what and how the inventor describes his invention in the
`specification, i.e. , an interpretation that is consistent with
`the specification.
`The Board emphasized that the patentee here did
`not act as a lexicographer, and that the specification
`neither defines nor precludes the examiner's reading of
`the term "body." Accordingly, the Board found that
`nothing in the specification would disallow the
`examiner's interpretation, rendering it "reasonable."
`However, following such logic, any description short of
`an express definition or disclaimer in the specification
`would result in an adoption of a broadest possible
`interpretation of a claim term, irrespective of repeated
`and consistent descriptions in the specification that
`indicate otherwise. That is not properly giving the claim
`term its broadest reasonable interpretation in light of the
`specification.
`871 F.3d 1375, 1382-83 (citation and quotation omitted). The same reasoning
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`applies to the application of the terms “substrate” and “reflector” to Loh ’819 in
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`this case. The substrate and the reflector are consistently described in the
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`specification of the ’297 patent as separate components.
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`Turning to the question of obviousness, the Reply notes that packages
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`having substrates were known and that a POSITA could make a package with a
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`-6-
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`IPR2018-00966 Patent Owner’s Sur-Reply
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`substrate. Reply at 26-27. But that does not answer the question presented: the
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`mere possibility of making a combination is not enough to satisfy the requisite
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`motivation for an ordinarily skilled artisan to actually make that combination. See
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`Personal Web Technologies LLC v. Apple, Inc., 848 F.3d 987, 993-94 (Fed. Cir.
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`2017); see also Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015)
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`(“[O]bviousness concerns whether a skilled artisan not only could have made but
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`would have been motivated to make the combinations or modifications of prior art
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`to arrive at the claimed invention.”); InTouch Techs., Inc. v. VGO Commc’ns., Inc.,
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`751 F.3d 1327, 1352 (Fed. Cir. 2014).
`
`On the issue of motivation, Petitioner does not dispute that Loh ’819 uses its
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`specific leadframe design to achieve certain heat sink advantages and that Loh
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`’819 incorporates Andrews, not for its teachings regarding a substrate, but for
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`“circumferential edges and moats for control of encapsulant materials and lens
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`placement.” Andrews, 9:11-18. Thus, other than impermissible hindsight, see In
`
`re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992), Petitioner provides no reason why
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`a POSITA would have been motivated to employ a substrate “to create a heat sink”
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`(Pet., 72) when Loh ’819 already includes its specific leadframe to provide a heat
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`sink. See TRW Automotive U.S. LLC v. Magna Electronics, Inc., IPR2015-00972,
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`slip op. at 15, 17 (Sept. 16, 2015) (Paper 9) (finding no reason to combine where
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`“the camera in [the ’094 patent] already is mounted to the windshield using a
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`-7-
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`
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`IPR2018-00966 Patent Owner’s Sur-Reply
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`bracket and does not require the direct optical coupling provided by the fastening
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`device in [the ’633 patent]”); see also Stryker Corp. v. Karl Storz Endoscopy
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`America, Inc., IPR2015-00764, slip op. at 13 (PTAB Sept. 2, 2015) (Paper 13)
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`(“[W]e fail to see, and Petitioner does not adequately explain, why it would be
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`obvious to add a translator to redundantly perform the function that Petitioner
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`maintains is performed by the interconnect devices and network computer located
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`within the surgical network.”). Notably, Petitioner provides no evidence that
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`Andrews provides an improved heat sink as compared to Loh ’819, and as the
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`inventors of Loh were plainly aware of Andrews, the reasonable inference is that it
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`did not, as they choose, and instructed a POSITA to use, a different design
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`incorporating a leadframe. See also Ex. 2009 at ¶¶34-38; Loh ’819, 11:53-62.
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`Moreover, Petitioner does nor rebut that incorporating a substrate in Loh ’819
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`would complicate manufacture of the device, contrary to a goal of Loh ’819. See
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`Ex. 2009 at ¶39; Loh ’819, 11:45-52 (“assembly of a package according to
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`embodiments of the invention may be simplified, since the package body may be
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`formed through injection molding techniques.”) (emphasis added).
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`Accordingly, independent claims 1, 10, and 15 of the ’297 patent are not
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`satisfied by Loh ’819, alone or in combination, and claims 1-17 should survive
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`inter partes review for this reason.
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`-8-
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`
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`IPR2018-00966 Patent Owner’s Sur-Reply
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`III. PETITIONER DID NOT SATISFY THE REQUIREMENTS OF
`CLAIMS 3, 4, 13, AND 14
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`The Petition urged that the “lower portion” of claims 3, 4, 13, and 14 be
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`construed to mean “the part proximate the substrate and the lowest notch” and the
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`“upper portion” to mean “the part proximate the upper edge of the reflector and the
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`highest notch.” Pet., 16. Petitioner urged the Board to adopt those proposed
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`constructions based on the specification and figures of the ’297 patent. However,
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`in Petitioner’s own illustration of Fig. 1 of the ’297 patent, reproduced below,
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`Petitioner included notches located in what it described as the “portions” of the
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`’297 patent (Pet., 15):
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`The Board did not accept Petitioner’s construction (Paper 14 at 6-7), and
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`Patent Owner’s Response (Response at 15-19) detailed why such a construction
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`was incorrect, including that claims 3 and 4 do not require multiple notches and,
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`
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`-9-
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`IPR2018-00966 Patent Owner’s Sur-Reply
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`citing Ex. 2009, ¶¶18-19, that the use of “upper” and “lower” portions in the claims
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`distinguished from a notch, or even notches, in the middle of a reflector, Ex. 2009,
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`¶¶20-22. Further, Patent Owner provided evidence from cross-examination of Dr.
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`Shealy, showing the extreme nature of his understanding of the claim limitations.
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`Response at 18-19.
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`In Reply, Petitioner continues to assert that its prior construction was
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`correct, but does so by abandoning the Petition’s analysis of claims 3, 4, 13, and 14
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`based on the specification of the ’297 patent and trying to explain how to apply its
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`construction to a single notch. Petitioner also tries to raise a new dispute
`
`concerning the term “proximate.”
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`With regard to the specification, Petitioner disavows its previous reliance of
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`Fig. 1 of the ’297 patent, stating “the use of Figure 1 for inferential definitional
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`purposes is not helpful where the POSITA must apply the claim language to other
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`reflector sizes and shapes.” Reply at 6 (citing, without explanation of relevance,
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`Anchor Wall Sys. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1306-07
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`(Fed. Cir. 2003)). Petitioner provides no reasoning for the Reply’s shift away from
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`the Petition’s use of the specification of the ’297 patent.
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`Petitioner, now divorced from the Fig. 1 of the ’297 patent, instead explains
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`that the Petition’s reference to a “lowest” and “highest” notch means that, under its
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`construction, “a single notch is both the highest and lowest notch.” Reply, 7.
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`-10-
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`IPR2018-00966 Patent Owner’s Sur-Reply
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`Thus, the location of the notch, rather than being specified by the claim 3, 4, 13,
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`and 14 in a manner consistent with specification of the ’297 patent, is now
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`irrelevant. Petitioner’s view now is that no matter how high or low the notch is on
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`the reflector, it would be both in a “lower portion,” as “the part proximate the
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`substrate and [the single notch]” and in an upper portion,” as “the part proximate
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`the upper edge of the reflector and [the single notch].” Pet., 16. This results in a
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`complete evisceration of the claimed phrase, “at least one first notch being located
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`proximate said [upper/lower] portion.” Accordingly, this interpretation cannot be
`
`correct as Petitioner eliminates the point of claims 3, 4, 13, and 14—the location of
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`“at least one first notch.” And because it is Petitioner who is deviating
`
`unreasonably from the express language of the claims, Petitioner’s complaints
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`about the specification’s support for that language (Reply, 5-6 (e.g., looking for an
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`“express definition”)) ring hollow.
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`
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`Moreover, the specification does not support Petitioner’s desire for the
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`claims to cover a notch in middle of the device, like those found in the Loh ’842
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`and Loh ’819. No notch is found in the middle of the reflector of the ’297 patent,
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`even when considering Petitioner’s own annotation of the ’297 patent’s Fig. 1,
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`where Petitioner identified the “portions” of the ’297 patent (Pet., 15):
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`-11-
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`IPR2018-00966 Patent Owner’s Sur-Reply
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`
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`The issue of “overlap” at the middle of the reflector only occurs when Petitioner
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`applies its incorrect construction to the asserted prior art. “Overlap” is not in, and
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`does not flow, from the ’297 patent.
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`
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`Rather, Petitioner relies on the Board’s preliminary finding that the “upper”
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`and “lower” portions can overlap, but overlooks that this finding was based on the
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`Petition’s evidence and not on the evidence presented by Patent Owner. Reply at
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`4. On the present record, the evidence shows that a POSITA would not regard a
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`notch in the middle of the reflector to be proximate the upper of lower edge of the
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`reflector because such a notch would not achieve the ’297 patent’s goal of
`
`preventing delamination starting at the edges of the device from spreading to the
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`middle of the device. Ex. 2009, ¶¶20-22; Ex. 1017, 81:11-23. To interpret the
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`“upper” and “lower” aspects of claims 3, 4, 13, and 14 to allow delamination to
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`-12-
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`IPR2018-00966 Patent Owner’s Sur-Reply
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`spread to the middle portions would be inconsistent with how a POSITA would
`
`understand the ’297 patent. See In re Smith Int’l, 871 F.3d at 1382-83 (explaining
`
`how to use the specification to arrive at the broadest reasonable interpretation); Ex.
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`2009, ¶¶20-22.
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`Adding to the confusion surrounding its position, Petitioner still contends
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`that the word “proximate” need not be construed (Pet., 3-4) despite taking steps on
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`Reply to apply an unstated construction. In this regard, the Reply presents an
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`unclear argument, based on Mr. Credelle’s testimony, to somehow suggest that a
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`notch in the middle of a reflector is consistent with the ’297 patent. Reply at 7-8.
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`Deviating from its theory in the Petition, Petitioner untimely asserts that the
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`“proximate” location of a notch should be measured above and below the notch.
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`Using only attorney argument, Petitioner uses an annotation of Fig. 1 showing an
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`“upper portion” of Fig. 1 including a notch. Id. Then, Petitioner takes the length of
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`the upper portion shown and measures, for no explained reason, a distance below
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`the notch, and argues that this shows that another notch would be located
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`proximate the upper portion. Id. But Mr. Credelle rejected the notion that the
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`upper portion could be located lower than he illustrated (Ex. 1017, 78:18-79:22;
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`85:4-12, 89:24-90:17, 93:21-95:8), and there is no notch shown in the middle of
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`Fig. 1 of the ’297 patent because the specification teaches that the upper notch
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`should be located very near the upper edge of the reflector, not the middle.
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`-13-
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`IPR2018-00966 Patent Owner’s Sur-Reply
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`Accordingly, attempting to place a notch in the middle of the reflector, outside any
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`“upper portion” or “lower portion” thereof, amply demonstrates that Petitioner is
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`not being faithful to a construction of the claims in light of the specification.
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`
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`Applying the asserted art to claims 3, 4, 13, and 14, the Petition’s Grounds
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`depend on a broad construction of “upper” and “lower” to include the middle of
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`the device. As explained in Ex. 2009, the notches of Loh ’842 and Loh ’819 are in
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`the middle of the reflector. Ex. 2009, ¶¶24-25, 32; see also Pet., 37 (“As seen
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`above, depressions 406 and 408 (blue and red, respectively) approximately bisect
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`the reflector vertically and are both proximate the upper and lower portions.”), Pet.
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`69 (“The notch (item 232 in red) approximately bisects the reflector vertically and
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`is located proximate both the upper and lower portions.”). Petitioner provides no
`
`evidence that a POSITA would regard the notches as near the edges of the
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`reflector, rather than the middle. Given that the reflector in Loh ’842 is relatively
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`thin compared to the ’297 patent, locating a notch near the edge would mean that it
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`would have to be very close to the edge. See Reply at 6 (“depending on the size of
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`the package, the upper and lower portions ‘could be closer or farther apart’” (citing
`
`Ex. 1017, 102:24-103:12)). And while Petitioner notes that Loh ’842 can include
`
`multiple notches and the notches can have “varying heights,” Pet., 37, Petitioner
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`does not show any reasoning for locating a notch very near an edge for Loh ’842’s
`
`various reflector designs, rather than in the middle as shown in Figs. 8B-8F of Loh
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`-14-
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`IPR2018-00966 Patent Owner’s Sur-Reply
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`’842. Similarly, simply because “varying shaped reflectors” exist, would not have
`
`motivated a POSITA to place a notch at the edge of the reflector, as claimed.
`
`Petitioner’s proposed modifications in this regard are based in hindsight.
`
`According, Petitioner’s Grounds fail to satisfy the limitations of claims 3, 4,
`
`13, and 14, and these claims should survive this inter partes review.
`
`IV. PETITIONER DID NOT SATISFY THE REQUIREMENTS OF
`CLAIMS 6, 9, AND 15-17
`
`After arguing that Patent Owner should not be able to rely on a dictionary to
`
`define “proximate” or “portion,” Reply at 3, 6 (“dictionary definitions uncalled for
`
`here”), Petitioner insists that its self-supporting definition for “at” should carry the
`
`day in the phrase “at the intersection.” Reply at 9 (citing Ex. 1012). Petitioner’s
`
`inconsistency is founded in the same error—failure to properly consider the
`
`language of the claims view the claim language in view of the specification.
`
`Petitioner apparently recognizes that “at” is different than “proximate,” yet
`
`Petitioner seeks these words to have the same meaning: “near.” That view does
`
`not do justice to how different words are used in the ’297 patent to mean different
`
`things. See CAE Screenplates, Inc., 224 F.3d at 1317 (“In the absence of any
`
`evidence to the contrary, we must presume that the use of these different terms in
`
`the claims connotes different meanings.”).
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`-15-
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`IPR2018-00966 Patent Owner’s Sur-Reply
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`And while Petitioner claims there is an inconsistency regarding Mr.
`
`Credelle’s analysis (Reply at 10), Petitioner does not dispute that the notch of the
`
`’297 patent is present at point where the slanted portion and platform would have
`
`intersected (but for the notch).
`
`Loh ’842 includes no such notch. Petitioner relies on heavily annotated
`
`versions of Fig. 8C of Loh ’842, but the unannotated version of Fig. 8C shows that
`
`the height of the notch is the same on its left and right sides. This confirms that the
`
`notch is not at the intersection. Indeed, even if the slanted portion intersects a side
`
`of the notch, the notch is only near the intersection, not “at” the intersection.
`
`Moreover, this “platform” is not “proximate” the substrate, as claimed in claim 6
`
`or “located on” the substrate, as claimed in claims 9 and 15. As explained above
`
`regarding claims 3 and 4, it is in the middle.
`
`Loh ’819 also includes no such notch. As can be seen from Petitioner’s
`
`annotation (Pet. at 71), the notch has the same height on it right and left sides and
`
`is spaced apart from the slanted
`
`portion. It is not “at” the intersection of
`
`a slanted portion and a platform.
`
`Moreover, this “platform” is not
`
`“proximate” the substrate, as claimed
`
`in claim 6 or “located on” the
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`-16-
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`IPR2018-00966 Patent Owner’s Sur-Reply
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`substrate, as claimed in claims 9 and 15. As explained above regarding claims 3
`
`and 4, it is in the middle.
`
`According, Petitioner’s Grounds fail to satisfy the limitations of claims 6, 9,
`
`and 15, and claims 6, 9, and 15-17 should survive this inter partes review.
`
`V.
`PETITIONER DID NOT SHOW LOH ’842 HAVING A LIGHT
`EMITTER ELECTRICALLY CONNECTED TO THE SUBSTRATE AS
`RECITED IN CLAIM 5
`
`In an attempt to show a light emitter electrically connected to a substrate, the
`
`Petition relied on Figs. 8B-8F of Loh ’842 and, in particular, electrical connections
`
`to the mounting pad of those figures. Pet. at 41-42. Patent Owner demonstrated
`
`that the mounting pad in those figures was not part of the claimed substrate and
`
`could not satisfy the requirements of claim 5. Response at 20, 28-29.
`
`In Reply, Petitioner does not seek to explain its own analysis but, instead,
`
`seeks to rely on the preliminary findings of the Board. Reply at 16. The Board,
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`however, did not rely on the Petition’s analysis. Instead, it relied on the
`
`embodiment shown in Loh ’842’s Figs. 5 and 7, which include a die mounting pad
`
`as part of a substrate. Paper 14 at 19 (citing Loh ’852, 7:57–67 and 8:13-23).
`
`These citations of different embodiments do not countermand the description of the
`
`embodiments relied on by Petitioner, which instead include electrical connections
`
`to a lens coupler mounting pad.
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`-17-
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`IPR2018-00966 Patent Owner’s Sur-Reply
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`Accordingly, Petitioner has not established that claim 5 of the ’842 patent is
`
`satisfied by Loh ’842.
`
`VI. PETITIONER DID NOT SHOW THAT LOH ’819 IN VIEW OF
`ANDREWS INCLUDES A LIGHT EMITTER ELECTRICALLY
`CONNECTED TO THE SUBSTRATE AS RECITED IN CLAIM 5
`
`In an attempt to show a light emitter electrically connected to a substrate in
`
`Ground 6 based on Loh ’819 in view of Andrews, the Reply incorrectly suggests
`
`that Patent Owner “already conceded that Loh ’819 teaches claim 5.” Reply, 27.
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`That is not true, and Petitioner offers no substantive reply to Patent Owner’s
`
`argument, other than labelling it “conclusory.” Id.
`
`Ground 6, as best can be understood by Petitioner, is one in which Petitioner
`
`proposes to add the substrate of Andrews in place of Loh ’819’s leadframe. Pet.,
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`72. Thus, Petitioner cannot rely on the features of the leadframe of Loh ’819,
`
`including how the light emitter is electrically connected to it, to satisfy the
`
`requirements of claim 5.
`
`Accordingly, it is Petitioner’s argument in support that is lacking and
`
`conclusory. Petitioner does not show a combination where “said light emitter is
`
`electrically connected to said substrate.” All it offers is hindsight conclusions
`
`seeking to reintroduce a feature found in Loh ’819 that was altered by its
`
`impermissible modification in view of Andrews, which should further reinforce
`
`that the Andrews substrate should not be included with Loh ’819.
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`-18-
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`IPR2018-00966 Patent Owner’s Sur-Reply
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`Claim 5 distinguishes from the combination of Loh ’819 and Andrews.
`
`VII. PETITIONER DID NOT SATISFY CLAIMS 9 AND 15
`Claims 9 and 15 recite a particular structure of a first notch, a slanted
`
`portion, a second notch, and a platform located on a substrate. Petitioner arrives at
`
`claims 9 and 15 using only hindsight. The structure asserted to have been obvious
`
`(reproduced below from Pet., 77), is found neither in Loh ’819 or in Andrews:
`
`
`
`That Loh ’819 does not have two notches or that Andrews does not have
`
`square notches is secondary to the point that none of Loh ’842, Loh ’819, or
`
`Andrews suggests the modification Petitioner proposes. In Reply, Petitioner
`
`contends it would have been obvious to try various double-notch combinations.
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`Reply at 22, 28. But that does not provide a motivation allowing a POSITA to
`
`arrive at the particular structure recited in claim 9.
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`As recounted in Patent Owner’s Response, there is no legitimate reason to
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`modify Loh ’842 or Loh ’819 to arrive at the structure claimed. Response at 31-
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`34, 54-57. For example, Loh ’819 discloses a single, square notch, and Petitioner’s
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`-19-
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`IPR2018-00966 Patent Owner’s Sur-Reply
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`declarant could not find a reason to use two notches in Loh ’819. Nevertheless,
`
`Petitioner asks a POSITA to look at Andrews, which discloses multiple, slanted
`
`notches. But then Petitioner
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