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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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`VIZIO, INC.,
`Petitioner,
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`v.
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`NICHIA CORPORATION,
`Patent Owner.
`____________
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`IPR 2017-01608
`IPR 2017-01623
`Patent 8,530,250 B2
`____________
`
`Record of Oral Hearing
`Held: October 4, 2018
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`Before BRIAN J. MCNAMARA, STACEY G. WHITE (via video), and
`BRENT M. DOUGAL (via video), Administrative Patent Judges.
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`IPR 2017-01608
`IPR 2017-01623
`Patent 8,530,250 B2
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`GABRIELLE E. HIGGINS, ESQUIRE
`JAMES L. DAVIS, ESQUIRE
`CHRISTOPHER M. BONNY, ESQUIRE
`ALLEN CROSS, ESQUIRE
`Ropes & Gray LLP
`1900 University Avenue
`6th Floor
`Palo Alto, CA 94303
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`ON BEHALF OF THE PATENT OWNER:
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`MARTIN M. ZOLTICK, ESQUIRE
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`ROBERT PARKER, ESQUIRE
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`
`Rothwell Figg
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`607 14th Street, N.W.
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`Suite 800
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`Washington, D.C. 20005
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`The above-entitled matter came on for hearing on Thursday, October
`4, 2018, commencing at 1:30 p.m., at the U.S. Patent and Trademark Office,
`600 Dulany Street, Alexandria, Virginia.
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`IPR 2017-01608
`IPR 2017-01623
`Patent 8,530,250 B2
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`P R O C E E D I N G S
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`THE CLERK: All rise.
`JUDGE MCNAMARA: Please be seated. Good afternoon,
`everybody.
`VOICES: Good afternoon, Your Honor.
`JUDGE MCNAMARA: That was very good. I wasn’t waiting
`for that, actually. I was waiting for the monitors to come on. But I
`appreciate that. One more time --
`(Laughter.)
`JUDGE MCNAMARA: Okay. This is going to be the oral
`hearing in two cases. It’s a consolidated hearing, IPR 2017-01608 and IPR
`2017-01623. Beginning with the Petitioner, could we have counsel
`introduce yourselves, please?
`MS. HIGGINS: Good afternoon, Your Honors. Gabrielle
`Higgins. With me is Jim Davis and Chris Bonny and Allen Cross, all of
`Ropes & Gray, on behalf of Petitioner Vizio, Inc.
`JUDGE MCNAMARA: Thank you. And Patent Owner?
`MR. ZOLTICK: Yes, good afternoon, Your Honors. On behalf
`of Patent Owner Nichia, Marty Zoltick, my colleague Robert Parker, on
`behalf of Nichia.
`JUDGE MCNAMARA: Great. Well thank you. Welcome to
`the Patent Trial and Appeal Board. Just a couple of preliminaries. As I
`understand it, the parties have agreed they’re going to just go through the
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`Patent 8,530,250 B2
`two of the cases together and so each side will have 75 minutes total
`argument time. We’ll hear from the Petitioner first present your case on
`your case in chief. You can reserve as much as half of your time for
`rebuttal, but no more than that. And then we’ll hear from the Patent Owner
`in opposition to the Petitioner’s case. And then the Petitioner can then use
`any time it used for rebuttal. And then we’ll have, we have a short rebuttal
`from the Patent Owner. This is the way we’re doing it now. And so let me
`know how much time you want to reserve for that if you want to do that.
`There’s been no requests for live testimony. The hearing is
`going to be open to the public. It’s not confidential. We did have a pre-
`hearing conference. And could one of you tell me, maybe Petitioner, did we
`have a court reporter on the line for that pre-hearing conference?
`MS. HIGGINS: Yes, we did, Your Honor. And there was a
`transcript. I don’t believe we filed it yet.
`MR. ZOLTICK: Yeah, we have the, there were some
`corrections that needed to be made. They have been made. And we have
`the final transcript and I have some notices and we’ll file it tomorrow.
`JUDGE MCNAMARA: Great. That’s fine. I think I forgot to
`ask you to file it. That’s why I was, that’s why I brought it up. So --
`MR. ZOLTICK: Yes.
`JUDGE MCNAMARA: Other than that, I think we are all ready
`to go. So we’ll proceed with the Petitioner first.
`MS. HIGGINS: Your Honor --
`JUDGE MCNAMARA: Oh, by the way, we have Judges
`Dougal and White participating remotely. And because of that I want to
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`Patent 8,530,250 B2
`make sure that whenever you are referring to an exhibit, that you identify the
`exhibit you are referring to so that the remote judges will get, will pull it up
`and have it in front of them.
`MS. HIGGINS: Your Honor, may I approach the bench --
`JUDGE MCNAMARA: Please.
`MS. HIGGINS: -- with a copy of the slides?
`JUDGE MCNAMARA: Sure. Does the court reporter have a
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`copy?
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`MS. HIGGINS: Yes, sir.
`JUDGE MCNAMARA: Yes, Your Honor.
`JUDGE MCNAMARA: Great. Thank you.
`MS. HIGGINS: So Your Honors, before we get started with the
`Board’s permission, I will address the Park grounds in the 1608 proceeding.
`My colleague Mr. Davis will address the Koung grounds and other issues in
`the 1623 proceeding. And then our colleague Mr. Bonny will address the
`secondary considerations issues that are common to both proceedings. Is
`that acceptable, Your Honor?
`JUDGE MCNAMARA: Oh that’s fine, sure. And how much
`time do you want to reserve?
`MS. HIGGINS: Twenty-five minutes, please.
`JUDGE MCNAMARA: Okay. So that means we’ll have 50
`minutes to begin.
`MS. HIGGINS: And can we please turn to Slide 4? So starting
`out with the 1608 proceeding, with respect to this IPR the challenged claims
`are unpatentable as obvious over the Park grounds. There are two main
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`IPR 2017-01623
`Patent 8,530,250 B2
`issues in dispute. First, the molding and cutting limitations of Claim 1 are
`obvious in view of Park 697 and Park 697 in view of Park 486. Second, the
`plating limitations of Claim 17 are obvious over Park 697 and Park 697 in
`view of Oshio.
`Now in view of some of the Board’s questionings at the pre-
`hearing conference, as I walk through the disputed limitations, I will explain
`that the outcome of the proceeding is not impacted by Patent Owner’s
`translation issue because one, it would have been obvious and a beneficial
`design choice to plat all surfaces of the leadframe; and two, a person of
`ordinary skill in the art would have been motivated to combine Oshio’s
`teaching of plating all surfaces of the leadframe in implementing Park 697.
`Turn to the next Slide 5, please. Now I’ll first address the
`molding and cutting limitations of Claim 1, which are the only limitations
`that Patent Owner disputes for Claim 1. First, with respect to Element 1-C,
`Park 697 renders obvious transfer molding a thermosetting resin to form a
`resin molded body. For example, Park 697 Paragraph 12 expressly discloses
`forming a transfer mold type reflector with a white thermosetting resin. And
`as we can see on the slide on the right, Figure 7 shows a resin molded body
`colored in green formed on the leadframe by transfer molding a
`thermosetting resin.
`Slide 6, please. As Dr. Shanfield explained, it would have been
`obvious and a straightforward and beneficial design choice to transfer mold
`a thermosetting resin to form a resin molded body. It was well known to
`transfer mold a thermosetting resin to form a resin molded body and in fact
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`Patent 8,530,250 B2
`the 250 Patent itself, Column 2, admits that it was conventional, for example
`as taught by Urasaki.
`Slide 7, please. Now turning to Element 1-D, Park 697 renders
`obvious the cutting, the molding body and plated leadframe along the at least
`one notch to form a resin package. Park 697, Paragraph 12 expressly
`discloses performing a sawing process to individualize after the step of
`transfer molding.
`JUDGE MCNAMARA: Could you please explain to me this
`business about the notch? Because that appears to be a significant issue as
`to where the plating takes place. And so the notch, I want to make sure I
`understand what you are, envision the notch to be in the patent itself and in
`the reference.
`MS. HIGGINS: Sure. Absolutely, Your Honor. So let’s start
`with if we can turn to the next slide, Slide 8. And I’m going to start with
`Park 697. And I think as an initial matter before we get there, the term notch
`was initially construed in this proceeding -- and let me quickly bring that up.
`I think it was as an opening that penetrates the leadframe.
`JUDGE MCNAMARA: Mm-hmm.
`MS. HIGGINS: And consistent with that, we have on the left
`Figure 5 of the Park 697 reference. And we see that we have colored in red
`and labeled on the top and bottom, and let’s focus in on the horizontal line
`on the top, and the horizontal line on the bottom, that we have called the
`notch or notches. And consistent with the claim construction in Park 697,
`the notch is an opening in the leadframe and it also separates the anode and
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`the cathode consistent with the disclosure in the 250 Patent. Did you want
`more with respect to notch, Your Honor?
`JUDGE MCNAMARA: No, I just, I understand that’s how
`we’ve construed it. And I just, you just noted that it separates the anode and
`the cathode. Can the notch appear anywhere? I mean, that’s kind of
`required. Can it be anywhere on the leadframe? Because it’s construed to
`be just an opening in the leadframe.
`MS. HIGGINS: The notch can appear anywhere. But of course
`the claim also has a requirement that you are cutting the resin molded body
`and the leadframe along the at least one notch. So in terms of the claim
`language, Park has a notch and as Dr. Shanfield explained there’s a notch
`that penetrates through the leadframe. And he also testified that a person of
`ordinary skill in the art would have understood that when I cut along that
`notch horizontally that I am reducing the cutting area of the metal.
`JUDGE MCNAMARA: Okay. Thank you.
`MS. HIGGINS: You’re welcome, Your Honor. So let’s just
`continue, then, with respect to Slide 8. So we just talked about Figure 5.
`Then turning to Figure 7, the notch, Figure 7 then shows a subsequent step
`in the production process in which the resin, which has been colored in
`green, is filled over the notches and forms a resin molded body. Figure 1.A
`shows the simulated --
`JUDGE MCNAMARA: My apologies.
`MS. HIGGINS: No worries, Your Honor. Figure 1.A shows
`the singulated LED after the resin molded body and the plated leadframe are
`cut along the notch. And a person of ordinary skill would have understood
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`Patent 8,530,250 B2
`that to individualize the LED package by sawing as taught by Park 697, the
`resin molded body and the plated leadframe are cut along the notch to form a
`resin package.
`Now turning to Slide 10, Patent Owner argues that the LEDs in
`Park 697 are individually molded and the resin is not cut. But Figure 7 of
`Park shows that the resin extends beyond a single device and as Dr.
`Shanfield explained it’s clear from Figure 7 that the resin molded body
`extends beyond the tabs, indicated by wavy lines, and therefore beyond
`where the device is singulated. In fact, the tabs in Figure 7 we see on the
`outer left and right side of Figure 7 are sized for two LED chips per device,
`as shown in Figure 1.A. And this confirms that for the device shown in
`Figure 1.A the resin is cut during the process of sawing theindividualize or
`singulate.
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`Slide 11, please. Now Patent Owner argues that Park 697 does
`not disclose the molding and cutting limitation. But to make its arguments
`Patent Owner had to alter Park 697's figures, contradicting what Park
`actually discloses. We can see Dr. Schubert’s altered figures in the top row
`and they completely ignore and are inconsistent with Figure 7. The actual
`Park 697 figures are in the second row and they show that the resin in Figure
`7, that’s the figure in the middle, extends actually up and down beyond the
`lines drawn by Patent Owner. In the bottom row we see that Dr. Schubert
`has also changed the size of the outer leads in a way that’s inconsistent with
`the actual Figure 1.A.
`Turning to Slide 12, please.
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`JUDGE MCNAMARA: Okay. Let me just ask you a quick
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`question.
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`MS. HIGGINS: Sure.
`JUDGE MCNAMARA: On that figure we were just looking at
`on Slide 11?
`MS. HIGGINS: Yeah.
`JUDGE MCNAMARA: You said the resin extends beyond the
`lines drawn by Patent Owner. Which lines? I want to make sure I’ve got the
`right line.
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`MS. HIGGINS: Sure. So in the top row, Your Honor, the third
`diagram in --
`JUDGE MCNAMARA: Mm-hmm.
`MS. HIGGINS: -- Dr. Schubert has imposed his own dotted
`line across the top of the diagrams and the bottom of the diagrams.
`JUDGE MCNAMARA: And that’s the dotted line that you’ve
`got labeled, or that’s labeled cutting line does not cut through resin? Is that
`the dotted line you’re talking about?
`MS. HIGGINS: That is the dotted line and that is Dr.
`Schubert’s argument --
`JUDGE MCNAMARA: Okay.
`MS. HIGGINS: -- on that. And basically what he did, Your
`Honor, is he took the Figure 1.A post-singulation, and he took that and then
`he superimposed it on leadframe, of the leadframe in Figure 5. And in doing
`so he completely ignored Figure 7, which we see from the actual Park
`figures actually extends and as Dr. Shanfield testified the wavy lines indicate
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`that you’re extending further. You’re continuing further. It’s conventional
`for showing that you’re continuing further in the up and down direction.
`Turning to Slide 12, please. In addition, Dr. Schubert’s
`proposed cutting lines, and I’m talking about that same line, red line, let’s
`take the line across the top. And you’ll notice that Dr. Schubert drew the
`line to avoid the notch. And in doing so, it’s illogical because that cutting
`line cuts through as much metal as possible and disadvantageously lowers
`cutting speeds, increases ware on the saw blade, and increased leadframe
`heating. Now contrary to Patent Owner’s argument, a person of ordinary
`skill in the art would have understood from the actual Park 697 figure that
`the notches are used for cutting and reduce the cutting area of the metal.
`And so therefore, Dr. Shanfield explained that a person of ordinary skill
`would have started his cut inside the indentation, not on the outside, not
`above it. Because actually where Dr. Schubert cuts, I’m going to get these,
`that little extra piece of metal at the top left there which is nowhere in the
`finished singulated device. But Dr. Shanfield explains that if I start at the
`indentation, and I follow horizontally across, I’m going to cut along the
`notch and I’m going to cut through the leadframe and through the resin
`molded body.
`Now turning to Slide 13, now --
`JUDGE MCNAMARA: Before you go on there, there was
`another element that was involved here, wasn’t there? There were the, as I,
`and I’m trying to remember this, but I think they are kind of shown in Slide
`12. Are they, are you only cutting -- okay. Now I get it. You’re cutting
`through the notch. I guess the other element, there was another element that
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`Patent 8,530,250 B2
`was put in there. And how is it that you’re not cutting through that other
`element? That’s what I’m trying to figure.
`MS. HIGGINS: Your Honor, maybe if we bring up Slide 13
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`real quick?
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`JUDGE MCNAMARA: Okay.
`MS. HIGGINS: And Your Honor, can you tell me what element
`you’re referring to?
`JUDGE MCNAMARA: No, maybe I’m just simply
`misremembering it. I’m looking, let’s go back and look at Slide 11.
`MS. HIGGINS: Okay.
`JUDGE MCNAMARA: On Figure 7, what is that dark element
`that’s below --
`MS. HIGGINS: Yes, Your Honor.
`JUDGE MCNAMARA: That’s the thing --
`MS. HIGGINS: Yes.
`JUDGE MCNAMARA: That’s the thing I’m talking about.
`MS. HIGGINS: Yes. Okay. So --
`JUDGE MCNAMARA: I just can’t remember the name of it.
`MS. HIGGINS: Absolutely. It’s an ESD --
`JUDGE MCNAMARA: Okay.
`MS. HIGGINS: -- device, electrostatic discharge --
`JUDGE MCNAMARA: Yes.
`MS. HIGGINS: -- protection device.
`JUDGE MCNAMARA: That’s right.
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`MS. HIGGINS: And what Park discloses, and it’s actually in
`the Board’s institution decision. What Park discloses his, and it’s actually
`sort of central to Park, is that I’m going to have my ESD protection device in
`the reflector cup and I’m going to put it on the leadframe underneath resin.
`And so let me find another example where we can see the -- so if you turn
`for instance to Figure 5, Slide 5, quickly, you can see that on the right hand
`side. We see a side view of Figure 7 and you can see it shows three ESD --
`JUDGE MCNAMARA: Yes.
`MS. HIGGINS: -- devices underneath the resin, on the surface
`of the device. And so if we go back to Slide 13, as Dr. Shanfield explained,
`a person of ordinary skill in the art would have understood that if you started
`on the left hand side inside the indentation then you cut horizontally across
`the notch, and we see that same indentation on Figure 7, now of course the
`notch is underneath the resin.
`JUDGE MCNAMARA: Right.
`MS. HIGGINS: And so I’m cutting straight across and I’m
`actually cutting in between the blue, the two blue things are the LED chips --
`JUDGE MCNAMARA: Right.
`MS. HIGGINS: -- with the three ESDs. And Dr. Shanfield
`explained you’d be cutting in between the LED chip and the ESD. You of
`course wouldn’t cut through it and destroy the ESD device. And then we see
`the singulated device on the left. And we can see the post-singulated device.
`You can still see in Figure 1.A the sort of corners of the indentations on each
`of the four corners where Figure 1.A was cut. And so Dr. Shanfield
`reviewed Park’s disclosure of the production process of Park 697 and he
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`studied the figures and then testified as to what a person of ordinary skill in
`the art would understand from the figures.
`JUDGE MCNAMARA: Okay. I appreciate that explanation.
`Because I just wanted to make sure you’re not actually cutting through the
`ESD.
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`MS. HIGGINS: No, Your Honor. We’re not proposing -- in
`fact, we say not to.
`JUDGE MCNAMARA: It would kind of defeat the purpose.
`MS. HIGGINS: Absolutely, Your Honor. I agree. So we’re on
`Slide 13, yes? So Patent Owner makes another argument. They argue that
`Figure 7 has no relationship to Figure 5. And we disagree that Figure 7 and
`Figure 5 are different embodiments. And because as we see they are
`showing, and in fact Paragraph 32 of Park expressly states that Figures 5
`through 7 are diagrams of the production process. And they are referring
`back to configuring the earlier described figures. And in fact, Paragraph 35
`of Park also expressly links Figure 7 to Figure 5. And so we disagree with
`any attempt by Patent Owner to simply ignore Figure 5 as if it’s not part of
`the process. It clearly is.
`You’ll also hear from Patent Owner that Dr. Shanfield refused
`to identify the cutting line on the leadframe. And this is simply not so.
`You’ll see in his declaration, it’s actually Paragraph 34 of his declaration, as
`well as testimony at Exhibit 2738, Page 43 Line 2 to Page 46 Line 5, Dr.
`Shanfield gave a detailed description in words of how he understood a
`person, how a person of ordinary skill in the art would understand the
`cutting to take place. It is true that at the deposition he didn’t feel
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`comfortable actually drawing on the figures. And he admittedly said that the
`figures are not exactly to scale.
`Turning to Slide 14, so now I’m turning to our alternative
`argument that to the extent further express disclosure of the cutting
`limitation is required, Park 486 discloses providing a leadframe with at least
`one notch and cutting the resin molded body and the plated leadframe along
`the notch to form a resin package. Indeed we can see both from the express
`language, we can see from the express language of Park 486 that the
`leadframe and the walls, that’s of the resin molded body, are sawed and they
`are sawed along cutting line C. And we can see in Figure 7, which is the
`plane view so I’m looking down at the device. First of all the black
`rectangular square, that is the resin molded body. In red we have the notch,
`the notches on the leadframe. And as described in Park 486, and the cutting
`lines are actually labeled on the figure. They are called in the patent cutting
`grooves 115. And so they are similar to the indentations that we see in Park
`697. Here we have cutting grooves 115 and we can see that we’re cutting
`along the notch, through the leadframe, and through the resin molded body.
`It’s shown and described in Park. And in fact, Patent Owner does not
`dispute these disclosures.
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`Slide 15, please. Now a person of ordinary skill in the art
`would have been motivated to apply Park 486's teaching in implementing
`Park 697. Park expressly teaches that cutting the resin molded body and the
`plated leadframe along the at least one notch advantageously improves the
`stability of the resin package around the leadframe. And we see language
`from Park 486 in the middle where Park states that the molds forming the
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`reflector 120, that’s the resin molded body, surrounds the leadframes such
`that the leadframes are stably supported. So we have express motivation
`directly within Park. And then in addition to that, a person of ordinary skill
`in the art would have also understood that cutting the resin molded body and
`the plated leadframe along the at least one notch advantageously reduces
`cutting area of the leads. And that thereby provides higher cutting speeds,
`extended cutting blade lifetime, reducing leadframe heating, and reducing
`resin cracking and delamination, as was known in the art.
`Next slide, please. Slide 16. Now Patent Owner argues that a
`person of ordinary skill would not have been motivated to use Park 486's
`teachings because Park 697 is a top view device and the Park 486 is a side
`view device. And Patent Owner argues there’s no need to thin any side
`walls. But as Dr. Shanfield explained, both references are in the same field
`of art and disclose notches that penetrate the leadframe. Park 486's express
`teaching of improved stability is present as well as the known benefits of
`reducing cutting area of the leads.
`Now turn to Slide 18. So Patent Owner argues that the
`motivation to combine with 486 is hindsight. We disagree. As I just
`explained, Patent Owner ignores that the benefit of improved stability
`around the leadframe is explicitly disclosed in Park. And in addition, Dr.
`Shanfield provided detailed analysis not found in the 250 Patent regarding
`the known benefits of reducing the cutting area of the leads. Exhibit 1053 at
`the bottom of the page, the Japanese publication, also expressly discloses the
`benefit of reducing metal area.
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`Now let’s turn to the plating limitations, Slide 19. So the
`plating limitations of Claim 17, with respect to them Park 697 renders
`obvious Elements 17.C and 17.E. There’s no dispute that Park 697 discloses
`plating the leadframe before transfer molding. As expressly stated in Park
`Paragraph 12, which describes the steps of the production process, plating
`occurs first and then transfer molding a thermosetting resin. There is no
`dispute as to when plating occurs. All of those Park translations agree that
`we have plating before transfer molding. The only dispute is where the
`leadframe is plated, i.e. all surfaces of the leadframe versus the ESD die pad
`portion of the leadframe. However, as set forth in the petition, it would have
`been obvious to a person of ordinary skill to plate all surfaces of the
`leadframe in implementing Park 697. As explained in the petition Slide 20,
`a person of ordinary skill would have recognized that at minimum it would
`have been obvious and a straightforward and beneficial design choice to
`plate all surfaces of the leadframe in implementing Park. And there’s no
`dispute that it was well known to plate all surfaces of the leadframe before
`the claimed priority date.
` Now turning to Slide 21, in Slide 21 we see that there are many
`benefits, many known benefits for plating all surfaces of the leadframe. The
`first two are express from the Oshio reference and by coating all surfaces of
`the leadframe as disclosed in Oshio, the benefits of increased reflectivity and
`solderability are provided where needed. And we see further benefits that
`have been outlined on Slide 21.
`Now turning to Slide 23, Patent Owner argues that spot plating
`was well known and preferred over plating the entire leadframe due to cost
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`and adhesion. But Patent Owner’s own Exhibit 2016 at 17 admits that
`changing from entire surface plating to partial plating results in cost
`increase. And silver plated leadframes can provide better adhesion than
`unplated leadframes due to oxidation of the unplated leadframe. And
`regardless, Patent Owner’s spot plating arguments merely concern a design
`choice between spot plating and plating all surfaces, which was indisputably
`a well-known design choice.
`The Federal Circuit, and I think the Board quoted language like
`this in their institution decision, has held that simultaneous advantages and
`disadvantages do not necessarily obviate motivation to combine. And so in
`view of the well-known benefits of plating the entire leadframe, and the
`finite number of options, plating Park’s entire leadframe would have been
`obvious.
`
`Now turning to Slide 25, and the alternative ground of Park 697
`in view of Oshio, to the extent further disclosure is required, Park 697 in
`view of Oshio renders obvious Elements 17.C and 17.E. Once again,
`Paragraph 12 discloses plating before transfer molding, and that’s not
`disputed. Oshio discloses plating all surfaces of the leadframe. We see a
`quote here from Oshio Paragraph 69, and Oshio expressly discloses a pair of
`leads, 20 and 30, and coating its surface by plating. Coating refers back to
`the entire leads and we can see this if we look in Figure 1 or Figure 4 in
`Park. We can see that leads 20 and 30 are the entire anode and cathode.
`And so when Oshio is referring to coating a pair of leads, it’s referring to
`coating all surfaces of the leads as opposed to specific regions. And Oshio
`also uses 20.A, 30.A, 30.B. But here it’s referring to the whole leads.
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`Turning to Slide 28. Now Patent Owner argues that Oshio is
`silent regarding plating the entirety of the leadframe. We disagree. As I just
`explained, Paragraph 69 supports that. In addition, Paragraph 114 also
`discloses that if the leadframe is plated with silver or the like, an unplated
`surface of the base material is disclosed at the cut section which may cause
`deterioration of solderability.
`Slide 24, please. Now Patent Owner sets forth a whole host of
`arguments regarding motivation to combine. They all fail. The first is that
`increased solderability and reflectivity does not relate to plating all surfaces.
`But it would have been obvious to plate everywhere, which would provide
`the benefits of plating where needed, as Dr. Shanfield explained.
`Next Dr. Schubert argued that a plating layer would reduce
`electrical resistance. But it actually directly contradicts Dr. Schubert’s
`acknowledgment that even spot plating reduces electrical resistance. Patent
`Owner argues that plating all surfaces would reduce adhesion. But it was
`actually preferable to plate all surfaces in order to prevent debonding failures
`caused by oxidation of bare copper. In fact, Patent Owner’s inventor, Mr.
`Miki, admits that plating of the leadframe prior to molding prevents
`deterioration of bonding property due to oxidation, thereby providing more
`reliable bonding. That’s Exhibit 2033, Paragraph 19. And finally, Patent
`Owner argues that plating all surfaces is more expensive. But Patent Owner
`admitted that spot plating increases costs.
`Now very quickly I’d like to turn to the translation issue,
`starting at Slide 30. So Petitioner maintains its position that Park discloses a
`silver plated leadframe. Independent certified translations obtained by both
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`parties, that’s the Geotext and TransPerfect translation on this page,
`confirmed that Park 697 discloses a silver plated leadframe. I bolded it.
`Slide 31. Patent Owner’s linguist confirmed that Translation A,
`that’s the one that says leadframe is silver plated, is the most natural and
`preferable interpretation because the modifier silver plated is closer in
`proximity to leadframe than the alternative die pad. So syntactically --
`JUDGE MCNAMARA: Excuse me.
`MS. HIGGINS: Yes?
`JUDGE MCNAMARA: Before we get into the linguistics of it,
`just so I don’t lose track, on Slide 30 there was a Geotext translation and a
`TransPerfect translation. Who got which translation?
`MS. HIGGINS: So Geotext’s translation, Exhibit 1004, Your
`Honor, is the independent translation that Petitioner got first.
`JUDGE MCNAMARA: Okay.
`MS. HIGGINS: The TransPerfect translation, Exhibit 2040,
`was procured by Patent Owner. We have a dispute over the timing of it. It
`was issued last. And everything else is Patent Owner argument.
`JUDGE MCNAMARA: When you say it was issued last, it was
`the last translation obtained?
`MS. HIGGINS: If you look at the date, if you look at the date
`on the translation, it’s dated last. And indeed we know from the record that
`the translator attended the deposition with Patent Owner’s counsel and then
`signed that declaration afterwards.
`JUDGE MCNAMARA: The translator that translated, that
`provided the TransPerfect translation?
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`MS. HIGGINS: Yes, Your Honor.
`JUDGE MCNAMARA: Okay.
`MS. HIGGINS: And then turning to Slide 33, because I want to
`leave time for my colleagues, Your Honor.
`JUDGE MCNAMARA: Absolutely, sure.
`MS. HIGGINS: So I just want to end with Slide 33, please. So
`on Slide 33, we see all three translations. And I’m told by my colleague that
`TransPerfect was the first Patent Owner translation. I may have misspoke.
`JUDGE MCNAMARA: Okay. I’m sure they will make sure
`I’ve got it right.
`MS. HIGGINS: Yes. I am sure they will. So the point I want
`to leave you with, Your Honor, is tha
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