throbber
Inter Partes Review
`United States Patent No. 8,530,250
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`United States Patent No.: 8,530,250
`Inventors: Hirofumi Ichikawa,
`Masaki Hayashi, Shimpei Sasaoka,
`Tomohide Miki
`Formerly Application No.: 12/737,940
`Issue Date: September 10, 2013
`PCT Filing Date: August 27, 2009
`§ 371(c)(1), (2), (4) Date: May 13, 2011
`Former Group Art Unit: 2895
`Former Examiner: Caridad Everhart
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`Attorney Docket No.:
`112868-0001-655
`
`Customer No.: 28120
`
`Petitioner: VIZIO, Inc.
`
`LIGHT EMITTING DEVICE, RESIN PACKAGE, RESIN-MOLDED
`For:
`BODY, AND METHODS FOR MANUFACTURING LIGHT EMITTING
`DEVICE, RESIN PACKAGE AND RESIN-MOLDED BODY
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`
`PETITION FOR INTER PARTES REVIEW OF
`UNITED STATES PATENT NO. 8,530,250
`
`

`

`Inter Partes Review
`United States Patent No. 8,530,250
`TABLE OF CONTENTS
`I.
`Introduction ...................................................................................................... 1
`II. Mandatory Notices (§ 42.8) ............................................................................. 6
`III.
`Standing (§ 42.104(a)) ..................................................................................... 8
`IV. Grounds (§§ 42.22 and 42.104(b)) .................................................................. 8
`V.
`’250 Overview ............................................................................................... 10
`A.
`’250 ...................................................................................................... 10
`B.
`’250 Prosecution History ..................................................................... 15
`VI. Detailed Reasons for Relief ........................................................................... 17
`A.
`Claim Construction ............................................................................. 17
`B.
`Level of Ordinary Skill ....................................................................... 20
`C.
`Claims 1, 7, 17, 19 and 21 are obvious under § 103 over Koung,
`Urasaki, Oshio, and/or Suenaga (Grounds 1-6) .................................. 21
`U.S. Patent Publication No. 2008/0261339 (“Koung”) ............ 21
`
`Japanese Patent Publication No. JP2007-235085 (“Urasaki”) 27
`
`U.S. Patent Publication No. 2005/0280017 (“Oshio”) ............. 29
`
`Japanese Patent Publication No. JP2001-036154 (“Suenaga”) 31
`
` Motivation to Combine Koung with Urasaki ........................... 32
` Motivation to Combine Koung with Oshio .............................. 36
` Motivation to Combine Koung with Suenaga .......................... 39
`Claim Charts for Grounds 1-6 (see also Ex. 1103 ¶¶ 70-104) . 40
`
`VII. Conclusion ..................................................................................................... 65
`
`
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`Inter Partes Review
`United States Patent No. 8,530,250
`LIST OF EXHIBITS
`
`Description
`Exhibit
`Ex. 1101 U.S. Patent No. 8,530,250
`Ex. 1102 U.S. Patent No. 8,530,250 File History
`Ex. 1103 Declaration of Dr. Stanley R. Shanfield
`Ex. 1104
`Japanese Patent Publication No. JP2006-093697 (“Park ’697”) with
`Certified English Translation
`Ex. 1105 U.S. Patent Publication No. 2008/0261339 (“Koung”)
`Ex. 1106
`PCT Patent Publication No. WO2007/055486 (“Park ’486”)
`Ex. 1107
`Japanese Patent Publication No. JP2007-235085 (“Urasaki”) with
`Certified English Translation
`Ex. 1108 U.S. Patent Publication No. 2005/0280017 (“Oshio”)
`Ex. 1109
`Japanese Patent Publication No. JP2001-036154 (“Suenaga”) with
`Certified English Translation
`Japanese Patent Publication No. JP2006-156704 (“Kuramoto”) with
`Certified English Translation
`Ex. 1111 U.S. Patent Publication No. 2008/0073662 (“Wang”)
`Ex. 1112 U.S. Patent Publication No. 2005/0151149 (“Chia”)
`Ex. 1113
`Nichia Corp. v. Everlight Elecs. Co., No. 2:13-cv-702-JRG, D.I.79,
`Claim Construction Memorandum Opinion and Order (E.D. Tex.
`Dec. 12, 2014).
`Nichia Corp. v. Everlight Ams., Inc., Nos. 2016-1585, 2016-1618,
`D.I.52, Opinion and Judgment (Fed. Cir. Apr. 28, 2017).
`Ex. 1115 Declaration of Mary Oros in Support of Petition for Inter Partes
`Review of U.S. Patent No. 8,530,250
`
`Ex. 1110
`
`Ex. 1114
`
`
`
`ii
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`

`

`Inter Partes Review
`United States Patent No. 8,530,250
`
`Pursuant to §§ 311-319 and § 42,1 VIZIO, Inc. (“Petitioner”) petitions for
`
`IPR of Claims 1, 7, 17, 19, 21 (“Claims”) of U.S. Patent No. 8,530,250 (“’250”),
`
`assigned to Nichia Corporation (“Patent Owner”/“PO”) according to USPTO
`
`records. Petitioner asserts there is a reasonable likelihood at least one Claim is
`
`unpatentable for the reasons herein and requests review of, and judgment against,
`
`them as unpatentable under § 103.
`
`I.
`
`INTRODUCTION
`The supposed “invention” in each Claim was well-known and obvious prior
`
`to the claimed September 2008 priority date. All elements of the Claims were
`
`disclosed in the prior art, and their combination, as claimed, was at most an
`
`obvious implementation choice.
`
`’250 itself discloses it was known and conventional to manufacture a light
`
`emitting device (LED) by transfer-molding a light-reflecting thermosetting resin
`
`(using upper and lower molds) to form a resin-molded body in a lead frame. Ex.
`
`1101, 2:13-43, Figs. 18, 19. Additionally, ’250 describes it was conventional to
`
`manufacture multiple LEDs at a time and to “singulate” the individual LEDs. Ex.
`
`1101, 1:36-2:29, Figs. 14-19. ’250 explains that while these claimed limitations
`
`
`1 Section cites are to 35 U.S.C. or 37 C.F.R. as context indicates, and all
`
`emphasis/annotations added and internal quotations/citations omitted unless noted.
`
`1
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`

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`Inter Partes Review
`United States Patent No. 8,530,250
`were known in the art, it sought to solve the problem of “a lead frame and
`
`thermosetting resin composition…likely [being] detached upon singulation.” Ex.
`
`1101, 2:30-35. ’250 therefore discloses providing a lead frame with a notch,
`
`transfer-molding a thermosetting resin to form a resin-molded body in the lead
`
`frame, and cutting the resin-molded body and lead frame along the notch. Id., 3:1-
`
`8. ’250 describes that with this configuration “an adhering area between the lead
`
`frame and the thermosetting resin becomes large…to improve adhesion between
`
`the lead frame and the thermosetting resin.” Id., 3:8-12. But as the Examiner
`
`confirmed during prosecution, such a configuration was already known in the art
`
`before the claimed priority date. Ex. 1102, 189, 488-489 (citing U.S. Patent Pub.
`
`No. 2007/0138697 to Takeda); see also Ex. 1104, Abstract, ¶¶ 11-13, Figs. 1a-1c,
`
`5-7; Ex. 1106, Abstract, 1:7-8, 5:2-6, 12:11-15, 13:4-11, 15:12-16, 17:17-20, Figs.
`
`6-12; Ex. 1105, Abstract, ¶¶ 2, 18-26, Figs. 2a-2d. Thus, to distinguish the prior
`
`art and secure allowance, Applicants amended the Claims to recite “plating the
`
`lead frame” before transfer-molding, “wherein the plated lead frame is cut so as to
`
`form an unplated outer side surface on the lead.” Ex. 1102, 656. But as discussed
`
`herein, it was already well-known in the art prior to the claimed priority date to
`
`plate a lead frame prior to cutting such that cutting results in an unplated outer side
`
`surface of the lead. See Ex. 1108 ¶ 114; Ex. 1104 ¶¶ 1, 12, Figs. 1a, 1c, 3a, 3c, 4a,
`
`2
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`

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`Inter Partes Review
`United States Patent No. 8,530,250
`4c; Ex. 1105 ¶¶ 19-26, Figs. 2b, 2c, 3a, 3b, 4b-4f; Ex. 1106, 12:12-15, 13:6-11,
`
`15:12-16, 16:10-16.
`
`As explained herein, each element in the Claims was well-known before the
`
`claimed priority date of ’250. Indeed, light emitting devices (LEDs), and methods
`
`of manufacturing LEDs, were well-known long before the claimed priority date of
`
`the ’250 patent. E.g., Ex. 1104 ¶ 12; Ex. 1105 ¶ 2; Ex. 1106, 5:7-8; Ex. 1108 ¶ 2;
`
`Ex. 1107 ¶ 1; Ex. 1110 ¶ 1; Ex. 1111 ¶ 2. It was further well-known to, e.g.,
`
`• use a lead frame with notches in manufacturing an LED package (e.g.,
`
`Ex. 1104 ¶ 13, Fig. 5; Ex. 1105 ¶ 2, Figs. 2b, 4b; Ex. 1106, 6:2-14,
`
`17:17-20, Figs. 6-7; Ex. 1108 ¶¶ 85-87, Figs. 11, 12);
`
`• plate a lead frame and plate all surfaces of a lead frame (e.g., Ex. 1104
`
`¶¶ 1, 12; Ex. 1105 ¶ 26; Ex. 1108 ¶¶ 69, 114, Fig. 4; Ex. 1111 ¶¶ 9,
`
`13, 39, 41, 53-54; Figs. 2-5) to e.g., “increase the light
`
`reflectance…and the bonding strength of solder” (Ex. 1108 ¶ 69);
`
`• form a resin-molded body on a plated lead frame by performing
`
`molding after plating (e.g., Ex. 1104 ¶ 12; Ex. 1106, 6:1-17, 12:11-
`
`13:11; Ex. 1105 ¶¶ 19-26; Ex. 1108 ¶¶ 71, 49, Figs. 1-3, 13);
`
`• form a resin-molded body by transfer-molding a thermosetting resin
`
`containing a light reflecting material (e.g., Ex. 1104 ¶¶ 13, 1, 12,
`
`Abstract, Figs. 1-7; Ex. 1107 ¶¶ 21, 24, 25; Ex. 1110 ¶¶ 38-40, 48, 49,
`
`3
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`Inter Partes Review
`United States Patent No. 8,530,250
`50), as it was known that transfer-molding allows molding of complex
`
`shapes including parts with recesses and further known that using
`
`thermosetting resin reduces deterioration and extends the life of an
`
`LED (Ex. 1110 ¶ 38-39);
`
`• perform transfer-molding using an upper mold on a first surface of the
`
`lead frame and a lower mold on a second surface of the lead frame
`
`(e.g., Ex. 1107 ¶¶ 24, 34, Figs. 1-2; Ex. 1110 ¶¶ 48, 120-128, Fig. 10;
`
`Ex. 1101, 2:16-29, Fig. 19);
`
`• form a plurality of concave portions (corresponding to convex
`
`portions of an upper mold) in a resin-molded body, where each of the
`
`concave portions has an inner bottom surface at which a portion of the
`
`lead frame is exposed (e.g., Ex. 1107 ¶¶ 11, 37, 24, Fig. 1; Ex. 1104 ¶
`
`13, Figs. 1c, 7; Ex. 1105 ¶ 21, Figs. 4c-4f);
`
`• cut a resin-molded body and a lead frame along a notch such that an
`
`outer surface of the resin part and an outer surface of a lead frame are
`
`planar at an outer side surface of the resin package (e.g., Ex. 1104 ¶¶
`
`1, 12-13, 24, Figs. 1a, 3a, 4a, 5-7; Ex. 1105 ¶¶ 8, 18, 24, Figs. 2b, 2c,
`
`3a, 3b, 4b-4f; Ex. 1106, 13:1-11, 15:12-16, 16:10-18, 17:17-20, Figs.
`
`5-7, 11, 12);
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`4
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`Inter Partes Review
`United States Patent No. 8,530,250
`• cut a plated lead frame, wherein the cut side of the lead is unplated
`
`(e.g., Ex. 1108 ¶ 114; Ex. 1104 ¶¶ 1, 12, Figs. 1a, 1c, 3a, 3c, 4a, 4c;
`
`Ex. 1105 ¶¶ 19-26, Figs. 2b, 2c, 3a, 3b, 4b-4f; Ex. 1106, 12:12-15,
`
`13:6-11, 15:12-16, 16:10-16);
`
`• include a step on a bottom surface or outer surface of a lead (e.g., Ex.
`
`1104, Figs. 1a-1b; Ex. 1105 ¶ 33, Figs. 2A-2B; Ex. 1106, Figs. 11-13;
`
`Ex. 1109 ¶ 45, Fig. 12);
`
`• use a lead having two or more different levels (e.g., Ex. 1104, Fig. 1b;
`
`Ex. 1105 ¶ 20, Figs. 2a; Ex. 1108 ¶ 52, Figs. 1, 4; Ex. 1109 ¶ 45, Fig.
`
`12);
`
`• provide a light emitting element in a concave portion of the resin
`
`package (e.g., Ex. 1104 ¶¶ 12-13, Figs. 1a-c, 2a-b, 3a-c, 4a-c; Ex.
`
`1105 ¶ 18, Fig. 2a; Ex. 1106, 12:16-13:10, Fig. 10; Ex. 1107 ¶ 11; Ex.
`
`1108 ¶¶ 61-63, Figs. 1-2); and
`
`• dispose a portion of the resin part over a portion of the plating on the
`
`upper surface of a lead (e.g., Ex. 1104 ¶¶ 1, 12, Figs. 1a-c; Ex. 1105
`
`¶¶ 26, 20, 21, Figs. 2a, 2d; Ex. 1108 ¶¶ 49, 69, Figs. 1-4, 11-14). See
`
`also Ex. 1103 ¶¶ 21-32.
`
`Each element of the Claims was disclosed in the prior art, and the Claims are,
`
`at most, nothing more than a routine, predictable combination of these well-known
`
`5
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`Inter Partes Review
`United States Patent No. 8,530,250
`elements. Petitioner requests the Board institute trial and find each Claim
`
`unpatentable under § 103.
`
`II. MANDATORY NOTICES (§ 42.8)
`Petitioner and Real Parties in Interest: VIZIO, Inc. is the sole petitioner.
`
`Under § 42.8(b)(1), the real party-in-interest is VIZIO, Inc.
`
`Related Matters Under Rule § 42.8(b)(2): PO asserted claims 1, 7, 17, 19,
`
`and 21 of ’250 against Petitioner in Nichia Corp. v. VIZIO, Inc., No. 2:16-cv-246
`
`(E.D. Tex.), consolidated with Nos. 2:16-cv-615-JRG (lead), 2:16-cv-613-JRG,
`
`2:16-cv-616-JRG, 2:16-cv-875-JRG (in which PO asserted ’250 against other
`
`defendants). PO also asserted ’250 in Nichia Corp. v. Everlight Elecs. Co., Ltd. et
`
`al., No. 2:13-cv-702-JRG (E.D. Tex.); Appeal Nos. 16-1585, 16-1618 (Fed. Cir.).
`
`VIZIO has also contemporaneously filed another petition for IPR, which
`
`relies on a different primary reference (Park ’697) and raises different theories as
`
`to the obviousness of the Claims.2 For example, as discussed herein (§ VI.C),
`
`Koung discloses providing a lead frame with notches, plating the lead frame,
`
`
`2 The Director, pursuant to § 315(d), may determine after institution that
`
`consolidation of this proceeding with the other petition for IPR of ’250 may be
`
`appropriate, or may at minimum decide to coordinate the schedules of the
`
`proceedings.
`
`6
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`

`

`Inter Partes Review
`United States Patent No. 8,530,250
`molding a resin on the lead frame, and cutting along notches in the lead frame to
`
`form a resin package, and a POSITA would have been motivated to transfer-mold
`
`a thermosetting resin to form a resin-molded body (as taught by Urasaki) in
`
`implementing the molding step taught by Koung—while as discussed in the other
`
`petition, the Claims would have been obvious to a POSITA over Park ’697 alone,
`
`which discloses providing a lead frame with notches, plating the lead frame,
`
`transfer-molding a thermosetting resin on the lead frame, and cutting along a notch
`
`to form a resin package, and alternatively, would have been obvious over Park
`
`’697 and Park ’486 (which expressly teaches cutting along notches in the lead
`
`frame). Petitioner further notes that while Koung (relied on in this petition) is §
`
`102(e) art, all of the references relied on in the other Petition (Park ’697, Park
`
`’486, Urasaki, and Oshio) are § 102(b) art. Thus, to the extent Patent Owner
`
`attempts to antedate Koung by asserting an earlier invention date, Petitioner
`
`respectfully requests that that the Board also institute trial for the petition based on
`
`the Park ’697 reference. See, e.g., Marvell Semiconductor, Inc. v. Intellectual
`
`Ventures I LLC, IPR2014-00553, slip op. at 2, 7 (PTAB Feb. 20, 2015) (Paper 19)
`
`(on rehearing, instituting trial on IPR previously denied as cumulative, after patent
`
`owner challenged prior art status of reference relied on in the instituted petition).
`
`In view of the different theories of obviousness raised in each petition, Petitioner
`
`respectfully requests institution on the grounds set forth in both petitions.
`
`7
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`

`

`Inter Partes Review
`United States Patent No. 8,530,250
`Lead and Back-Up Counsel and Service Information Under §§
`
`42.8(b)(3)-(4): Lead: Gabrielle E. Higgins (Reg. No. 38,916, ROPES & GRAY
`
`LLP, 1900 University Avenue, 6th Floor, East Palo Alto, CA 94303, P:650-617-
`
`4015/F:650-566-4131, gabrielle.higgins@ropesgray.com); Backup: Kathryn N.S.
`
`Hong (Reg. No. 63,693, ROPES & GRAY LLP, P:650-617-4006/F:650-566-
`
`4124). Mailing address for all PTAB correspondence: ROPES & GRAY LLP,
`
`IPRM–Floor 43, Prudential Tower, 800 Boylston Street, Boston, MA 02199-3600.
`
`III. STANDING (§ 42.104(a))
`Petitioner certifies ’250 is eligible for, and Petitioner is not barred or
`
`estopped from requesting, IPR. Petitioner was served with a Complaint asserting
`
`infringement of ’250 on or after June 17, 2016. Neither Petitioner nor any other
`
`real party-in-interest or privy was served with a complaint before that date, or has
`
`initiated a civil action challenging the ’250’s validity.
`
`IV. GROUNDS (§§ 42.22 AND 42.104(b))
`Petitioner requests IPR of claims 1, 7, 17, 19, and 21. These claims are
`
`unpatentable under § 103 as follows (see also Ex. 1103 ¶¶ 53-54, 106-107):
`
`Ground
`
`Prior Art
`
`Basis
`
`Claims Challenged
`
`Ground 1 Koung and Urasaki
`
`Ground 2 Koung, Urasaki, and Oshio
`
`Ground 3 Koung
`
`103
`
`103
`
`103
`
`1 and 7
`
`1 and 7
`
`17, 19, and 21
`
`8
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`

`

`Ground
`
`Prior Art
`
`Ground 4 Koung and Oshio
`
`Ground 5 Koung and Suenaga
`
`Ground 6 Koung, Oshio, and Suenaga
`
`Inter Partes Review
`United States Patent No. 8,530,250
`Basis
`Claims Challenged
`
`103
`
`103
`
`103
`
`17, 19, and 21
`
`19
`
`19
`
`
`
`Koung and Oshio were never cited or considered by the Examiner during
`
`prosecution, and ’250 acknowledges Urasaki is prior art. Ex. 1101, 2:13-43
`
`(Urasaki is discussed as “Background Art,” referenced as “Patent Document 4” in
`
`’250); compare Ex. 1101, Fig. 19 with Ex. 1107, Fig. 1. Suenaga was cited by
`
`Applicants but not discussed by the Examiner during prosecution of ’250. See Ex.
`
`1102. Koung, Urasaki, Oshio, and Suenaga are analogous art to ’250—they are in
`
`the same field of endeavor relating to “semiconductor” technology, including
`
`manufacturing and packaging processes for a “light emitting device” and are
`
`reasonably pertinent to ’250’s purported problem of providing “[a] light emitting
`
`device using light emitting elements [that] is small, provides good power
`
`efficiency, and emits light of bright color” and “provid[ing] a simple and low-cost
`
`method for manufacturing, in a short time, multiple light emitting devices which
`
`has high adhesion between a lead frame and a thermosetting resin composition.”
`
`Ex. 1101, 1:17-35, 2:30-35, 2:49-53; Ex. 1105, Abstract, ¶¶ 2, 25, 28, 8; Ex. 1107,
`
`Abstract, ¶ 3, 8, 21-22; Ex. 1108 ¶ 82, Abstract, ¶¶ 2, 100-101, 113, Figs. 11-14,
`
`9
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`Inter Partes Review
`United States Patent No. 8,530,250
`18A-18B, ¶¶ 69, 77-78, 62-63, 81; Ex. 1109, Abstract, ¶¶ 6, 22; Ex. 1103 ¶¶ 60,
`
`63, 67, 69; §§ VI.C.1-4.
`
`§ VI.C.8 below provides charts specifying how the prior art renders the
`
`Claims obvious. In further support, the Declaration of technical expert, Dr. Stanley
`
`R. Shanfield, is attached (Ex. 1103). Ex. 1103 ¶¶ 1-111.
`
`V.
`
`’250 OVERVIEW
`A.
`’250
`’250 relates to semiconductor technology, including manufacturing and
`
`packaging processes for light emitting devices. E.g., Ex. 1101, 1:17-35; see
`
`generally Ex. 1103 ¶¶ 33-38. Such light emitting devices are used in, e.g., light
`
`equipment, displays, and general consumer light sources. E.g., id. ’250 states “[a]
`
`light emitting device using light emitting elements is small, provides good power
`
`efficiency, and emits light of bright color.” Ex. 1001, 1:25-27. ’250 further states
`
`it is an objective to “provide a simple and low-cost method for manufacturing, in a
`
`short time, multiple light emitting devices which has high adhesion between a lead
`
`frame and a thermosetting resin composition.” Id., 2:49-53. ’250 describes “[t]he
`
`method comprises: a step of sandwiching a lead frame provided with a notch part,
`
`by means of an upper mold and a lower mold; a step of transfer-molding a
`
`thermosetting resin containing a light reflecting material in a mold sandwiched by
`
`the upper mold and the lower mold to form a resin-molded body in the lead frame;
`
`10
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`

`Inter Partes Review
`United States Patent No. 8,530,250
`and a step of cutting the resin-molded body and the lead frame along the notch
`
`part.” Id., 3:1-9; see also, e.g., id., Abstract, 2:63-3:9, 4:25-36, 11:5-14.
`
`’250 describes a lead frame (shown in blue) can be made from “a metal plate
`
`of a flat plate shape” or “a metal plate in which differences in level or concavity
`
`and convexity are provided.” Id., 8:46-48, Fig. 7. The lead may include a step.
`
`Id., 4:18-20, 13:7-11, 14:37-45, 14:64-15:2, 15:36-45, 16:8-16, 16:46-50, Figs. 6,
`
`9-13. ’250 further states the lead frame can be formed by “punching or etching.”
`
`Id., 8:49-9:6. ’250 describes plating the lead frame before transfer-molding. Id.,
`
`9:22-28, 3:21-28, 11:62-67, 8:10-11, 17:36-18:22. ’250 further describes the lead
`
`frame includes “notch parts” (shown in red) that provide “positive and negative
`
`leads…when the resin-molded body is singulated” and reduce “the area for cutting
`
`the leads.” Id., 9:7-11, see also, e.g., id., 12:46-57, 9:9-20, Figs. 5, 7, 10. “[T]he
`
`notch parts…penetrate the lead frame” and “the notch parts are preferably formed
`
`vertically and horizontally or linearly in an oblique direction.” Id., 3:38-39, 9:11-
`
`20.
`
`11
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`Inter Partes Review
`United States Patent No. 8,530,250
`
`Id., Fig. 7.
`
`
`
`’250 further discloses using “an upper mold 61 and a lower mold 62” (lead
`
`frame is shown in blue and molds are shown in purple) and “transfer-molding a
`
`thermosetting resin 23 containing the light reflecting material 26…to form a resin-
`
`molded body 24 in the lead frame 21” (resin-molded body is shown in green). Id.,
`
`11:6-12, Fig. 4; see also, e.g., id., Abstract, 3:1-9, 4:25-36, 11:5-14, 12:7-20. The
`
`thermosetting resin contains a light reflecting material such as “titanium
`
`dioxide”/“titanium oxide.” Id., 8:15-23, 17:29-30. Convex parts of an upper mold
`
`form concave parts in the resin-molded body. E.g., id., 7:60-61, 5:7-9, Figs. 4, 5.
`
`As shown in orange, a “light emitting element 10 is placed on the lead frame 21 of
`
`the inner bottom surface 27a of the concave part 27.” Id., 12:27-29.
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`12
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`Inter Partes Review
`United States Patent No. 8,530,250
`
`Id., Fig. 4.
`
`
`
`After transfer-molding, ’250 describes “the resin-molded body 24 and lead
`
`frame 21 are cut along the notch parts 21a” (shown in red) to “singulate” the resin-
`
`molded body (shown in green) and lead frame (shown in blue) into individual
`
`packages. Id., 12:40-46; see also, e.g., id., Abstract, 2:63-3:9, 4:25-36, 11:5-14,
`
`12:40-49, Figs. 5-7, 10. Through the cutting step, “the resin-molded body 24 and
`
`lead frame 21 are in the substantially same plane.” Id., 12:47-49, 7:49-52. The
`
`notch parts provide for improved adhesion “between the lead frame 21 and resin-
`
`13
`
`

`

`Inter Partes Review
`United States Patent No. 8,530,250
`molded body 24.” Id., 12:51-57; see also, e.g., id. 3:8-12. ’250 also discloses that
`
`because the lead frame is plated before cutting, “plating processing is not applied
`
`to the cut parts of the leads.” Id., 17:47-18:22; see also, e.g., id., 17:36-42, 3:21-
`
`28.
`
`
`
`Id., Fig. 6.
`
`Independent claim 1 is directed to a method of manufacturing a light
`
`emitting device by providing a lead frame with a notch; plating the lead frame;
`
`providing an upper mold on a first surface of the plated lead frame and a lower
`
`mold on a second surface of the plated lead frame and transfer-molding a
`
`thermosetting resin containing a light reflecting material in a space between the
`
`upper and lower molds to form a resin-molded body; and cutting the resin-molded
`
`body and the plated lead frame along a notch such that an outer surface of the resin
`
`14
`
`

`

`Inter Partes Review
`United States Patent No. 8,530,250
`part and an outer surface of the lead are planar, and wherein the plated lead frame
`
`is cut so as to form an unplated outer side surface on the lead. Claim 7 (dependent
`
`on claim 1) is further directed to providing a light emitting element in a concave
`
`portion of the resin package and performing the transfer-molding step to form a
`
`plurality of concave portions corresponding to the convex portions of the upper
`
`mold, each of the concave portions comprising an inner bottom surface at which a
`
`portion of the lead frame is exposed.
`
`Independent claim 17 is directed to a resin package comprising a resin part
`
`and a lead, wherein an outer surface of the resin part and an outer surface of the
`
`lead are planar at an outer side surface of the resin package, wherein the lead is
`
`plated on an upper surface and a lower surface and an outer side surface of the lead
`
`is unplated, and a portion of the resin part is disposed over a portion of the plating
`
`on the upper surface of the lead. Claim 19 (dependent on claim 17) further claims
`
`that the lead comprises a step on a bottom or outer surface. Claim 21 (dependent
`
`on claim 17) claims that the lead comprises two or more different levels.
`
`B.
`’250 Prosecution History
`The application leading to ’250 was filed March 2, 2011 as U.S. Pat. App.
`
`No. 12/737,940 (“the ’940 application”), claiming priority to JP2008-225408, filed
`
`September 3, 2008. See generally Ex. 1103 ¶¶ 39-42. The Examiner rejected
`
`prosecution claims 1-9, 11-22, 24-27, 29, 31, and 33-38 as unpatentable over
`
`15
`
`

`

`Inter Partes Review
`United States Patent No. 8,530,250
`WO2008/059856 (“Kotani”) and U.S. Pat. Pub. No. 2007/0138697 (“Takeda”);
`
`claims 10, 28, 30, and 32 over Kotani, Takeda, and U.S. Pat. Pub. No.
`
`2005/0151149 (“Chia,” Ex.1112); and claim 23 over Kotani, Takeda, and U.S. Pat.
`
`Pub. No. 2002/0028525 (“Sakamoto”). Ex. 1102, 488-492. The Examiner found
`
`Kotani discloses a method of forming a light emitting device including providing a
`
`lead frame, providing an upper mold and a lower mold, and transfer-molding a
`
`light-reflecting material. Id., 488-489. The Examiner further found Takeda
`
`discloses a package for an electronic component with a lead frame, plating the lead
`
`frame before transfer-molding, providing notches in the lead frame, and cutting
`
`through the notch wherein an outer surface of the resin and the lead are coplanar.
`
`Id., 488-489. The Examiner further found Kotani in view of Takeda “discloses a
`
`lead part which is unplated on the outer surface of the package, which is implied
`
`by the plating taking place before the transfer molding, and the cutting of the lead
`
`exposes unplated portions.” Id., 489-490. The Examiner found it would have been
`
`obvious to “include a plurality of concave portions…because it is implied that Fig.
`
`2b and 2c of Kotani et al show only one portion of the substrate, [and] in
`
`production of semiconductor devices a plurality of devices such as shown by
`
`Takeda et al are produced on a substrate.” Id., 490. The Examiner found Chia
`
`discloses providing a “step on the bottom of the lead frame” and “the lead includes
`
`two different levels.” Id., 491.
`
`16
`
`

`

`Inter Partes Review
`United States Patent No. 8,530,250
`On February 28, 2013, Applicants submitted remarks and amended claim 1
`
`(now claim 1) to include the additional limitations of “plating the lead
`
`frame…wherein the plated lead frame is cut so as to form an unplated outer side
`
`surface on the lead.” Id., 656, 655-658. Regarding original claims 1 and 7 (now
`
`claims 1 and 17), Applicants acknowledged Takeda discloses plating before
`
`molding, but argued Takeda “does not suggest a method in which ‘the plated lead
`
`frame is cut so as to form an unplated outer side surface on the lead.’” Id., 664.
`
`On May 13, 2013, the claims were allowed. Id., 674-79.
`
`VI. DETAILED REASONS FOR RELIEF
`There is at least a reasonable likelihood Petitioner will prevail with respect
`
`to at least one of the Claims, § 314(a), as all are invalid under § 103.
`
`A. Claim Construction
`For purposes of this review, Petitioner construes the claims such that terms
`
`are given their broadest reasonable interpretation (“BRI”) in light of the
`
`specification. § 42.100(b). Under this standard, while an inventor may rebut that
`
`presumption by providing a definition of the term in the specification with
`
`reasonable clarity, deliberateness, and precision, claim terms are presumed to be
`
`given their ordinary and customary meaning as would be understood by one of
`
`ordinary skill in the art at the time of the invention. E.g., Vibrant Media, Inc. v.
`
`Gen. Elec. Co., IPR2013-00170, slip op. at 5 (PTAB July 29, 2013) (Paper 14).
`
`17
`
`

`

`Inter Partes Review
`United States Patent No. 8,530,250
`In court proceedings—Nichia Corp. v. Everlight Elecs. Co., No. 2:13-cv-
`
`702-JRG (E.D. Tex.) (“the Everlight litigation”)—to which VIZIO was not a party,
`
`the District Court issued a Claim Construction Order construing certain claim
`
`terms (Ex. 1113, 52-73) of ’250, and the Federal Circuit (Appeal Nos. 16-1585,
`
`16-1618) affirmed the construction of certain claim terms (Ex. 1114, 7-12). As
`
`explained, for purposes of this review, construction of the outer boundaries of
`
`these terms is unnecessary because the cited references and combinations disclose
`
`them under the constructions adopted by the District Court and under the
`
`constructions proposed by both Patent Owner and Everlight in the Everlight
`
`litigation. E.g., Ex. 1103 ¶ 45. Vivid Techs., Inc. v. Am. Sci. & Eng’g., Inc., 200 F.
`
`3d 795, 803 (Fed. Cir. 1999); IPR2015-01616, Pap. 10, 5.
`
`No construction is necessary for the following terms:
`
`Term
`
`Claims District Court
`Construction
`
`1
`
`A method of
`manufacturing
`a light emitting
`device, the
`method
`comprising:
`
`A light
`emitting device
`comprising:
`
`17
`
`The preamble is
`a claim
`limitation. Ex.
`1113, 52-55.
`
`Patent
`Owner’s
`Proposal
`Claim 1 is
`limited to a
`method for
`manufacturing
`a light emitting
`device.
`
`The preamble is
`a claim
`limitation. Ex.
`1113, 52-55.
`
`Claim 17 is
`limited to a
`light emitting
`device.
`
`18
`
`Everlight’s
`Proposal
`
`Plain and
`ordinary
`meaning. The
`preambles of
`claims 1 and 17
`are not claim
`limitations.
`Plain and
`ordinary
`meaning. The
`preambles of
`claims 1 and 17
`
`

`

`Term
`
`lead
`
`1, 7,
`17, 19,
`21
`
`17
`
`a portion of the
`resin part is
`disposed over a
`portion of the
`plating on the
`upper surface
`of the at least
`one lead
`
`notch
`
`1
`
`planar
`
`1, 17
`
`19
`
`the at least one
`lead comprises
`a step on a
`bottom surface
`or outer surface
`thereof
`
`Claims District Court
`Construction
`
`Inter Partes Review
`United States Patent No. 8,530,250
`Patent
`Everlight’s
`Owner’s
`Proposal
`Proposal
`
`are not claim
`limitations.
`the conductive
`portion of the
`device that
`makes an
`electrical
`connection to a
`structure outside
`of the device
`Plain and
`ordinary
`meaning. No
`construction
`necessary
`
`
`a cavity that
`penetrates the
`lead frame and
`that will be filled
`with resin
`no measurable
`surface variation
`
`Plain and
`ordinary
`meaning. No
`construction
`necessary.
`
`lead for a light
`emitting device
`
`the resin part
`covers
`partially, but
`not completely,
`the plating on
`the upper
`surface of the
`at least one
`lead
`opening
`
`[formed] in
`substantially
`the same plane
`
`the at least one
`lead has an
`indentation
`formed on an
`exposed
`portion of a
`bottom surface
`or outer surface
`
`The portion of
`the device that
`conducts
`electricity. Ex.
`1113, 55-57; Ex.
`1114, 8-9.
`
`A portion of the
`resin part is
`located over a
`portion of the
`plating on the
`upper surface of
`the at least one
`lead. Ex. 1113,
`62-64.
`An opening that
`penetrates the
`lead frame. Ex.
`1113, 64-67.
`
`In a substantially
`same plane. Ex.
`1113, 69-72; Ex.
`1114, 9-11.
`Plain and
`ordinary
`meaning. Ex.
`1113, 61-62.
`
`19
`
`

`

`Term
`
`Claims District Court
`Construction
`
`Inter Partes Review
`United States Patent No. 8,530,250
`Patent
`Everlight’s
`Owner’s
`Proposal
`Proposal
`of the lead
`
`For the remaining terms proposed for construction in the Everlight litigation,
`
`(see Ex. 1113, 52-73), construction of the outer boundaries of these terms is
`
`likewise unnecessary for purposes of this review, because the prior art discloses
`
`those limitations under the constructions proposed by both Patent Owner and
`
`Everlight. E.g., Ex. 1103 ¶ 46. For purposes of this review, Petitioner interprets
`
`all terms according to their plain and ordinary meaning under the required BRI
`
`consistent with the specification. Id. ¶¶ 43-47. Because the standard for claim
`
`construction for unexpired patents at the PTO is different from that used in
`
`litigation, see In re Cuozzo Speed Techs., LLC, 136 S. Ct. 2131, 2146 (2016);
`
`MPEP § 2111, Petitioner expressly reserves the right to argue in litigation a
`
`different claim construction for any term, as appropriate to that proceeding and to
`
`assert that the claims are invalid for reasons other than prior art, including under §§
`
`101 and/or 112.
`
`B.
`Level of Ordinary Skill
`A person of ordinary skill in the art (“POSITA”) on or before September 3,
`
`2008, would have a minimum of a Bachelor’s degree in Physics, Electrical
`
`Engineering, Material Science, or a related field, and approximately 5 years of
`
`professional experience in the field of semiconductor technology, including
`
`20
`
`

`

`Inter Partes Review
`United States Patent No. 8,530,250
`manufacturing and packaging processes for light emitting devices. Ex. 1103 ¶¶ 16-
`
`18. Additional graduate education could substitute for professional experience, or
`
`significant experience in the field could substitute for formal education. A
`
`POSITA is presumed t

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