Petition for Inter Partes Review
`U.S. Patent No. 8,530,250
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________
`
`LOWE’S COMPANIES, INC.,
`LOWE’S HOME CENTERS, LLC AND L G SOURCING, INC.,
`Petitioners
`
`v.
`
`NICHIA CORPORATION
`Patent Owner
`
`_____________________________
`
`U.S. Patent No.: 8,530,250
`Issue Date: September 10, 2013
`Title: Light Emitting Device, Resin Package, Resin-Molded
`Body, and Methods For Manufacturing Light Emitting
`Device, Resin Package and Resin-Molded Body
`Attorney Docket No.: 01320083.000011
`_____________________________
`
`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
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,530,250
`
`TABLE OF CONTENTS
`INTRODUCTION ............................................................................................... 1
`I.
`II. MANDATORY NOTICES (37 C.F.R. §42.8) ................................................... 1
`A. Real Parties-in-Interest Under 37 C.F.R. § 42.8(b)(1): ................................... 1
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2): ............................................... 1
`C. Lead and Back-Up Counsel Under 37 CFR § 42.8(b)(3) ................................ 4
`D. Service Information ......................................................................................... 4
`III. REQUIREMENTS FOR IPR UNDER 37 I.P.R. § 42.104 ................................ 4
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) ....................................... 4
`B. Challenge under 37 C.F.R. 42.104(b); Relief Requested ................................ 4
`C. Claim Construction under 37 C.F.R. § 42.104(b)(3) ....................................... 5
`D. Person of Ordinary Skill in the Art .................................................................. 6
`IV. Summary of the ’250 Patent ................................................................................ 7
`V. ’250 patent Prosecution History ........................................................................10
`VI. Detailed reasons for relief .................................................................................11
`A. Claims 1, 2, 7, 11, 12, 15, 17, 19 and 21 are obvious ...................................11
`1. U.S. Patent Publication No. 2008/0261339 (“Koung”) ...........................11
`2.
`Japanese Patent Publication No. JP2007-235085 (“Urasaki”) ................20
`3. U.S. Patent Publication No. 2007/0126020 (“Lin”) ................................22
`4. U.S. Patent Publication No. 2005/0280017 (“Oshio”) ............................26
`5.
`Japanese Patent Publication No. JP2001-036154 (“Suenaga”) ...............28
`6. Motivation to Combine Koung with Urasaki ...........................................29
`7. Motivation to Combine Koung with Lin ..................................................33
`8. Motivation to Combine Koung with Oshio ..............................................37
`9. Motivation to Combine Koung with Suenaga..........................................40
`B. Claim Charts for Grounds 1-8 (see also Ex. 1003 ¶¶ 85-140) ......................41
`VII. CONCLUSION ..............................................................................................83
`
`ii
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`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,530,250
`
`LIST OF EXHIBITS
`
`Ex. 1005
`Ex. 1006
`Ex. 1007
`
`Ex. 1008
`Ex. 1009
`Ex. 1010
`
`Ex. 1011
`
`Ex. 1012
`Ex. 1013
`Ex. 1014
`
`Exhibit No. Description
`Ex. 1001
`U.S. Patent No. 8,530,250
`Ex. 1002
`U.S. Patent No. 8,530,250 File Wrapper
`Ex. 1003
`Declaration of Dr. Stanley R. Shanfield, Ph.D.
`Ex. 1004
`Japanese Patent Pub. No. 2006-093697 (“Park ’697”) with Certified
`English Translation
`U.S. Patent Pub. No. 2008/0261339 (“Koung”)
`PCT Patent Pub. No. WO2007/055486 (“Park ’486”)
`Japanese Patent Pub. No. JP2007-235085 (“Urasaki”) with
`Certified English Translation
`U.S. Patent Pub. No. 2005/0280017 (“Oshio”)
`U.S. Patent Pub. No. 2007/0126020 (“Lin”)
`Japanese Patent Pub. No. JP2001-036154 (“Suenaga”) with
`Certified English Translation
`Japanese Patent Pub. No. JP2006-156704 (“Kuramoto”) with
`Certified English Translation
`U.S. Patent Pub. No. 2005/0151149 (“Chia”)
`U.S. Patent Pub. No. 2008/0073662 (“Wang”)
`Nichia Corp. v. Everlight Elecs. Co., No. 2:13-cv-702, 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. 1015
`
`iii
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`

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`Petition for Inter Partes Review
`U.S. Patent No. 8,530,250
`
`TABLE OF AUTHORITIES
`
`FEDERAL CASES
`Blue Coat Systems, Inc. v. Finjan, Inc.,
`No. IPR2016-00480, Paper 9 (PTAB Jun. 24, 2016) ........................................... 3
`
`Page(s)
`
`Dell, Inc. v. Network-1 Sec. Sols., Inc.,
`No. IPR2013-00385, Paper 17 (PTAB July 29, 2013) ......................................... 3
`
`In re Cuozzo Speed Techs., LLC,
`136 S. Ct. 2131 (2016) .......................................................................................... 6
`
`Nichia Corp. v. Everlight Elecs. Co., Ltd. et al.,
`No. 2:13-cv-702-JRG (E.D. Tex.) ........................................................................ 2
`
`Nichia Corporation v. Lowe’s Companies, Inc. et al.
`No. 2:16-cv-00613-JRG (E.D. Tex.) .................................................................... 1
`
`FEDERAL STATUTES
`
`35 U.S.C. § 102(b) ..................................................................................................... 5
`
`35 U.S.C. §§ 102 (b) and (a) .............................................................................. 20, 28
`
`35 U.S.C. §§ 102 (b), (a), and (e) ...................................................................... 22, 26
`
`35 U.S.C. §§ 311-319................................................................................................. 1
`
`REGULATIONS
`
`37 C.F.R. § 42 ............................................................................................................ 1
`
`37 C.F.R. § 42.8 ......................................................................................................... 1
`
`37 C.F.R. § 42.100(b) ................................................................................................ 5
`
`37 C.F.R. § 42.104 ..................................................................................................... 4
`
`37 C.F.R. § 42.104(b)(3) ............................................................................................ 5
`
`37 C.F.R. § 42.8(b)(3) ................................................................................................ 4
`
`iv
`
`

`

`OTHER AUTHORITIES
`
`MPEP § 2111 ............................................................................................................. 6
`
`Petition for Inter Partes Review
`U.S. Patent No. 8,530,250
`
`v
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,530,250
`
`I.
`
`INTRODUCTION
`
`Pursuant to 37 C.F.R. § 42 and 35 U.S.C. §§ 311-319, Lowe’s Companies,
`
`Inc., Lowe’s Home Centers, LLC and L G Sourcing, Inc. (collectively
`
`“Petitioners”) petition for Inter Partes Review (“IPR”) of claims 1, 2, 7, 11, 12,
`
`15-17, 19 and 21 (the “Claims”) of U.S. Patent No. 8,530,250 (the “’250 Patent”).
`
`Review should be instituted because there is reasonable likelihood Petitioner will
`
`prevail on at least one challenged claim.
`
`II. MANDATORY NOTICES (37 C.F.R. § 42.8)
`
`A.
`
`Real Parties-in-Interest Under 37 C.F.R. § 42.8(b)(1):
`
`Lowe’s Companies, Inc., Lowe’s Home Centers, LLC and L G Sourcing,
`
`Inc. (collectively “Lowes” or “Petitioners”), Zhejiang Yankon Group Co., Ltd.
`
`(“Yankon”), Zoren Industries (“Zoren”), and Litetronics International, Inc.
`
`(“Litetronics”) are real parties-in-interest.
`
`B.
`
`Related Matters Under 37 C.F.R. § 42.8(b)(2):
`
`Nichia Corporation (“Patent Owner” or “PO”) asserted claims 1, 2, 7, 11, 12,
`
`15-17, 19 and 21 against Petitioners in Nichia Corporation v. Lowe’s Companies,
`
`Inc. et al. No. 2:16-cv-00613-JRG (E.D. Tex.), consolidated with Nos. 2:16-cv-
`
`01453-JRG (lead), 2:16-cv-00246-JRG, 2:16-cv-00613-JRG, 2:16-cv-00615-JRG,
`
`2:16-cv-00616-JRG, 2:16-cv-875-JRG, 2:16-cv-01452-JRG, 2:16-cv-01451-JRG,
`
`2:16-cv-01455-JRG (in which PO asserted the ’250 Patent against other
`
`1
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,530,250
`defendants). PO also asserted the ’250 Patent 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.).
`
`Petitioners have also contemporaneously filed another petition for IPR,
`
`which relies on a different primary reference (Japanese Patent Publication No.
`
`2006-093697 (“Park ’697”)) and raises different grounds as to the obviousness of
`
`the Claims. Accordingly, Petitioners respectfully request institution on the
`
`grounds set forth in both petitions.
`
`VIZIO Inc. has recently filed separate petitions for inter partes review of the
`
`’250 Patent (IPR2017-01608 and IPR2017-01623 (“VIZIO IPR Proceedings”),
`
`which challenge only some of the claims addressed herein. Petitioners have
`
`utilized portions of the publically-available materials filed in the VIZIO IPR
`
`Proceedings in its Petitions. Petitioners have also retained technical expert Dr.
`
`Stanley R. Shanfield, Ph.D., who also provided expert testimony in the VIZIO IPR
`
`Proceedings. See Ex. 1003 ¶ 3. Although Petitioners have added additional
`
`arguments and made various edits, Petitioners hope that use of Vizio analyses
`
`(rather than pointless rewording of analyses of the same elements of the same prior
`
`art references) will help facilitate review of this Petition, at least for those claims
`
`that are also challenged in the Vizio Petitions. Blue Coat Systems, Inc. v. Finjan,
`
`2
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,530,250
`Inc., No. IPR2016-00480, Paper 9 at 2-6 (PTAB Jun. 24, 2016) (Petition was
`
`“practically a copy of [a different entity’s] petition with respect to the proposed
`
`grounds, including the same analysis of the prior art and expert testimony” and
`
`instituting IPR and granting joinder request “[i]n view of the identity of the
`
`challenge in the instant Petition and in the petition [of the other entity]”)’ Dell, Inc.
`
`v. Network-1 Sec. Sols., Inc., No. IPR2013-00385, Paper 17 at p. 6 (PTAB July 29,
`
`2013)
`
`(granting petition and joinder request where petition used identical
`
`arguments and same expert and arguments as another entity).
`
`Half of the claims challenged in this Petition (claims 2, 11, 12, 15, and 16)
`
`were not challenged in either of the Vizio Petitions. All these claims have been
`
`asserted against Lowe’s in the above-identified Texas litigation. This Petition
`
`accordingly provides numerous grounds for invalidity, and uses prior art (Lin
`
`reference), not found in either of the Vizio Petitions. The Director, pursuant to §
`
`315(d), may determine after institution of both of Petitioners’ IPR petitions that
`
`consolidation of these proceeding with the VIZIO IPR Proceedings may be
`
`appropriate, or may at minimum decide to coordinate the schedules of the
`
`proceedings.
`
`3
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`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,530,250
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`
`C.
`
`Lead Counsel
`
`Back-Up Counsel
`
`Scott D. Stimpson, (Reg. No. 33,607)
`SILLS CUMMIS & GROSS P.C.
`101 Park Avenue, 28th Floor
`New York, New York 10178
`Tel: (212) 500-1550
`Fax: (212) 643-6500
`sstimpson@sillscummis.com
`
`Tod Melgar, (Reg. No. 41,190)
`SILLS CUMMIS & GROSS P.C.
`101 Park Avenue, 28th Floor
`New York, New York 10178
`Tel: (212) 500-1519
`Fax: (212) 643-6500
`tmelgar@sillscummis.com
`
`D.
`
`Service Information
`
`Please address all correspondence and service to both counsel listed above.
`
`Petitioner consents to service by email at sstimpson@sillscummis.com.
`
`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`
`A.
`
`Grounds for Standing Under 37 C.F.R. § 42.104(a)
`
`Petitioners certify that IPR is available for the ’250 Patent and that
`
`Petitioners are not barred or estopped from requesting IPR. Petitioners were
`
`served with a complaint asserting infringement of the ’250 Patent on August 30,
`
`2016. Neither Petitioners 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
`
`Patent’s validity.
`
`Challenge under 37 C.F.R. 42.104(b); Relief Requested
`B.
`Petitioner requests inter partes review of claims 1, 2, 7, 11, 12, 15-17, 19
`
`4
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,530,250
`and 21 on the grounds in the table below and requests that each of the Claims be
`
`found invalid. A detailed explanation of why the Claims are invalid is provided
`
`below in Part VI.
`
`Ground Prior Art References
`
`1
`
`2
`
`3
`4
`5
`6
`7
`8
`
`Koung and Urasaki
`
`Koung, Urasaki, and Oshio
`
`§ 103
`Koung, Urasaki and Lin
`Koung, Urasaki, Oshio and Lin § 103
`Koung
`§ 103
`Koung and Oshio
`§ 103
`Koung and Suenaga
`§ 103
`Koung, Oshio, and Suenaga
`§ 103
`
`Basis
`
`§ 103
`
`§ 103
`
`Claims
`Challenged
`1, 2, 7, 11, 12, 15,
`16
`1, 2, 7, 11, 12, 15,
`16
`11
`11
`17, 19, 21
`17, 19, 21
`19
`19
`
`The ’250 Patent claims a priority date of September 3, 2008. Accordingly,
`
`the Claims are allegedly entitled to a priority date no earlier than this date. Each of
`
`the referenced prior art qualified as prior art under 35 U.S.C. § 102(b) and/or §
`
`102(e).
`
`§ VI.B below provides charts specifying how the prior art renders the Claims
`
`obvious.
`
`C.
`
`Claim Construction under 37 C.F.R. § 42.104(b)(3)
`
`In accordance with 37 C.F.R. § 42.100(b), the challenged claims must be
`
`given their broadest reasonable interpretations in light of the specification of the
`
`5
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,530,250
`
`’250 Patent.
`
`For purposes of this review, Petitioners interpret all terms according to their
`
`plain and ordinary meaning under the required “broadest reasonable interpretation”
`
`(“BRI”) consistent with the specification, as understood by one of ordinary skill in
`
`the art and consistent with the disclosure. 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, Petitioners expressly reserve 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 those for which any
`
`resulting estoppel might apply, including under §§ 101 and/or 112.
`
`D.
`
`Person of Ordinary Skill in the Art
`
`A person of ordinary skill in the art (“POSITA”) circa the priority date of the
`
`’250 Patent (i.e., 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 manufacturing and packaging processes for light emitting
`
`devices. Ex. 1003 ¶¶ 17-18. Additional graduate education could substitute for
`
`professional experience, or significant experience in the field could substitute for
`
`formal education. A POSITA is presumed to have knowledge of all relevant prior
`
`6
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,530,250
`art, and would thus have been familiar with each of the references cited herein, as
`
`well as the background knowledge in the art, and the full range of teachings they
`
`contain. Id.
`
`IV.
`
`SUMMARY OF THE ’250 PATENT
`
`The ’250 Patent is directed to a “simple and low cost method for
`
`manufacturing . . . light emitting devices”. Ex. 1001 at 2:49-51; see generally Ex.
`
`1003 ¶¶ 39-44. In particular, the ’250 Patent describes a lead frame (shown in
`
`blue) that 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. at 8:46-
`
`48, Fig. 7. The lead may include a step. Id. at 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. The lead frame undergoes a
`
`plating process before it is sandwiched by the upper and lower molds. Id. at 3:21-
`
`28, 8:6-11, 9:22-28, and 11:62-67. The ’250 Patent discloses “notch parts” (shown
`
`in red) that “penetrate the lead frame” to provide “positive and negative leads . . .
`
`when the resin-molded body is singulated” and reduce “the area for cutting the
`
`leads.” Id. at 9:7-15, see also, e.g., id. at 3:29-40, Figs. 5, 7, 10.
`
`7
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,530,250
`
`Id., at Fig. 7.
`
`The ’250 Patent further discloses “sandwiching the lead frame” 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. at 11:5-12, Fig. 4; see also id. at
`
`Abstract, 3:1-9, 4:25-36, 11:5-14, 12:7-20. The thermosetting resin is filled in the
`
`notch parts. Id. at 3:8-12; see also 4:36-41; 12:51-57. The upper mold features
`
`convex parts to form corresponding concave parts in the resin-molded body. Id. at
`
`5:7-9, 7:60-61, and Fig. 4. After the resin-mold body is formed, a “light emitting
`
`element 10 is placed on the lead frame 21 of the inner bottom surface 27a of the
`
`concave part 27”, as shown in orange below. Id. at 12:27-29.
`
`8
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,530,250
`
`Id. at Fig. 4.
`
`After transfer-molding, the ’250 Patent describes “singulation” of the resin-
`
`molded body (shown in green) and lead frame (shown in blue) into individual
`
`packages whereby “the resin-molded body 24 and lead frame 21 are cut along the
`
`notch parts 21a.” Id. at 12:40-46; see also id. at 2:63-3:9, 4:25-36, Figs. 5-7, 10.
`
`Through the cutting step, “the resin-molded body 24 and lead frame 21 are in the
`
`substantially same plane.” Id. at 12:47-49, 7:49-52.
`
`9
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,530,250
`
`Id. at Fig. 6.
`
`V.
`
`’250 PATENT PROSECUTION HISTORY
`
`The application leading to the ’250 Patent was filed March 2, 2011 as U.S.
`
`Pat. App. No. 12/737,940 (“’940 application”), claiming priority to JP2008-
`
`225408, filed September 3, 2008. See generally Ex. 1003 ¶¶ 45-48. The Examiner
`
`rejected all prosecution claims as unpatentable over combinations of
`
`WO2008/059856 (“Kotani”), U.S. Pat. Pub. No. 2007/0138697 (“Takeda”),, U.S.
`
`Pat. Pub. No. 2005/0151149 (“Chia”) (Ex.1012), and U.S. Pat. Pub. No.
`
`2002/0028525 (“Sakamoto”). Ex. 1002 at 488-492. The Examiner found it would
`
`have been obvious to “include a plurality of concave portions.” Id. at 490. The
`
`Examiner found Chia discloses providing a “step on the bottom of the lead frame”
`
`and “the lead includes two different levels.” Id. at 491.
`
`10
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,530,250
`On February 28, 2013, Applicants submitted remarks and amended 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. at
`
`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. at 664. On May 13, 2013,
`
`the claims were allowed. Id. at 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.
`
`Claims 1, 2, 7, 11, 12, 15, 17, 19 and 21 are obvious
`
`1.
`
`U.S. Patent Publication No. 2008/0261339 (“Koung”)
`
`Koung (Ex. 1005) was filed April 3, 2008 and published October 23, 2008,
`
`making it prior art to ’250 Patent under at least § 102(e). Koung discloses a method
`
`for manufacturing multiple light emitting devices, generally comprising the steps
`
`of providing a lead frame (shown in blue) having at least one notch (shown in red)
`
`that is plated, molding a resin containing a light reflecting material on the lead
`
`frame to form a resin-molded body (shown in green), and cutting (shown in red)
`
`the lead frame and resin-molded body to form individualized LED packages
`
`comprising a resin part and at least one lead. See e.g., Ex. 1005 at Abstract, ¶¶ 2,
`
`11
`
`

`

`18-26; see generally Ex. 1003 ¶¶ 61-68.
`
`Petition for Inter Partes Review
`U.S. Patent No. 8,530,250
`
`Id. at Fig. 4(b).
`
`12
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,530,250
`
`Id. at Fig. 2(b).
`
`Koung discloses using a lead frame (shown in blue) formed out of a metal
`
`board treated “using etching or machining (such as punching)” to include notches.
`
`See e.g., Ex. 1005 ¶ 20, Figs. 4(a)-(b). Koung further discloses that “[f]or further
`
`increasing reflectivity,” the lead frame is “plated.” See e.g., id. ¶ 26. Koung
`
`additionally discloses that the leads comprise a step on a bottom surface and that
`
`the leads comprise two or more different levels. See e.g., id. at Figs. 2(a)-(b).
`
`Koung discloses that after plating the lead frame, a resin-molded body (shown in
`
`green) is formed on the lead frame. See e.g., id. ¶¶ 18, 21, 26; Fig. 4C.
`
`13
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,530,250
`
`Id. at Fig. 4(c).
`
`Koung further discloses that the resin-molded body forms a plurality of
`
`concave portions comprising an inner bottom surface at which a portion of the lead
`
`frame is exposed. See e.g., id. ¶ 21, Fig. 4(c). Koung also discloses that the resin
`
`molded-body and lead frame are cut along the notches in the lead frame to form
`
`individual LED packages such that an outer surface of the resin part and an outer
`
`side surface of the at least one lead are planar at an outer side surface of the resin
`
`package. See, e.g., id. ¶¶ 18, 24, Fig. 4(f). Because Koung discloses cutting after
`
`plating the lead frame, the side of the lead frame that is cut is unplated. Id.; Ex.
`
`1003 ¶ 64.
`
`14
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,530,250
`
`Ex. 1005 at Fig. 4(f).
`
`15
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,530,250
`
`Id. at Fig. 2(c).
`
`Koung additionally discloses providing an “LED chip” (shown in orange) in
`
`the concave portion of the resin package. See e.g., id. ¶ 18, Fig. 4(d). Koung further
`
`discloses that a portion of the resin part is disposed over a portion of the plating on
`
`the upper surface of the at least one lead. Id. ¶¶ 26, 30, Fig. 2(a).
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`U.S. Patent No. 8,530,250
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`Id. at Fig. 2(a).
`
`Koung further discloses an inner side wall surface of the lead frame
`
`surrounding the at least one notch comprises concave portions. Id. ¶ 20, Fig. 2(b).
`
`The electrodes in the lead frame include tabs that extend from the upper surface of
`
`the electrode and form a concave space in the side wall. Id. ¶ 20, Figs. 2(b) and
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`4(b); Ex 1003 ¶ 66.
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`U.S. Patent No. 8,530,250
`
`Tabs / notches that extend from the
`upper surface of the electrode and
`form a concave space in the side wall
`
`Tabs / notches that extend from the
`upper surface of the electrode and
`form a concave space in the side wall
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`U.S. Patent No. 8,530,250
`Koung also discloses a plurality of notches, including a first set of notches
`
`and a second set of notches, each of the notches in the first set of notches is located
`
`in a position corresponding to a portion of the resin part that separates a first lead
`
`from a second lead, and each of the notches in the second set of notches is a notch
`
`along which the resin-molded body and the lead frame are cut during the cutting
`
`step and the second set of notches comprises both horizontal and vertical notches.
`
`See Id. at Figs. 2(d) and 4(b); Ex 1003 ¶ 67. The two notches included in the
`
`second set of notches are arranged vertically and horizontally. See Id.
`First Set of Notches
`
`Second Set of Notches
`
`Id. at Fig. 2(d).
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`Petition for Inter Partes Review
`U.S. Patent No. 8,530,250
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`Second set of notches
`(horizontal and vertical)
`
`Id. at Fig. 4(b).
`
`2.
`
`Japanese Patent Publication No. JP2007-235085 (“Urasaki”)
`
`Urasaki (Ex. 1007) published September 13, 2007, making it prior art under
`
`at least 35 U.S.C. §§ 102 (b) and (a). Urasaki is referenced as “Background Art”
`
`in the ’250 Patent. Ex. 1001 at 2:13-43. Urasaki discloses a method for
`
`manufacturing multiple LED packages. Ex. 1007 at Abstract, ¶¶ 1, 3; see
`
`generally Ex. 1003 ¶¶ 69-71. Urasaki discloses using a lead frame (shown in blue
`
`below), and providing an upper mold (shown in purple) on a first surface of the
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`lead frame and a lower mold (shown in purple) on a second surface of the lead
`
`frame to transfer-mold a thermosetting resin containing a light reflecting material
`
`in a space between the upper mold and the lower mold to form a resin-molded
`
`body (shown in green). Ex. 1007 ¶¶ 17, 23-25, Figs. 1-2. Urasaki further discloses
`
`the upper mold includes a plurality of convex portions to form a resin-molded body
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`U.S. Patent No. 8,530,250
`with a plurality of concave portions, wherein each of the concave portions has an
`
`inner bottom surface at which a portion of the lead frame is exposed. Id. ¶¶ 11, 17,
`
`24, 37, Figs. 1-2. Urasaki additionally discloses cutting to form individual light
`
`emitting diode packages comprising a resin part and at least one lead, where an
`
`outer surface of the resin part and an outer side surface of the at least one lead are
`
`planar at an outer side surface of the resin package, and providing an optical
`
`semiconductor element (shown in orange) in a concave portion of the resin
`
`package. Id. ¶¶ 1, 23, 36, 38, Figs. 1-6.
`
`Id. at Fig. 1.
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`Petition for Inter Partes Review
`U.S. Patent No. 8,530,250
`
`Id. at Fig. 2(a).
`
`3.
`
`U.S. Patent Publication No. 2007/0126020 (“Lin”)
`
`Lin (Ex. 1009) published June 7, 2007 and is prior art under at least 35
`
`U.S.C. §§ 102 (b), (a), and (e). Lin discloses a packaging structure for an LED
`
`chip and a method of manufacturing thereof. See, e.g., Ex. 1009 at Abstract, ¶¶ 2,
`
`8, and 24, Fig. 2(a). Lin describes a packaging structure that comprises a metallic
`
`base (forming a plurality of electrodes), a reflection plate, an LED chip, bonding
`
`wires, and a transparent filler for sealing and protecting the LED chip. Id. Ex.
`
`1009 ¶¶ 9, 25 and Fig. 2(a); Ex. 1003 ¶¶ 72-76.
`
`Lin discloses a metallic plate that features concave portion. For example,
`
`Lin discloses a metal concaved reflection mirror 103 is formed on the top surface
`
`of the heat sinking seat 102 and beneath the LED chip 150. See, e.g., id. Ex. 1009
`
`¶ 29, Figs. 2(d) and 2(f); Ex. 1003 ¶¶ 73.
`
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`Petition for Inter Partes Review
`U.S. Patent No. 8,530,250
`
`Id. at Fig. 2(f).
`
`Lin describes the process of forming multiple packages wherein the “bases
`
`100 are formed mainly by appropriate means of etching and machinery” and
`
`remaining gaps are filled with an “insulator”, the packages then being “fixat[ed]
`
`and wire bonded” with an LED chip and filled with transparent filler, and
`
`ultimately singulated by cutting. Ex. 1009 ¶¶ 31-33, Fig. 4(g). Lin further
`
`discloses a length of an exposed portion of the at least one lead around a periphery
`
`of the resin package is less than or equal to one half a total length of the periphery.
`
`See, e.g., id. at Fig. 3(a); Ex. 1003 ¶¶ 74.
`
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`Petition for Inter Partes Review
`U.S. Patent No. 8,530,250
`
`Length of exposed
`portion of leads
`
`Id.
`
`Length of
`periphery
`
`Lin discloses the lead frame comprises a plurality of notches, including a
`
`first set of notches and a second set of notches, each of the notches in the first set
`
`of notches is located in a position corresponding to a portion of the resin part that
`
`separates a first lead from a second lead (indicated in red below), and each of the
`
`notches in the second set of notches is a notch along which the resin-molded body
`
`and the lead frame are cut during the cutting step (indicated in blue below). See,
`
`e.g., Ex. 1009 at Fig. 2(f), 4(c); Ex. 1003 ¶¶ 75-76.
`
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`Petition for Inter Partes Review
`U.S. Patent No. 8,530,250
`
`First Set of Notches
`
`Second Set of Notches
`
`Id. at Fig. 2(f).
`
`First Set of
`Notches
`
`Electrode (104)
`
`Second set of notches
`(horizontal and vertical)
`
`Electrode (104)
`
`Id. at Fig. 4(c).
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`U.S. Patent No. 8,530,250
`Lin also discloses the second set of notches comprises both horizontal and
`
`vertical notches. The two notches included in the second set of notches (indicated
`
`with blue) are arranged vertically and horizontally. Ex. 1009 at Fig. 2(f), 4(c); Ex.
`
`1003 ¶¶ 75-76.
`
`4.
`
`U.S. Patent Publication No. 2005/0280017 (“Oshio”)
`
`Oshio (Ex. 1008) published December 22, 2005 and is prior art under at least
`
`§§ 102(b), (a), and (e). Oshio discloses a method for manufacturing multiple
`
`semiconductor light emitting devices. See, e.g., Ex. 1008 at Abstract, ¶¶ 2, 82, 100-
`
`101, 113, Figs. 11-14, 18(a)-18(b); Ex. 1003 ¶¶ 78-82. Oshio discloses providing a
`
`metal lead frame (shown in blue). See e.g., Ex. 1008 ¶¶ 49, 69, Figs. 1-3, 11-13.
`
`Oshio discloses the lead frame is coated “by plating” on all surfaces. See e.g., Ex.
`
`1008 ¶¶ 69, 113, Figs. 1-4. Oshio also discloses the leads have at least two
`
`different levels. See, e.g., id. ¶ 52, Figs. 1-3.
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`Petition for Inter Partes Review
`U.S. Patent No. 8,530,250
`
`Id. at Fig. 4.
`
`Oshio further discloses molding a thermoplastic resin on the lead frame to
`
`form a resin-molded body (shown in green). See e.g., id. ¶¶ 71, 49, Figs. 1-3, 13.
`
`Additionally, Oshio discloses the lead frame is cut along notches provided in the
`
`lead frame to individualize the light emitting devices. See e.g., at id. ¶ 113, Figs.
`
`11-14, 18A-18B. Oshio discloses “if the lead frame is plated with silver or the like,
`
`an unplated surface of base material is exposed at the cut section.” See e.g., id. ¶
`
`114.
`
`Id. at Figs. 13, 18B.
`
`Oshio discloses an “LED chip 10” (shown in orange) is mounted on the lead
`
`in a concave portion of the resin package, where a portion of the lead is exposed.
`
`See, e.g., id ¶¶ 61-63, Figs. 1-2. Oshio further discloses a portion of the resin part is
`
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`Petition for Inter Partes Review
`U.S. Patent No. 8,530,250
`disposed over a portion of the plating on the upper surface of the lead. See e.g., id.
`
`¶¶ 61, 69, 85-86, 95-96, Figs. 1-4, 11-14.
`
`Oshio discloses using a lead plate that comprises concave portions. The
`
`LED chip is mounted in a recess 20c. See e.g., id. ¶¶ 61-62, 70, 97 and Figs. 1, 4,
`
`5(a), 6, 7-10, 16-17.
`
`Id. at Fig. 1.
`
`5.
`
`Japanese Patent Publication No. JP2001-036154 (“Suenaga”)
`
`Suenaga (Ex. 1010) published February 9, 2001, making it prior art under at
`
`least §§ 102 (b) and (a). Suenaga discloses a method for manufacturing light
`
`emitting diode packages. Ex. 1010 at Abstract, ¶¶ 1, 6, Figs. 3-10; see generally
`
`Ex. 1003 ¶¶ 83-84. Suenaga discloses a method for manufacturing multiple LED
`
`packages. Ex. 1010 at Abstract, ¶¶ 1, 6, 38, Figs. 3-10, 12. Suenaga discloses the
`
`LED package comprises leads (shown in blue below) and a resin part. Id. ¶ 45,
`
`Fig. 12, ¶¶ 30-32, 36. Suenaga discloses including a step on the bottom surface or
`
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`U.S. Patent No. 8,530,250
`outer surface of each lead. Id. ¶ 45, Fig. 12. An LED chip (item 16) is mounted on
`
`one lead and electrically connected to the other lead with a wire. Id. ¶ 35, Fig. 7.
`
`Id., at Fig. 12.
`
`6.
`
`Motivation to Combine Koung with Urasaki
`
`A POSITA would have been motivated and found it obvious and a
`
`straightforward and beneficial design choice, to use an upper mold (having a
`
`plurality of convex portions to form a resin-molded body with concave portions)
`
`on a first surface of the lead frame and a lower mo