Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 34
`Entered: July 22, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`SEOUL SEMICONDUCTOR CO., LTD., and
`SEOUL SEMICONDUCTOR, INC.,
`Petitioner,
`v.
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2018-00522
`Patent 7,524,087 B1
`_______________
`
`
`Before SALLY C. MEDLEY, SCOTT C. MOORE, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`DOUGAL, Administrative Patent Judge.
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`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`Tel: 571-272-7822
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`Paper 34
`Entered: July 22, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`SEOUL SEMICONDUCTOR CO., LTD., and
`SEOUL SEMICONDUCTOR, INC.,
`Petitioner,
`v.
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2018-00522
`Patent 7,524,087 B1
`_______________
`
`
`Before SALLY C. MEDLEY, SCOTT C. MOORE, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`DOUGAL, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`I.
`
`INTRODUCTION
`A. Background
`Seoul Semiconductor Co., Ltd. and Seoul Semiconductor, Inc.
`(“Petitioner”)1 filed a Petition (Paper 2, “Pet.”) to institute an inter partes
`review of claims 1, 6–8, 15, and 17 (the “challenged claims”) of U.S. Patent
`7,524,087 B1 (Ex. 1001, the “’087 patent”). Document Security Systems,
`Inc. (“Patent Owner”) timely filed a Preliminary Response (Paper 6,
`“Prelim. Resp.”). Applying the standard set forth in 35 U.S.C. § 314(a), we
`instituted an inter partes review of all challenged claims. Paper 10 (“Dec.”).
`Patent Owner filed a Patent Owner’s Response (Paper 20, “PO
`Resp.”), Petitioner filed a Reply (Paper 21, “Reply”), and Patent Owner filed
`a Patent Owner’s Sur-Reply (Paper 24, “Sur-Reply”). An oral hearing was
`held on April 4, 2019, and a copy of the transcript was entered into the
`record. Paper 32 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
`Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to the
`patentability of the claims on which we instituted trial. 35 U.S.C. § 316(e);
`37 C.F.R. § 42.1(d). Having reviewed the arguments of the parties and the
`supporting evidence, we determine that Petitioner has shown, by a
`preponderance of the evidence, that the challenged claims of the ’087 patent
`are unpatentable.
`
`
`1 Everlight Electronics Co., Ltd., which had previously been joined as a
`petitioner (IPR2018-01226, Paper 15), has been terminated as a party. Paper
`33.
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`B. Related Proceedings
`The parties indicate that the’087 patent is involved in the following:
`Document Security Systems, Inc. v. Seoul Semiconductor Co., No. 8:17-cv-
`00981 (C.D. Cal.); Document Security Systems, Inc. v. Cree, Inc., No. 2:17-
`cv-04263 (C.D. Cal.); Document Security Systems, Inc. v. Everlight
`Electronics Co., No. 2:17-cv-04273 (C.D. Cal.); Document Security Systems,
`Inc. v. OSRAM GmbH, No. 2:17-cv-05184 (C.D. Cal.); Document Security
`Systems, Inc. v. Lite-On, Inc., No. 2:17-cv-06050 (C.D. Cal.); and Document
`Security Systems, Inc. v. Nichia Corp., No. 2:17-cv-08849 (C.D. Cal.). Pet.
`5; Paper 5, 2.
`Patent Owner informs us that IPR2018-01165 (instituted December
`11, 2018) and IPR2018-01221 (institution denied November 13, 2018)
`challenge(d) the ’087 patent. Paper 9, 2–3. Patent Owner indicates that the
`following additional pending inter partes reviews are related to the present
`inter partes review: IPR2018-00965, IPR2018-00966, and IPR2018-01166.
`Id.
`
`C. The ’087 Patent
`The ’087 patent generally relates to an optical device with a light
`emitting diode (LED) die, such as for use in a large display panel. Ex. 1001,
`Abstract, 1:5–8, 59–61. Top and bottom perspective views of an optical
`device are illustrated in Figures 1 and 2, reproduced below. Id. at 1:25–28.
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`The top (Fig. 1) and bottom (Fig. 2) views of the optical device 10
`show a housing 20 with a top cavity 30 and a bottom cavity 34, with LED
`dies 12, 14, 16 mounted in the top cavity. Id. at 2:5–24. The housing 20 has
`a top face 22, a bottom face 24, and a peripheral wall 26 extending there-
`between. Id. at 2:12–17. A lead frame 32 is provided, which can include a
`number of leads 36, 40, 42, 44, 46, 50. Id. at 2:35–37. Each of the leads is
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`positioned at a lead receiving compartment 52 in the housing 20. Id. at
`2:38–39, 64–67.
`Of the challenged claims, claims 1 and 15 are independent, claims 6–8
`depend from claim 1, and claim 17 depends from claim 15. Claim 1,
`reproduced below, is illustrative of the claimed subject matter:
`1. An optical device comprising:
`a lead frame with a plurality of leads;
`a reflector housing formed around the lead frame,
`the reflector housing having a first end face and a second
`end face and a peripheral sidewall extending between the
`first end face and the second end face, the reflector
`housing having a first pocket with a pocket opening in
`the first end face and a second pocket with a pocket
`opening in the second end face;
`at least one LED die mounted in the first pocket of
`the reflector housing;
`a light transmitting encapsulate disposed in the
`first pocket and encapsulating the at least one LED die;
`and
`
`wherein a plurality of lead receiving compartments
`are formed in the peripheral sidewall of the reflector
`housing.
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`D. Instituted Grounds
`Petitioner contends that the challenged claims are unpatentable under
`35 U.S.C. § 103 based on the following grounds (Pet. 5–6, 30–67):
`Reference[s] 2
`
`Kyowa
`
`Kyowa and Okazaki
`
`Matsumura
`
`Claims challenged
`1, 6–8, 15, and 17
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`1, 6–8, 15, and 17
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`1, 6–8, 15, and 17
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`Matsumura and Suehiro
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`1, 6–8, 15, and 17
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`Matsumura and Oshio
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`1, 6–8, 15, and 17
`
`As further support, Petitioner offers the Declaration of Michael Pecht,
`Ph.D. Ex. 1003.
`
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`II. ANALYSIS
`A. Obviousness under 35 U.S.C. § 103
`The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`
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`2 Japanese Pat. Pub. JP2001-118868, Apr. 27, 2001 (Ex. 1009) (“Kyowa”);
`U.S. Patent 6,653,661 B2, Nov. 25, 2003 (Ex. 1012) (“Okazaki”); U.S. Pat.
`Pub. 2004/0206964 A1, Oct. 21, 2004 (Ex. 1010) (“Matsumura”); U.S.
`Patent 6,834,977 B2, Dec. 28, 2004 (Ex. 1011) (“Suehiro”); U.S. Pat. Pub.
`2008/0054287 A1, Mar. 6, 2008 (Ex. 1014) (“Oshio”).
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`nonobviousness.3 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). A
`patent can be obvious in light of a single prior art reference if it would have
`been obvious to modify that reference to arrive at the patented
`invention. See, e.g., Takeda Chem. Indus., Ltd. v. Alphapharm Pty, Ltd., 492
`F.3d 1350, 1357 (Fed. Cir. 2007); SIBIA Neurosciences, Inc. v. Cadus
`Pharm. Corp., 225 F.3d 1349, 1356 (Fed. Cir. 2000).
`B. Level of Ordinary Skill
`Petitioner states that a person of ordinary skill “at the time of the []
`invention would have had at least a B.S. in mechanical or electrical
`engineering or a related field, and two years’ experience designing LED
`packages.” Pet. 19 (citing Ex. 1003, Declaration of Petitioner’s proffered
`expert, Dr. Michael Pecht (“Pecht Decl.”) ¶¶ 29–31). Petitioner contends
`that “a higher level of education or skill might make up for less experience,
`and vice-versa.” Id.
`Patent Owner does not contest or otherwise address Petitioner’s
`proposed level of ordinary skill. See generally, PO Resp. We are
`persuaded, on the present record, that Petitioner’s proposal is consistent with
`the problems and solutions in the ’087 patent and prior art of record. See,
`e.g., In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (“In determining
`this skill level, the court may consider various factors including type of
`problems encountered in the art; prior art solutions to those problems;
`rapidity with which innovations are made; sophistication of the technology;
`
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`3 The parties do not direct us to any objective evidence of nonobviousness.
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`and educational level of active workers in the field.” (citations and internal
`quotations omitted)).
`C. Claim Construction
`In an inter partes review filed before November 13, 2018, claim terms
`in an unexpired patent are given their broadest reasonable construction in
`light of the specification of the patent. See 37 C.F.R. § 42.100(b) (2017);
`see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016)
`(affirming that USPTO has statutory authority to construe claims according
`to 37 C.F.R. § 42.100(b)).4 Claim terms are given their ordinary and
`customary meaning as would be understood by a person of ordinary skill in
`the art at the time of the invention and in the context of the entire patent
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
`
`1. “Pocket” and “Cavity”
`Petitioner submits a proposed construction for the terms “pocket” and
`“cavity” in claims 1 and 15. Pet. 11–14. First, Petitioner states that the
`Specification of the ’087 patent uses these terms interchangeably, with “no
`
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`4 The Office recently changed the claim construction standard used in inter
`partes review proceedings. 37 C.F.R. § 42.100(b) (2019). As stated in the
`Federal Register notice, however, the new rule applies only to petitions filed
`on or after November 13, 2018, and, therefore, does not impact this
`matter. See Changes to the Claim Construction Standard for Interpreting
`Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83
`Fed. Reg. 51,340, 51,340 (Oct. 11, 2018) (stating “[t]his rule is effective on
`November 13, 2018 and applies to all IPR, PGR and CBM petitions filed on
`or after the effective date”).
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`substantive difference between” them. Id. at 12 (citing Ex. 1001, 2:17–19).
`Then, Petitioner argues that these terms should be construed to mean “a
`partially enclosed space.” Id. at 13 (emphasis omitted). In support of its
`construction, Petitioner discusses the use of these terms in the Specification
`(id. at 12–13), a number of dictionary definitions (id. at 13), and Patent
`Owner’s positions taken in litigation (id. at 13–14).
`Patent Owner appears to agree that the terms “pocket” and “cavity”
`are interchangeable as they use the term “pocket/cavity” to describe the
`cavities 30, 34 in the housing. PO Resp. 2–3. Although Patent Owner
`contests Petitioner’s claim constructions generally, rather than address them
`directly, Patent Owner’s argument focuses on whether an artifact from the
`injection molding process can be considered a “pocket/cavity,” that is, what
`Petitioner categorizes as Patent Owner’s positions taken in litigation. Id. at
`14–18. In particular, Patent Owner argues that a protrusion is not a cavity or
`pocket. Id. at 17. However, this position does not appear to run counter to
`the claim construction proposed by Petitioner. A protrusion is not a partially
`enclosed space. Patent Owner further acknowledges that Petitioner’s cited
`evidence of Patent Owner’s positions taken in litigation shows the protrusion
`within a “larger pocket/cavity,” which also does not counter Petitioner’s
`claim construction. Id. at 16.
`In view of the above, we agree that the terms “pocket” and “cavity”
`are interchangeable and therefore have the same meaning. We further
`construe “pocket” and “cavity” to mean a partially enclosed space as
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`Petitioner’s proposal is consistent with the portions of the Specification that
`relate to these claim limitations. See e.g., Ex. 1001, 2:17–22, 64–67.
`2. “Lead receiving compartments . . . in the peripheral
`sidewall . . .”
`Petitioner submits a proposed construction for the phrase “lead
`receiving compartments are formed in the peripheral sidewall of the reflector
`housing,” as recited in claim 1, and “said reflector housing further having
`. . . a peripheral sidewall . . . , said peripheral sidewall having a plurality of
`lead receiving compartments formed therein,” as similarly recited in claim
`15. Pet. 14–18. Petitioner argues that these phrases should be construed to
`mean “partially enclosed spaces adjacent to a side surface that can receive a
`lead.” Id. at 18 (emphasis omitted).
`In support of its argument, Petitioner points to the fact that the ’087
`patent Specification in one embodiment equates a “lead receiving
`compartment” and a “cavity.” Id. at 15 (citing Ex. 1001, 2:64–66, Fig. 2).
`Petitioner also argues that the Specification shows that the leads are not
`necessarily within their respective compartments, and that a compartment
`needs only to “be capable of receiving that lead.” Id. Thus, Petitioner takes
`the position that a “lead receiving compartment” is “a partially enclosed
`space that can receive a lead.” Id. (emphasis omitted). Petitioner also points
`to dictionary definitions of “compartment” and “receive” in support of this
`position. Id. at 15–16.
`With respect to the “location” of the “lead receiving compartment,”
`Petitioner argues that “[t]he specification uses the terms sidewall and
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`peripheral wall interchangeably” and that these terms both “indicate a
`location adjacent to a side surface.” Id. at 16.
`However, Petitioner does not cite any use of the term “peripheral
`sidewall” in the Specification or address whether this term differs from
`merely a “sidewall” or a “peripheral wall.” Further, Petitioner’s evidence
`does not support Petitioner’s construction for the “location” of the “lead
`receiving compartment.” For example, Petitioner’s definitions of “sidewall”
`all refer to a “wall,” however, there is no mention of a “wall” in Petitioner’s
`claim construction. See Pet. 17. The Petition provides no explanation why
`the claimed “sidewall” is reduced to a “side surface” or how the term
`“peripheral” modifies the “sidewall.”5 See generally id. at 14–18.
`Among other aspects of the claimed phrase, the Petition also does not
`address the “formed in” or “formed therein” aspects of the phrase in the
`proposed construction. Rather, Petitioner’s construction inappropriately
`reads this limitation out of the claims.
`Thus, we do not accept Petitioner’s proposed claim construction for
`the phrase “lead receiving compartments are formed in the peripheral
`sidewall of the reflector housing,” as recited in claim 1, and “said reflector
`housing further having . . . a peripheral sidewall . . . , said peripheral
`sidewall having a plurality of lead receiving compartments formed therein,”
`
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`5 We note that the Petition does not rely on or cite to the Declaration of
`Michael Pecht (Ex. 1003) in support of any of the claim construction
`positions. See generally Pet. 10–18.
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`as similarly recited in claim 15, to mean “partially enclosed spaces adjacent
`to a side surface that can receive a lead.” Id. at 14, 18 (emphasis omitted).
`Patent Owner argues that Petitioner also erred in its construction of
`“peripheral sidewall.” PO Resp. 18–21. Patent Owner provides a marked-
`up view of Figure 4 of the ’087 patent, reproduced below, to show “[a]n
`exemplary peripheral sidewall.” Id. at 19–20.
`
`
`Figure 4 of the ’087 patent is a cross-sectional view of an optical
`device (Ex. 1001, 1:30–31), with red rectangles added by Patent Owner to
`emphasize the peripheral sidewall (PO Resp. 20).
`In our institution decision, we generally agreed with Patent Owner’s
`arguments concerning the construction of “peripheral sidewall” (see Prelim.
`Resp. 13–15) and construed “peripheral sidewall” as “a feature having a
`wall-like appearance arranged at the periphery of the reflector housing”
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`(Dec. 9). Patent Owner and Petitioner now both agree that this is the correct
`construction of the term “peripheral sidewall.” See PO Resp. 19, Tr. 5
`(Petitioner’s counsel: “The Board said and the parties have now agreed that
`a peripheral sidewall is a feature having a wall-like appearance arranged at
`the periphery of the reflector housing.”); id. at 18 (Patent Owner’s counsel:
`“[W]e fully endorse the claim construction [of peripheral sidewall].”). Thus,
`based on the parties’ agreement and for the reasons given in our institution
`decision, we construe “peripheral sidewall” as a feature having a wall-like
`appearance arranged at the periphery of the reflector housing.
`Patent Owner also argues that implicit in the claims is that “the inner
`portions of the peripheral sidewall 26 of the reflector housing provide
`‘pockets’ or ‘cavities.’” PO Resp. 19 (citing Ex. 1001, 2:24–26 (“The
`second cavity 34 is surrounded on four sides by the peripheral wall 26,
`providing rigidity and preventing cracks due to flexing.”), 3:17–25). Patent
`Owner does not identify the alleged language in the claims that gives this
`implication, and we find none. Rather, Patent Owner’s argument only cites
`to the discussion of an embodiment in the Specification. Though the
`Specification informs the inquiry into the meaning of the terms in the claims,
`we resist Patent Owner’s suggestion to read features of the Specification into
`the claims. Thus, we do not agree with Patent Owner that the “peripheral
`sidewall” in the claims is required to form the walls of the first or second
`cavities.
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`Patent Owner argues that if we reject Petitioner’s claim construction
`here, “the Petition’s defect on this term conclusively confirms that
`Petitioner[] failed in this proceeding.” Sur-Reply 5. This is because
`the Supreme Court has instructed, with regard to inter partes
`reviews, that “[i]n all these ways, the statute tells us that the
`petitioner’s contentions, not the Director’s discretion, define the
`scope of the litigation all the way from institution through
`conclusion.” SAS Institute, Inc., 138 S. Ct. at 1357. Further,
`Petitioner[] must include, in the Petition, “how the challenged
`claim is to be construed” and “how the construed claim is
`unpatentable” under the challenged grounds. 37 C.F.R.
`§ 42.104(b)(3)-(4).
`Id. at 4–5.
`We do not agree with Patent Owner that because of SAS, a petition’s
`incorrect claim construction “conclusively” or necessarily determines that a
`petition fails. Id. at 5. Though an incorrect claim construction in a petition
`can result in the Board finding that the petition has not shown the claims to
`be unpatentable, that is not necessarily the case. Rather, we analyze
`Petitioner’s positions in view of our claim construction, and in view of both
`parties’ additional arguments below. See e.g., Ericsson Inc. v. Intellectual
`Ventures I LLC, 901 F.3d 1374, 1380 (Fed. Cir. 2018) (remanding to the
`Board to analyze Petitioner’s new position in the Reply on how the art
`taught the claim term based on the Board’s claim construction).
`In summary, and as discussed above, we construe “peripheral
`sidewall” as a feature having a wall-like appearance arranged at the
`periphery of the reflector housing. Further, we reject Petitioner’s
`construction of the broader phrases and Patent Owner’s further requirement
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`that specific structures define the “peripheral sidewall.” We further reject
`Patent Owner’s reading of SAS, which would require us to dismiss the
`Petition based on our rejection of certain of the Petitioner’s claim
`constructions.
`
`3. Other Terms
`We decline to provide an express construction for any other terms in
`the ’087 patent because we determine that no such construction is required
`for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need
`be construed that are in controversy, and only to the extent necessary to
`resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs.
`in the context of an inter partes review).
`D. Obviousness over Kyowa
`Petitioner asserts that claims 1, 6–8, 15, and 17 would have been
`obvious over Kyowa, citing record evidence. Pet. 30–44. Petitioner asserts
`that Kyowa teaches an optical device with an LED similar to the claimed
`optical device. Id. at 30–31 (citing e.g., Ex. 1009 ¶ 1).6 Petitioner notes that
`Kyowa teaches “an electronic component chip [17a, b] . . . mounted to a lead
`frame [13] and sealed in a resin package [11],” and that the lead frame has a
`plurality of leads [21–24]. Id. at 31 (quoting Ex. 1009 ¶ 1); see also id. at
`
`
`6 We note that Petitioner’s analysis of Kyowa’s teachings with respect to
`claim 15 and its dependent claim 17 largely mirrors Petitioner’s analysis of
`claim 1. Compare Pet. 30–39, with id. at 40–44.
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`20. Petitioner cites Figures 5(a)–(c) as showing the formation of a housing
`(resin package 11) over the lead frame. Id. at 31.
`Petitioner provides marked-up versions of Kyowa Figures 2 and 3,
`reproduced below (id. at 32) with blue highlighting added by Petitioner to
`show the first cavity in the housing (id. at 33).
`
`
`“Figure 2 (left) is a plan view showing the light emitting side of the
`device.” Id. at 32. “Figure 3 (right) is a cross sectional view[] taken along
`line III-III of figure 2.” Id. Figure 3 further shows the optical device
`attached to a printed circuit board 25. Ex. 1009 ¶ 15.
`We agree with and adopt Petitioner’s contentions regarding the
`undisputed limitations of claims 1, 6–8, 15, and 17. Pet. 30–44; Ex. 1003
`¶¶ 44–67; Ex. 1019 ¶¶ 3–8. Petitioner’s reliance on further aspects of
`Kyowa are discussed below in reference to the disputed limitations.
`1. Peripheral Sidewall
`Patent Owner argues that “Petitioner[] fail[s] to demonstrate that
`Kyowa includes . . . a peripheral sidewall” as required by independent
`claims 1 and 15. PO Resp. 22. Patent Owner first argues that the Petition
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`fails to “identify a structure in Kyowa corresponding to the claimed
`peripheral sidewall,” and that the statements concerning the peripheral
`sidewall are conclusory. Id. at 23.
`In the Petition, Petitioner states that “a first end face is shown as the
`plan and top surfaces of the housing [11] in figures 2 and 3 respectively [of
`Kyowa],” and that “a second end face is shown as the bottom surface of the
`housing [11] in figure 3.” Pet. 32–33. Petitioner asserts that Kyowa’s
`“peripheral sidewall extend[s] between the first and second surfaces [i.e.,
`end faces] . . . shown in the cross-sectional view” of Figure 3. Id. at 33. As
`support for this position, Petitioner cites to the Pecht Declaration (id.), which
`states: “The area between the edge of the pocket/cavity and the outer edge of
`[Kyowa’s] device comprises a peripheral sidewall” (Ex. 1003 ¶ 49).
`From the above, we do not agree with Patent Owner’s assertion that
`Petitioner fails to “identify a structure in Kyowa corresponding to the
`claimed peripheral sidewall,” or that Petitioner’s position is merely
`conclusory, as asserted by Patent Owner. See PO Resp. 23. Rather, as
`identified by Petitioner, Kyowa teaches a peripheral sidewall under the
`construction agreed to by both parties, namely “a feature having a wall-like
`appearance arranged at the periphery of the reflector housing.” The main
`cavity in Kyowa that houses the LED (i.e., the first pocket or cavity) defines
`a wall at the periphery of the housing, which gives the outer periphery a
`“wall-like” appearance. See Ex. 1003 ¶ 49 (Pecht Decl.); see also Ex. 1019
`¶ 4 (Second Pecht Decl.) (“Kyowa and Matsumura references both depict
`features that have a wall-like appearance arranged at the periphery of a
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`reflector housing. Those features are solid structures that extend from the
`top to the bottom around the outside of the reflector housing, precisely as
`depicted in the ’486 patent.”). As required by the claims, this “peripheral
`sidewall” also extends between the first and second end faces, as shown in
`the cross-sectional view of Kyowa Figure 3.
`Patent Owner attempts to discredit the testimony of Dr. Pecht, arguing
`that he “confirmed repeatedly [in his deposition] that he treated the claimed
`‘sidewall’ as synonymous with a surface of the references’ housings.” PO
`Resp. 24 (emphasis added). Patent Owner continues: “[B]y ignoring the
`interior shape of the package features, and focusing solely on the outer
`surface, Dr. Pecht failed to provide any credible opinion on whether the
`asserted references disclose a ‘peripheral sidewall,’ or a ‘feature having a
`wall-like appearance.’” Id. at 26. Patent Owner further states that Dr.
`Pecht’s analysis “renders a wall indistinguishable from a solid cube” (Sur-
`Reply 2); however, Patent Owner’s statement ignores the presence of the
`first cavity in Kyowa.
`Notably, Patent Owner omits any discussion of where Dr. Pecht noted
`the features in Kyowa that teach a side wall that, together with other features
`on the outer periphery, form a “wall-like” feature or a “peripheral sidewall”
`as claimed. See e.g., Ex. 2006, 59:18–61:11, 62:4–63:8. Dr. Pecht’s
`testimony considers the various features as a whole that make up the
`peripheral sidewall (id.), while Patent Owner relies on Dr. Pecht’s discussion
`of individual parts or aspects of the “peripheral sidewall,” and highlights
`
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`only parts of his testimony, to make it appear that Dr. Pecht’s testimony is
`more limited than it is. PO Resp. 24–27; Sur-Reply 2–3.
`Patent Owner also argues that Kyowa does not teach a “peripheral
`sidewall” because of shortcomings in Petitioner’s position concerning the
`second pocket/cavity. PO Resp. 27. Patent Owner further argues that as per
`the “construction of ‘peripheral sidewall,’” “[a] wall-like appearance
`requires certain proportions to be meaningful; otherwise ‘wall-like’ is
`rendered meaningless.” Id. at 28.
`However, Patent Owner’s argument is based on a portion of its claim
`construction position, rejected above, that requires the peripheral sidewall to
`define the second pocket. See e.g., id. at 19 (asserting that the claims
`implicitly require that “the inner portions of the peripheral sidewall 26 of the
`reflector housing provide ‘pockets’ or ‘cavities’”). Though the peripheral
`sidewall must be “wall-like,” there is no requirement in the claims that either
`of the first or second cavity defines some portion of the peripheral sidewall.
`The claims do not require that the second cavity be large enough to define a
`wall that would be considered part of the peripheral sidewall, as asserted by
`Patent Owner. Id. at 27–28.
`At the same time, as discussed above, we note that at a minimum, the
`main cavity in Kyowa that houses the LED (i.e., the first pocket or cavity)
`defines a wall at the periphery of the housing, which gives the outer
`periphery a “wall-like” appearance. See Ex. 1003 ¶ 49; Ex. 1019 ¶ 4. Thus,
`though the claims do not require that the peripheral sidewall be defined by
`either the first or the second cavity, they also do not prevent it.
`
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`In addition to Petitioner’s position concerning Kyowa teaching a
`peripheral sidewall, Petitioner also comes to the same result by analyzing
`Kyowa under the method Patent Owner used to identify the peripheral
`sidewall of the ’087 patent (see PO Resp. 19–20). See Reply 17–18;
`Ex. 1019 ¶¶ 6–8. We do not review this analysis, as Dr. Pecht states that this
`is “not an exercise that a person having ordinary skill in the art would
`undertake to determine the existence or absence of a wall-like feature”
`(Ex. 1019 ¶ 6), which Patent Owner does not contest (see Sur-Reply 5–6).
`Patent Owner overly generalizes Dr. Pecht’s statement by asserting that “Dr.
`Pecht disparages any evaluation of the asserted references that actually
`examines them for a wall-like structure” and thus the Board has, in essence,
`no way of determining what is a peripheral sidewall. Id. at 5. We do not
`agree with Patent Owner’s understanding of Dr. Pecht’s statement. Further,
`we do not agree that this statement impacts Petitioner’s positions on Kyowa
`outside of applying Patent Owner’s style of analyses.
`In the Patent Owner Response, Patent Owner identified the peripheral
`sidewall by placing red boxes around portions of Figure 4 of the ’087 patent
`(reproduced below). PO Resp. 20. We note that Patent Owner does not
`provide testimony concerning the creation of this modified figure.
`
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`Figure 4 of the ’087 patent is a cross-sectional view of an optical
`device (Ex. 1001, 1:30–31), with red rectangles added by Patent Owner to
`emphasize the peripheral sidewall (PO Resp. 20).
`Dr. Pecht criticizes this method as being vague and arbitrary with
`respect to the thickness of the walls in particular. Ex. 1019 ¶ 6. We agree
`with Dr. Pecht that the specific location of the boxes appears to be
`imprecise. For example, it is not clear why the boxes are not positioned in
`identical locations on either side of the optical device, though they are close.
`However, this also speaks to the level of precision that Patent Owner
`believes is necessary to determine what a peripheral sidewall is.
`In view of the foregoing, we find Petitioner has made a persuasive
`showing that Kyowa teaches or suggests a peripheral sidewall as required by
`independent claims 1 and 15.
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`2. Second Cavity
`Patent Owner argues that the Petition fails to show that Kyowa
`teaches or suggests a second pocket or cavity. PO Resp. 27–31.
`Petitioner admits that Kyowa Figure 3 does not show a second pocket
`opening in the second end face (id. at 34–35), based on the irregular cut of
`that cross-section;7 however, Petitioner argues that a pocket is formed during
`the injection molding process. Pet. 33–35 (citing e.g., Ex. 1009 Figs. 5(b)–
`(c)). In particular, Petitioner asserts that the resin injection hole 34 “extends
`into the cavity 32,” so that after resin injection “a circular artifact will
`provide a second pocket/cavity in the bottom of the housing.” Id. at 34.
`Petitioner cites Figure 5(b), reproduced below as marked-up by Petitioner, as
`showing the resin injection hole 34 (highlighted in purple). Id. at 33–34.
`
`
`
`Marked-up Kyowa Figure 5(b) shows a section view of part of a resin
`molding process with the “mold in a clamped state.” Ex. 1009 ¶ 13.
`
`
`7 Line III-III of Figure 2. Pet. 35; see also Ex. 1009 ¶ 13 (“FIG. 3 shows a
`cross sectional view across line III-III of FIG. 2.”).
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`Petitioner further argues that “[t]o the extent that it is argued that the
`second pocket/cavity somehow disappears after the injection molding
`process, . . . it would have been obvious based on Kyowa and the
`background knowledge of a person having ordinary skill.” Pet. 35–36.
`Petitioner asserts that “[a] person having ordinary skill in the art would have
`understood that the indicated configuration of the resin injection hole would
`result in an indentation into the back surface of the resulting housing.” Id. at
`36 (citing Ex. 1014; Ex. 1015; Ex. 1003 ¶ 52).
`Patent Owner argues that “Petitioner[] rel[ies] on the mold shown in
`Fig. 5(b) and 5(c), but there is no evidence establishing the type or size of
`indentation that would result in Kyowa’s device from the disclosed mold”
`and that “the dimensions of any indentation that might result on the back
`surface of Kyowa’s housing cannot be inferred from Kyowa’s Figure 5(b)
`showing a clamped mold.” PO Resp. 27, 28.
`We first note that the challenged claims in the present proceeding do
`not require particular dimensions or proportions for the second cavity.
`Secondly, though Patent Owner implies that an indentation may not result in
`Kyowa, they provide no evidence why the resin would not conform to the
`shape of the mold. F
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