Filed on behalf of: Seoul Viosys Co., Ltd.
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`Entered: April 28, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
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`SATCO PRODUCTS, INC.,
`Petitioner,
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`v.
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`SEOUL VIOSYS CO., LTD.,
`Patent Owner.
`_______________________
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`Case IPR2020-00704
`Patent No. 8,860,331
`_______________________
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`PATENT OWNER’S SUR-REPLY
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`Entered: April 28, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
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`SATCO PRODUCTS, INC.,
`Petitioner,
`
`v.
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`SEOUL VIOSYS CO., LTD.,
`Patent Owner.
`_______________________
`
`Case IPR2020-00704
`Patent No. 8,860,331
`_______________________
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`PATENT OWNER’S SUR-REPLY
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`IPR2020-00704 (USP 8,860,331)
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`TABLE OF CONTENTS
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`Patent Owner’s Sur-Reply
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`I.
`Introduction ...................................................................................................... 1
`Claim Construction – LED Chip ..................................................................... 2
`II.
`III. Claims 1-7, 10, And 11 Are Patentable Over Petitioner’s Proposed
`Combination Of Martin With Uang And/Or Masatoshi And Setlur ............... 7
`A.
`Petitioner Fails To Support Its Contention That A POSITA
`Would Have Modified Martin Based On Uang And/Or
`Masatoshi ............................................................................................... 7
`Petitioner’s new expert fails to show that a POSITA
`would have modified Martin to achieve the claimed
`invention ...................................................................................... 9
`Petitioner’s excuses for providing no evidence to show
`how a POSITA would implement its proposed
`modification fail ........................................................................ 14
`Petitioner’s attorney argument fails to justify why a
`POSITA would have replaced Martin’s bridge rectifier
`with a bridge rectifier composed entirely of GaN-based
`LEDs ......................................................................................... 17
`Petitioner’s contorted reliance on arguments for
`patentability fails to justify its proposed combination .............. 23
`A POSITA Would Not Have Found It Obvious To Further
`Modify Martin Based On Setlur .......................................................... 24
`C. Martin Does Not Disclose Or Suggest The Claimed LED Chip
`Comprising An Array / A Plurality Of Light Emitting Cells .............. 26
`Petitioner Failed To Meet Its Burden To Show That Setlur
`Discloses Claim 5’s Decay Time Limitation ...................................... 27
`IV. Claim 11 Is Patentable Over Nagai ............................................................... 27
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`B.
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`D.
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`A.
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`B.
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`Petitioner’s Argument That Nagai Discloses The Claimed LED
`Chip Rests On Its Erroneous Construction ......................................... 27
`The Board Should Reject Petitioner’s Argument About
`Obviousness Of The Decay Time Limitation ..................................... 28
`Conclusion ..................................................................................................... 28
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`V.
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`ii
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`TABLE OF AUTHORITIES
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`CASES
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` Page(s)
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`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) .............................................................. 15, 16, 21
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ................................................................................................ 17
`In re Magnum Oil Tools, Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ...................................................................... 8, 14
`Millennium Pharm., Inc. v. Sandoz Inc.,
`862 F.3d 1356 (Fed. Cir. 2017) .......................................................................... 23
`N. Am. Vaccine, Inc. v. Am. Cyanamid Co.,
`7 F.3d 1571 (Fed. Cir. 1993) ................................................................................ 6
`PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC,
`815 F.3d 747 (Fed. Cir. 2016) .............................................................................. 5
`Samsung Elecs. Co., Ltd. v. Elm 3DS Innovations, LLC,
`925 F.3d 1373 (Fed. Cir. 2019) .......................................................................... 16
`SIMO Holdings Inc. v. Hong Kong uCloudlink Network Tech. Ltd.,
`983 F.3d 1367 (Fed. Cir. 2021) ............................................................................ 5
`Spectra-Physics, Inc. v. Coherent, Inc.,
`827 F.2d 1524 (Fed. Cir. 1987) .......................................................................... 17
`Trivascular, Inc. v. Samuels,
`812 F.3d 1056 (Fed. Cir. 2016) ............................................................................ 7
`Trs. of Columbia Univ. in the City of New York v. Illumina, Inc.,
`620 F. App’x 916 (Fed. Cir. 2015) ..................................................................... 17
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`iii
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`STATUTES
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`Patent Owner’s Sur-Reply
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`35 U.S.C.
`§ 103 .................................................................................................................... 17
`§ 112 .................................................................................................................... 17
`§ 316(e) ............................................................................................................... 26
`REGULATIONS
`37 C.F.R. § 42.104(b)(3) ............................................................................................ 2
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`iv
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`Ex.
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`2001
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`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`2010
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`2011
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`2012
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`2013
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`2014
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`Exhibit List
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`Description
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`U.S. Patent No. 6,600,175 (“Baretz”)
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`Steven M. Kaplan, Wiley Electrical and Electronics Engineering
`Dictionary 36 (2004)
`U.S. Patent Application Publication No. 2008/0017871 (“Lee”)
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`Patent Assignment Cover Sheet
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`F.A. Ponce & D.P. Bour, Nitride-based Semiconductors for Blue and
`Green Light-emitting Devices, 386 Nature 351 (1997)
`Shuji Nakamura & Gerhard Fasol, The Blue Laser Diode: GaN
`Based Light Emitters and Lasers (1997) (Excerpt)
`PCT Publication No. WO 2004/023568 (“Sakai”)
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`European prosecution history of published patent application WO
`2004/023568
`U.S. Patent No. 8,294,165 (“Hattori”)
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`U.S. Patent Application Publication No. US 2004/0075399 (“Hall”)
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`U.S. Patent No. 9,112,121 (“Jung”)
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`Petition for Inter Partes Review, Satco Products, Inc. v. Seoul
`Semiconductor Co., Ltd., IPR2020-00750 (PTAB Apr. 1, 2020),
`Paper 2
`Toshiba Datasheet for TLRA155BP
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`Philips Lumileds Datasheet for LUXEON III Emitter (2006)
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`v
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`Description
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`Ex.
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`2015
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`2016
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`2017
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`2018
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`2019
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`2020
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`2021
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`2022
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`2023
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`2024
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`2025
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`2026
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`Screen capture of LUXEON III Emitter webpage, archived at
`https://web.archive.org/web/20060421222941/http://www.lumileds.c
`om/products/family.cfm?familyId=7 (Apr. 21, 2006)
`OSRAM Opto Semiconductors Datasheet for Power TOPLED
`(2006)
`Fairchild Semiconductor Datasheet for 1N4001-1N4007 (2001)
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`Fairchild Semiconductor Datasheet for 1N4001-1N4007 (2009)
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`Screen capture of Mouser Electronics webpage for 1N4003, archived
`at https://web.archive.org/web/20040511213936/
`http://www.mouser.com/index.cfm?handler=displayproduct&lstdisp
`productid=222126&e_categoryid=93&e_pcodeid=51234 (May 11,
`2004)
`Deposition of P. Morgan Pattison Ph.D., dated December 1, 2020
`(“Pattison Dep.”)
`PCT Publication No. WO 2004/082032 (“Rossner,” English
`translation) filed in Satco Products, Inc. v. Seoul Semiconductor Co.,
`Ltd., IPR2020-00750
`PCT Publication No. WO 2004/082032 (“Rossner,” Original
`German version) filed in Satco Products, Inc. v. Seoul
`Semiconductor Co., Ltd., IPR2020-00750
`Affidavit certifying English translation of PCT Publication No. WO
`2004/082032 to Rossner filed in Satco Products, Inc. v. Seoul
`Semiconductor Co., Ltd., IPR2020-00750
`Deposition of Peter W. Shackle Ph.D., Satco Products, Inc. v. Seoul
`Semiconductor Co., Ltd., IPR2020-00750 (PTAB Dec. 11, 2020)
`(“Shackle Dep.”)
`Declaration of Alan Doolittle, Ph.D. in Support of Patent Owner
`Response (“Doolittle”)
`Curriculum Vitae of Alan Doolittle, Ph.D.
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`vi
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`Description
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`Ex.
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`2027
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`2028
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`Declaration of Charles H. Sanders in Response to Petitioner’s
`Second Objections to Patent Owner’s Exhibits [served, not filed]
`Deposition of Victor D. Roberts Ph.D., dated April 14, 2021
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`vii
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`I.
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`Introduction
`Petitioner’s Reply confirms that Petitioner lacks substantial evidence to
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`support its grounds. Petitioner offers no rebuttal expert testimony in response to
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`Patent Owner’s ample evidence showing that a person of ordinary skill in the art
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`(POSITA) would not have modified Martin to create a bridge rectifier composed
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`entirely of LEDs, as Petitioner proposes. Instead, Petitioner abandoned
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`Dr. Pattison (Petitioner’s expert at the institution stage) after he conceded that a
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`POSITA would have needed to address reverse voltage breakdown, and that he had
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`not done so.
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`Petitioner now submits a new declaration from a new expert, Dr. Roberts,
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`but Petitioner tellingly did not ask Dr. Roberts to address obviousness. His
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`declaration, which was limited to modeling a bridge that does not provide power to
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`any LEDs outside of the bridge, fails to revive Petitioner’s superficial obviousness
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`arguments against claim 1. Lacking evidence demonstrating obviousness,
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`Petitioner resorts to a convoluted argument that the claims here are somehow
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`obvious because European claims were not obvious over Martin. But Petitioner’s
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`contorted attorney argument is no answer to the overwhelming, unrebutted
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`evidence Patent Owner presented.
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`Petitioner likewise offers no evidence to rebut Patent Owner’s evidence that
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`a POSITA would not have been motivated to modify Martin in view of Setlur as
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`1
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`proposed in the Petition. Having decided not to introduce further testimony from
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`Dr. Pattison, Petitioner fails to recover from his concession that he would not have
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`re-arranged phosphors as disclosed in Setlur’s Figure 4. Petitioner also continues
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`to refuse to acknowledge Martin’s description of its phosphor arrangements and
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`does not explain why a POSITA would use a slow phosphor in Martin’s device.
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`Petitioner’s arguments against both independent claims, claims 1 and 11,
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`also fail because the construction Petitioner applied conflicts with the intrinsic
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`record, as Dr. Pattison admitted. Petitioner tries to manufacture conflicts between
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`Patent Owner’s construction and other intrinsic evidence to level the field, but
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`Petitioner’s effort fails because there is no conflict.
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`II. Claim Construction – LED Chip
`In its Reply, Petitioner neither advocates for the construction Petitioner
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`applied in its grounds nor disputes that its construction conflicts with the intrinsic
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`record. Reply 2-6; POR 9-15.
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`Petitioner had to explain “[h]ow [each] challenged claim is to be construed.”
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`37 C.F.R. § 42.104(b)(3), but instead Petitioner merely alleged that the disputed
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`claim terms—“the LED chip comprising: an array of light emitting cells” (Pet. 35)
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`and “a light emitting diode (LED) chip comprising a plurality of light emitting
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`cells” (id. 69)—should be “given their ordinary and customary meaning.” Id. 11.
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`But as both sides’ experts agreed, these terms have no “ordinary and customary
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`2
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`meaning” in the context of the ’331 patent. POR 9. Petitioner does not contend
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`otherwise. Reply 2-6.
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`Petitioner never identifies, much less argues for, any non-plain meaning
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`construction. Id. Instead, because Petitioner cannot dispute that its implicit
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`construction conflicts with intrinsic evidence (namely Hattori), Petitioner tries to
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`minimize the conflict and attacks Patent Owner’s proposed construction, without
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`proposing one of its own.1 Id. (contending, e.g., that “Hattori is at the bottom of
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`the heap” of intrinsic evidence). Petitioner’s attacks fail.
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`Contrary to Petitioner’s contentions, Patent Owner’s construction—that the
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`claimed “LED chip” is an arrangement of / two or more discrete light emitting
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`semiconductor structures on a growth substrate—fits with the “claims, the
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`specification, and the claims of a parent patent.” Id. 2. Petitioner cursorily argues
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`that, because claim 1 recites a “single substrate” and claim 11 does not, neither
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`claim requires a “growth substrate.” Id. 2-3. Petitioner’s argument is misplaced
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`because the fact that only claim 1 restricts the claims to a “single substrate” has no
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`1 Petitioner also fails to respond to Patent Owner’s explanation that, besides
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`tracking Hattori, Patent Owner’s construction also accords with extrinsic evidence
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`including multiple other patents and expert testimony. POR 10-13, 13 n.2, 15;
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`Ex. 2025 ¶¶63, 68-70.
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`3
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`bearing on whether both claims require a “growth substrate,” as properly
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`construed.
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`Petitioner argues that Patent Owner’s construction “improperly ‘limit[s]
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`claim scope to preferred embodiments.’” Reply 4-5. Not so. Petitioner points to
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`the ’331 patent’s statement that “light emitting cells 30 are … positioned on a
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`substrate 20” and argues that the specification would have needed to use the verbs
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`“‘grown,’ ‘deposited,’ or ‘formed’” to align with Patent Owner’s construction.
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`Id. 4-5; Ex. 1001, 8:30-31. But the “light emitting cells” are “positioned” on the
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`growth “substrate 20” because that is where they are grown. Ex. 1001, 8:30-31.
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`As Dr. Doolittle explained, “[c]olumn 8, generally starting in Line 30 … is very
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`consistent with [item 20] being the growth substrate.” Ex. 1056, 48:23-49:22.
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`Petitioner does not contest that “substrate 20” is a growth substrate; both materials
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`the ’331 patent identifies for “substrate 20”—“Al2O3” (i.e., sapphire) and “SiC,”
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`Ex. 1001, 8:47-51—“are common substrates for growth of III-nitride LEDs.”
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`Ex. 2025 ¶131.
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`Petitioner is also incorrect that Patent Owner reads “the flip-chip
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`embodiment … out of the claim.” Reply 4. Figure 6 of the ’331 patent, copied
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`below, is “flip-chip type LED” that may have a “roughened surface” on the
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`“bottom surface of the substrate” 20. Ex. 1001, 9:20-21, 9:37-38, 21:36-37.
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`Reply 3; Ex. 1001, Fig. 6. Petitioner does not argue that Patent Owner’s
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`construction excludes this flip-chip embodiment; it does not.
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`Petitioner relies exclusively on an alternative embodiment. The
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`specification states, “Alternatively, the substrate 20 may be separated in FIG. 6 and
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`the roughened surface may be formed on a bottom surface of the first conductive
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`type semiconductor layer 25.” Ex. 1001, 21:36-40. The ’331 patent does not state
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`that this alternative is an LED chip (singular) comprising light emitting cells
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`(plural), as the claims require. Regardless, Patent Owner’s construction need not
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`encompass this alternative flip-clip configuration, which is not described as a
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`preferred embodiment. SIMO Holdings Inc. v. Hong Kong uCloudlink Network
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`Tech. Ltd., 983 F.3d 1367, 1379 (Fed. Cir. 2021) (reversing a district court’s
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`construction because the correct construction “simply leaves out some alternative
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`embodiments” that are not identified as “preferred embodiments”) (original
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`emphasis); PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d
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`747 (Fed. Cir. 2016) (reversing the Board, and explaining that avoiding the
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`exclusion of preferred embodiments “does not mean, however, that each and every
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`claim ought to be interpreted to cover each and every embodiment”).
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`Petitioner next distorts Patent Owner’s construction to argue that it conflicts
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`with certain claims of a parent to the ’331 patent. Reply 5. Even if there were
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`some conflict (and there is not), a dependent claim—let alone one in a different
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`patent—cannot force a construction at odds with other intrinsic evidence. N. Am.
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`Vaccine, Inc. v. Am. Cyanamid Co., 7 F.3d 1571, 1577 (Fed. Cir. 1993) (“The
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`dependent claim tail cannot wag the independent claim dog.”). Regardless, there is
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`no conflict between Patent Owner’s construction and dependent claim 11 of the
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`parent patent, which requires that “light emitting cells are separate from a growth
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`substrate,” Ex. 1057, claim 11, because Patent Owner’s construction does not
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`require direct contact. Instead, Patent Owner’s construction allows the light
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`emitting cells to be separated from the growth substrate by being grown after an
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`optional buffer layer, as the specification discloses. Ex. 1001, 8:53-54.
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`Thus, Petitioner’s criticisms of Patent Owner’s construction fail. The Board
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`should adopt Patent Owner’s construction for the reasons Patent Owner explained.
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`POR 8-15.
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`6
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`III. Claims 1-7, 10, And 11 Are Patentable Over Petitioner’s Proposed
`Combination Of Martin With Uang And/Or Masatoshi And Setlur
`A.
`Petitioner Fails To Support Its Contention That A POSITA
`Would Have Modified Martin Based On Uang And/Or Masatoshi
`Patent Owner explained in detail that Petitioner has failed to show “how” or
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`“why” a POSITA would combine Martin with Uang and/or Masatoshi.2
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`POR 24-59. Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016)
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`(original emphasis). Petitioner responds with no expert testimony to explain
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`“how” or “why” a POSITA would have modified Martin to create a bridge rectifier
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`composed entirely of LEDs, as Petitioner proposes. Petitioner tellingly submits no
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`further testimony from its original expert, Dr. Pattison, and did not ask its new
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`expert, Dr. Roberts, to address obviousness. Ex. 2028 8:12-17.
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`Petitioner now admits that a POSITA would have needed “to account for
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`reverse break-down voltage” in trying to implement the modified bridge rectifier it
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`proposes. Reply 16; see also Ex. 2028 12:5-9. Petitioner also does not contest that
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`Petitioner failed to do so in its Petition, and Petitioner’s original expert,
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`Nor does Petitioner dispute that “the Board correctly rejected Petitioner’s
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`contention that Martin alone satisfies claim 1’s requirement for an ‘LED chip
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`comprising … a bridge rectifier.’” POR 23-24.
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`Dr. Pattison, conceded that he had not done so in his declaration. Reply 16; Ex.
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`2020, 76:22-77:7. Indeed, neither the Petition nor Petitioner’s Reply discuss
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`even a single example of how to implement the modified bridge rectifier Petitioner
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`proposes. Although the claims require “an array of light emitting cells connected
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`in series; and a bridge rectifier comprising a plurality of diode cells,”3 Petitioner
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`had its new expert model only a bridge circuit4 with its terminals shorted
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`together—i.e., the bridge is not connected to any separate array of light emitting
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`cells. Ex. 2028 29:14-31:5; see also id. 34:13-22.
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`Petitioner instead incorrectly argues that Petitioner did not need to explain
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`how to address reverse-breakdown voltage or provide evidence supporting how a
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`POSITA would have implemented Petitioner’s proposed modification of Martin.
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`Reply 16. But Petitioner had the burden to show with evidence how a POSITA
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`could have, and would have, arrived at the claimed invention. In re Magnum Oil
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`Tools, Int’l, Ltd., 829 F.3d 1364, 1379 (Fed. Cir. 2016). Petitioner’s failure to do
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`so is fatal.
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`3 All emphases added and internal quotation marks omitted unless otherwise noted.
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`4 Dr. Roberts did not model a bridge rectifier because no rectified power is
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`provided from the bridge. Ex. 2028 29:14-31:5, 34:13-22.
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`Similarly, in response to Patent Owner’s detailed dismantling of Petitioner’s
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`superficial alleged motivations for the proposed modification (POR 40-59),
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`Petitioner fails to respond with any contrary expert testimony. Petitioner briefly
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`responds that the prior art itself “provides an express motivation,” but none of
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`those prior art references provides a motivation to replace (and relocate) Martin’s
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`existing bridge rectifier with a modified bridge rectifier composed entirely of
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`LEDs, as Petitioner proposes. Reply 18. Petitioner resorts to trying to explain why
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`other claims’ patentability over Martin indicates that these claims are obvious. But
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`Petitioner’s convoluted attorney argument only highlights Petitioner’s lack of
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`substantial evidence showing how and why a POSITA would have modified
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`Martin as Petitioner proposes.
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`Petitioner’s new expert fails to show that a POSITA would
`have modified Martin to achieve the claimed invention
`Petitioner leads with a narrow criticism of Dr. Doolittle’s modeling based on
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`Dr. Roberts’ modeling, but fails to provide any evidence to show how a POSITA
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`would have modified Martin to achieve the claimed invention. Id. 13-15. The
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`parties and their experts agree on the basic facts: a POSITA would have designed
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`the bridge rectifier to prevent reverse voltage breakdown, and the proposed
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`combination would have had gallium nitride (GaN)-based LEDs having a reverse
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`breakdown voltage of at most 5V and a turn-on voltage of at least 3V. Ex. 2028
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`9
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`12:5-9; Ex. 2025 ¶¶109, 153, 188. Petitioner also does not dispute that, as LEDs
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`are added to each branch of a bridge rectifier, its turn-on voltage increases and thus
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`the bridge rectifier would supply less voltage for less time to LEDs powered by the
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`bridge rectifier. Ex. 2025 ¶197.
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`Petitioner provides no explanation at all of how a POSITA would have
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`addressed this critical design challenge. Petitioner ignores the issue by having Dr.
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`Roberts use a model where the bridge powers no LEDs. Ex. 2028 24:18-25:6 (“I
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`did not include LEDs, other than the LEDs in the bridge”); 34:13-22 (“There is no
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`LED external to the bridge that receives power.”). Dr. Roberts shorted the positive
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`and negative terminals of his bridge together, preventing it from powering
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`anything. Ex. 2028 29:14-17; Ex. 1058 ¶18.
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`To explain, Petitioner contends that a POSITA would have modified
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`Martin’s Figure 5 circuit design shown below.
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`10
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`Pet. 23 (annotated by Petitioner). But the “array of LEDs” (yellow) connected to
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`Martin’s bridge rectifier (blue) is missing from Dr. Roberts’ circuit, as he admitted.
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`Ex. 2028 29:18-31:2. Dr. Roberts’ circuit essentially strips Martin down to a
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`bridge that powers nothing external, as illustrated below with the shorted
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`connection circled in red.
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`Pet. 23 (modified from original with a shorted bridge).
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`11
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`That same shorted connection in Dr. Robert’s actual circuit (which has multiple
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`LEDs in each branch of the bridge instead of the silicon diode in each branch of
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`the bridge rectifier in Martin’s circuit) is also circled in red below.
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`Ex. 1058 ¶19 (annotated).
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`The claims require an “LED chip comprising[] an array of light emitting
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`cells connected in series[] and a bridge rectifier comprising a plurality of diode
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`cells.” Ex. 1001, 24:10-14. But the circuit Dr. Roberts modeled is not what the
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`claims require (nor what Martin discloses) because there is only a bridge and no
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`connection to an external array of light emitting cells.
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`Petitioner did not ask Dr. Roberts to model any circuit that would meet the
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`claims or fit with Martin. Petitioner instead gave Dr. Roberts the “sole
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`assignment” of responding to whether “it would require 36 LEDs per leg” of a
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`bridge rectifier “to avoid breakdown.” Ex. 2028 30:11-31:2. His modeling thus
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`provides no support for Petitioner’s arguments about how a POSITA would have
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`modified Martin.
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`Petitioner contends that “only 18 LEDs are needed per branch” of the bridge
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`to avoid reverse breakdown, as opposed to 36 LEDs, based on Dr. Roberts’
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`modeling a bridge with its terminals shorted together. Reply 14. Even in this
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`extreme case Petitioner and Dr. Roberts use to respond to Dr. Doolittle, their
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`bridge would require 72 (18 x 4) total LEDs and its “turn-on voltage is 108V.” Ex.
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`2028 15:2-5; Reply 14. Half (36) of those LEDs would be off during half of the
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`AC cycle, with the remaining half emitting light only when the instantaneous
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`voltage exceeds 108V. Ex. 2028 15:6-8; 18:18-20:8. Thus, only alternative halves
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`of the LEDs would turn on at a time, and only for about “a quarter” of the AC
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`cycle each. Id. 20:2-21:11.
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`In sum, Petitioner has shown that a bridge that supplies no power to any
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`external LED array, and thus differs from both the claims and Martin requires
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`72 LEDs to withstand Martin’s 180V peak voltage. All of those 72 LEDs would
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`be off 50% of the time, and only 36 of them would be on the other 50% of the
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`time. Ex. 1004 ¶¶15, 22. Petitioner does not contend that a POSITA would have
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`modified Martin to arrive at this circuit. Instead, Petitioner avoided that
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`question—Petitioner notably did not ask Dr. Roberts to address obviousness.
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`Ex. 2028 8:15-17. Petitioner merely contends that this evidence shows “Martin as
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`modified is operable.” Reply 14. Even if true, Petitioner failed to meet its burden
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`to prove obviousness.
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`Petitioner’s excuses for providing no evidence to show how
`a POSITA would implement its proposed modification fail
`Rather than respond with evidence of how (or why) a POSITA would have
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`implemented its proposed modification of Martin, Petitioner tries to excuse its
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`failure. Petitioner contends that a “lack of details” in the ’331 patent justifies its
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`failure. Reply 14. But Petitioner does not point to any particular “lack of details,”
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`and, unlike Martin, the ’331 patent discloses (and claims) driving an array of LEDs
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`with a bridge rectifier composed of LEDs. Regardless, Petitioner’s excuses do not
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`justify its failure to meet its burden. Magnum Oil, 829 F.3d at 1379.
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`Petitioner rests on a vague, superficial contention that a POSITA would
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`make “basic connections” “to interconnect the LEDs” in Martin, leaving
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`unaddressed the specifics how a POSITA would do so. Pet. 26. Petitioner now
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`contends that a bridge rectifier with 72 LEDs (Reply 14, Ex. 1058 ¶¶15, 17) would
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`be needed to withstand Martin’s “peak voltage of about 180 V,” which requires
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`many more than the 42 LEDs in Martin’s “6x7 monolithic array of LEDs.”
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`Ex. 1004, ¶¶15, 22. Petitioner never argued that the size of Martin’s array would
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`need to be increased (or attempted to justify doing so), and even if that were done,
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`Petitioner does not address how many LEDs, if any, could be driven by that bridge
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`rectifier.
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`Petitioner criticizes Patent Owner’s use of the 180V peak voltage Martin
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`discloses in responding to Petitioner’s arguments. Reply 14. But Petitioner has
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`never proposed—let alone tried to justify—that its modified version of Martin
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`would be designed for use at a lower peak voltage, and modeled no other peak
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`voltage. That a POSITA could select some other voltage does not help Petitioner
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`because Petitioner had the burden to show that a POSITA would have done so.
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`Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). And Patent
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`Owner’s point that “Petitioner has provided no basis to believe that [a lower
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`voltage] would solve the problem with Petitioner’s proposed bridge rectifier”
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`remains unanswered. POR 33. Petitioner could not introduce any evidence to
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`dispute Patent Owner’s point because using a lower voltage would not solve the
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`problems with Petitioner’s proposed modification of Martin.
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`Petitioner dismisses its failure to explain how a POSITA would have
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`modified Martin while avoiding reverse voltage breakdown by contending it “was
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`within the skill of the” POSITA. Reply 16. But again, Petitioner at best cursorily
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`argues that a POSITA could have figured out how to address reverse breakdown
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`voltage but has failed to show a POSITA would have done so (and how a POSITA
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`would have done so). Belden, 805 F.3d at 1073. Petitioner improperly assumes it
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`would have been “trivial” to make its proposed modification (even though Dr.
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`Roberts’ modeling confirms otherwise) because the ’331 patent does not mention
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`“technical problems” doing so, but Petitioner had the burden to prove this with
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`evidence. Samsung Elecs. Co., Ltd. v. Elm 3DS Innovations, LLC, 925 F.3d 1373,
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`1383 (Fed. Cir. 2019) (affirming the Board’s rejection of a similar argument). A
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`POSITA could have avoided reverse voltage breakdown, but not by using
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`Petitioner’s proposed approach.
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`Petitioner’s concession that “the prior art does not provide a detailed
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`discussion of how to account for reverse breakdown voltage either” only
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`emphasizes that Petitioner needed to fill the evidentiary gap. The prior art does not
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`disclose a bridge rectifier composed entirely of Martin’s III-nitride (i.e.,
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`GaN-based) LEDs that Petitioner proposes to use with Setlur’s phosphors. Pet.
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`25-27; Ex. 1004 ¶17; Ex. 2020, 82:4-17. Martin discloses a bridge rectifier
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`implemented in silicon circuitry, Uang discloses using silicon diodes D1-D4 in the
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`bridge rectifier “for preventing the LEDs from reverse breakdown,” and Masatoshi
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`does not disclose use of GaN-based LEDs. Ex. 1004 ¶24; Ex. 1005 ¶19; Ex. 2020,
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`43:19-44:9; Ex. 2025 ¶167. Petitioner points to Masatoshi’s bridge rectifier
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`composed of a single LED in each branch, but has never tried to account for
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`differences between Masatoshi’s LEDs and Martin’s GaN-based LEDs that
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`Petitioner proposes to use with Setlur’s phosphors. Pet. 25-27; Ex. 2020, 82:4-17;
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`Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (“differences between the prior
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`art and the claims at issue” is one of the “basic factual inquiries” under § 103).
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`Petitioner’s cited cases do not justify Petitioner’s failure to meet its burden
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`either. Trs. of Columbia Univ. in the City of New York v. Illumina, Inc., 620
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`F. App’x 916, 333 (Fed. Cir. 2015), concerns anticipation—not the obviousness
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`requirement to show how prior art teachings would have been combined.
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`Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1534 (Fed. Cir. 1987),
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`concerns § 112, which is not at issue.
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`Petitioner’s attorney argument fails to justify why a
`POSITA would have replaced Martin’s bridge rectifier with
`a bridge rectifier composed entirely of GaN-based LEDs
`Patent Owner’s detailed, well-supported demonstration that none of
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`Petitioner’s cursory motivations—simplicity of implementation, increased light
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`output efficiency, heat reduction, and cost reduction (Reply 18)—would have
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`prodded a POSITA to discard Martin’s conventional bridge rectifier in favor of one
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`composed entirely of LEDs stands unanswered by any contrary expert testimony.
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`POR 40-59; Ex. 2025 ¶¶178-212. Petitioner instead clings to Uang and Masatoshi,
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`contending that their “express teachings … would have motivated the POSA to
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`modify Martin as proposed in the Petition.” Reply 18. But neither reference
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`addresses the question Petitioner must answer: Why would a POSITA have
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`replaced Martin’s conventional bridge rectifier with one composed of GaN-based
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`LEDs, as Petitioner proposes?
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`Martin discloses implementing a “bridge rectifier” that “provide[s] nearly
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`direct current to the LED array” in a “submount,” e.g., “a silicon chip.” Ex. 1004
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`¶24. Petitioner proposes replacing Martin’
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