Trials@uspto.gov
`571-272-7822
`
`
` Paper 57
`
`Entered: November 4, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`SATCO PRODUCTS, INC.,
`Petitioner,
`
`v.
`
`THE REGENTS OF THE UNIVERSITY OF CALIFORNIA,
`Patent Owner.
`
`____________
`
`IPR2021-00662
`Patent 10,644,213 B1
`____________
`
`
`
`
`Before JENNIFER S. BISK, CHRISTOPHER L. CRUMBLEY, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Denying Petitioner’s Motion to Exclude
`Denying Patent Owner’s Motion to Exclude
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`571-272-7822
`
`
` Paper 57
`
`Entered: November 4, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`SATCO PRODUCTS, INC.,
`Petitioner,
`
`v.
`
`THE REGENTS OF THE UNIVERSITY OF CALIFORNIA,
`Patent Owner.
`
`____________
`
`IPR2021-00662
`Patent 10,644,213 B1
`____________
`
`
`
`
`Before JENNIFER S. BISK, CHRISTOPHER L. CRUMBLEY, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Denying Petitioner’s Motion to Exclude
`Denying Patent Owner’s Motion to Exclude
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`IPR2021-00662
`Patent 10,644,213 B1
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`I. INTRODUCTION
`Satco Products, Inc., filed a Petition requesting an inter partes review
`of claims 1 and 2 (“the challenged claims”) of U.S. Patent No. 10,644,213
`B1 (Ex. 1003, “the ’213 patent”). Paper 2 (“Pet.”). The owner of the ’213
`patent, Regents of the University of California, filed a Preliminary
`Response. Paper 9 (“Prelim. Resp.”).
`We instituted review on November 8, 2021. Paper 13 (“Inst. Dec.”).
`Subsequent to institution, Patent Owner filed a Request for Rehearing (Paper
`17), which we denied (Paper 18). Patent Owner then filed a Patent Owner
`Response (Paper 281, “PO Resp.”), Petitioner filed a Reply (Paper 33,
`“Reply”), and Patent Owner filed a Sur-Reply (Paper 43, “Sur-Reply”). A
`transcript of the oral hearing held on September 16, 2022, has been entered
`into the record as Paper 49 (“Tr.”).
`This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
`For the reasons that follow, Petitioner has demonstrated by a preponderance
`of the evidence that the challenged claims are unpatentable.
`
`II. BACKGROUND
`A. Real Parties in Interest
`Petitioner identifies itself as the real party in interest. Pet. 2. Patent
`Owner identifies itself as the real party in interest. Paper 4, 2. The parties
`do not raise any issue about real parties in interest.
`
`
`1 Patent Owner filed both confidential (Paper 27) and public, redacted (Paper
`28) versions of the Patent Owner Response as well as certain exhibits,
`pursuant to the protective order entered by the Board (Paper 56). This
`Decision does not refer to any confidential information filed under seal.
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`B. Related Matters
`The parties identify several related district court cases, including
`Satco Products, Inc. v. The Regents of the University of California,
`No. 2:19-cv-06444 in the Eastern District of New York (“the Satco
`Litigation”). Pet. 2–3; Paper 4, 2–3. Several other pending or terminated
`IPR proceedings challenge patents related to the ’213 patent, including
`IPR2020-00579, IPR2020-00695, IPR2020-00780, IPR2021-00661, and
`IPR2021-00794.
`In addition, several of the patents related to the ’213 patent are
`involved in several investigations at the ITC. Certain Filament Light-
`Emitting Diodes and Products Containing Same, No. 337-TA-1172 (ITC)
`(“the 1172 Investigation”); Certain Filament Light-Emitting Diodes and
`Products Containing Same (II), No. 337-TA-1220 (ITC) (“the 1220
`Investigation”) (collectively “the ITC Investigations”). The ALJ in the 1220
`Investigation has issued a Markman Order (Ex. 1038) and an Initial
`Determination (Ex. 2009).
`
`C. The ’213 Patent
`The ’213 patent, titled “Filament LED Light Bulb,” issued on May 5,
`2020, from an application filed on September 11, 2019. Ex. 1003, codes
`(22), (45), (54). The patent identifies that application as the last in a series
`of continuation applications that started with application no. 11/954,154
`(“the ’154 application”), filed on December 11, 2007. Id. at 1:7–42, code
`(63). Further, the patent claims priority to provisional application no.
`60/869,447 (“the ’447 provisional”), filed on December 11, 2006. Id.
`at 1:43–46, code (60). The ’213 patent incorporates by reference several
`patent applications (see id. at 1:43–7:66), including provisional application
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`no. 60/869,454 (“the ’454 provisional”), filed on December 11, 2006. Id. at
`7:16–23.
`The ’213 patent explains that “[i]n conventional LEDs, in order to
`increase the light output power from the front side of the LED, the emitt[ed]
`light is reflected by the mirror on the backside of the sapphire substrate
`or the mirror coating on the lead frame.” Ex. 1003, 10:49–52; see id. at
`8:16–21. But an LED’s emitting layer (active region) may reabsorb
`reflected light because the photon energy in the light “is almost [the] same as
`the band-gap energy” of the LED’s emitting layer. Id. at 10:55–57; see id. at
`8:22–25. Reabsorption by the LED’s emitting layer decreases the LED’s
`“efficiency or output power.” Id. at 10:58–60; see id. at 8:25–28.
`To address that deficiency, the ’213 patent discloses minimizing
`internal reflections within an LED by eliminating mirrors and/or mirrored
`surfaces, and minimizing reabsorption of light by the active region.
`Ex. 1003, 8:67–9:3. The patent explains that the invention concerns “a light
`emitting device comprised of a plurality of III-nitride layers” with “an active
`region that emits light, wherein all of the layers except for the active region
`are transparent for an emission wavelength of the light, such that the light is
`extracted effectively through all of the layers and in multiple directions
`through the layers.” Id. at 8:39–45, 11:35–42, code (57). The patent
`discloses a lead frame supporting a transparent plate and the III-nitride
`layers residing on the transparent plate, such that “the light emitted from the
`III-nitride layers is transmitted through the transparent plate in the lead
`frame.” Id. at 8:59–61. The patent also discloses several LED structures
`“according to the preferred embodiment of the present invention.” See, e.g.,
`id. at 9:32–10:21, Figs. 4–22.
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`Figures 8A and 8B in the ’213 patent (reproduced below) depict
`an LED structure “according to the preferred embodiment of the present
`invention”:
`
`
`Figures 8A and 8B illustrate an LED including “an emitting layer 800, an
`n-type GaN [gallium nitride] layer 802, a p-type GaN layer 804, a first ITO
`[indium tin oxide] layer 806, a second ITO layer 808, and a glass layer 810.”
`Ex. 1003, 13:50–55, Figs. 8A–8B; see id. at 9:44–46. The LED “is wire
`bonded 816 to a lead frame or sub-mount 818 using the bonding pads 820,
`822.” Id. at 13:59–61, Fig. 8A. Figure 8B shows a top view of “the lead
`frame 818.” Id. at 14:19–20, Fig. 8B.
`“The n-type GaN layer 802 has a surface 812 that is roughened,
`textured, patterned or shaped (e.g., a cone shape surface), and the glass
`layer 810 has a surface 814 that is roughened, textured, patterned or shaped
`(e.g., a cone shape surface).” Ex. 1003, 13:55–57, Fig. 8A. A roughened,
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`textured, patterned, or shaped surface enhances light extraction. Id. at 8:45–
`47, 9:10–12, 11:42–44, code (57).
`Figure 8A shows the LED embedded in spherically shaped optical
`element 824 “made of epoxy or glass, forming, for example, a lens.”
`Ex. 1003, 13:33–34, 13:62–64, Fig. 8A. “The shaped optical element 824
`may include a phosphor layer 826, which may be remote from the LED, that
`is roughened, textured, patterned or shaped, for example, on an outer surface
`of the shaped optical element 824.” Id. at 13:64–14:1. Placing phosphor
`layer 826 on or near the outer surface of shaped optical element 824
`increases the conversion efficiency of blue light to white light by reducing
`the reabsorption of back-scattered light, i.e., light scattered by phosphor
`layer 826. Id. at 14:11–16. Further, “if the surface 834 of the phosphor
`layer 826 is roughened, textured, patterned or shaped, light extraction is
`again increased.” Id. at 14:16–18.
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`Figures 10A and 10B in the ’213 patent (reproduced below) depict
`an LED structure “according to the preferred embodiment of the present
`invention”:
`
`
`Figures 10A and 10B illustrate an LED including “an InGaN [indium
`gallium nitride] MQW [multiple quantum well] emitting layer 1000, an
`n-type GaN layer 1002, a p-type GaN layer 1004, an ITO layer 1006, a
`bonding pad 1008, an ohmic contact/bonding pad 1010,” and “a current
`spreading layer 1022.” Ex. 1003, 14:46–53, 14:61–62, Figs. 10A–10B; see
`id. at 9:50–52. The LED “is wire bonded 1024 to a lead frame 1026.” Id. at
`14:66–67, Fig. 10A. Figure 10B “shows a top view of the lead frame 1026.”
`Id. at 14:67, Fig. 10B.
`Surface 1012 of ITO layer 1006 “is roughened, textured, patterned or
`shaped,” and epoxy layer 1016 “is deposited on the surface 1012.”
`Ex. 1003, 14:49–54, Fig. 10A. Surface 1014 of n-type GaN layer 1002 “is
`roughened, textured, patterned or shaped.” Id. at 14:50–54, Fig. 10A.
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`Figure 10A shows the LED embedded in spherically shaped optical
`element 1018 “made of epoxy or glass, forming, for example, a lens.”
`Ex. 1003, 14:54–56, Fig. 10A. “The shaped optical element 1018 may
`include a phosphor layer 1020, which may be remote from the LED, that is
`roughened, textured, patterned or shaped, for example, on an outer surface of
`the shaped optical element 1018.” Id. at 14:56–60.
`Figures 22A and 22B in the ’213 patent (reproduced below) depict
`an LED structure “according to the preferred embodiment of the present
`invention”:
`
`
`Figures 22A and 22B illustrate an LED including “an emitting layer 2202
`and a substrate 2204 (as well as other layers).” Ex. 1003, 20:14–19,
`Figs. 22A–22B; see id. at 10:19–21. The LED “is wire bonded 2206 to a
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`lead frame 2208.” Id. at 20:19–21, Fig. 22A. Figure 22B “shows a top view
`of the lead frame 2208.” Id. at 20:20–21, Fig. 22B.
`Figure 22A shows the LED “embedded in or combined with moldings
`or shaped optical elements 2210, 2212, such as inverted cone shapes made
`of epoxy or glass, forming, for example, lenses.” Ex. 1003, 20:22–25,
`Fig. 22A. The “shaped optical elements 2210, 2212 are formed on opposite
`sides, e.g., the top/front side 2214 and bottom/back side 2216 of the LED
`2200, wherein the emitting layer 2200 emits light 2218 that is extracted from
`both the top/front side 2214 and bottom/back side 2216 of the LED 2200.”
`Id. at 20:25–31.
`“The lead frame 2208 includes a transparent plate 2220.” Ex. 1003,
`20:32, Fig. 22A. “The transparent plate 2220 may be comprised of glass,
`quartz, sapphire, diamond or other material transparent for the desired
`emission wavelength” so that “the transparent glass plate 2220 effectively
`extracts the light 2218 emitted from” the LED “to the shaped optical
`element 2212.” Id. at 20:34–40. The LED “is bonded to the transparent
`plate 2220 using a transparent/clear epoxy 2222 as a die-bonding material.”
`Id. at 20:32–34, Fig. 22A.
`
`D. The Challenged Claims
`Petitioner challenges claims 1 and 2 in the ’213 patent, i.e., every
`claim in the patent. See Pet. 6, 38–89. The challenged claims read as
`follows:
`
`1. A light bulb, comprising at least one light emitting
`device, the at least one light emitting device each further
`comprising:
`a sapphire plate, a cathode on a first end of the sapphire
`plate and an anode on a second end of the sapphire plate,
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`wherein the cathode and anode provide structural support to the
`sapphire plate and are adapted to provide an electrical
`connection between the light emitting device and a structure
`outside the light emitting device;
`at least one III-nitride light emitting diode (LED)
`comprising a sapphire growth substrate, the sapphire growth
`substrate in mechanical communication with the sapphire plate,
`and the LED and sapphire plate configured to extract light
`emitted by the LED through the sapphire plate; and
`a molding comprising a phosphor and surrounding the
`LED, the molding configured to extract light from both a front
`side of the light emitting device and a back side of the light
`emitting device.
`2. The light bulb of claim 1, wherein the sapphire growth
`substrate is a patterned sapphire substrate (PSS).
`Ex. 1003, 21:15–22:17.
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`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`
`Claims Challenged 35 U.S.C.
`§2
`103(a)
`102
`103(a)
`103(a)
`
`1, 2
`1
`1
`1
`
`Basis
`
`Nakamura-9593, Nakamura-9494
`Tanda5
`Yamazaki6, Schubert7
`Yamazaki, Schubert, Uemura8,9
`
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), included revisions to 35 U.S.C. §§ 102 and 103 that became
`effective on March 16, 2013. Because the ’213 patent issued from an
`application that was a continuation of an application filed before March 16,
`2013, and Petitioner has not persuaded us that, for purposes of this Decision,
`the claims of the ’213 patent are not entitled to that priority date, we apply
`the pre-AIA versions of the statutory bases for unpatentability.
`3 U.S. Patent App. Pub. No. US 2008/0149959 A1 (published June 26,
`2008). Ex. 1004.
`4 U.S. Patent App. Pub. No. US 2008/0149949 A1 (published June 26,
`2008). Ex. 1005.
`5 U.S. Patent App. Pub. No. US 2007/0139949 A1 (published June 21,
`2007). Ex. 1006.
`6 Japan Patent App. Pub. No. 2003-249692A (published Sept. 5, 2003).
`Ex. 1007 (certified English translation pages 7–13).
`7 E. Fred Schubert, Light-Emitting Diodes, 1st ed. New York: Cambridge
`University Press, 2003. Ex. 1008.
`8 U.S. Patent No. 6,310,364 B1 (issued Oct. 30, 2001). Ex. 1009.
`9 Petitioner styles as one ground “Ground 3 [obviousness over Yamazaki and
`Schubert], further in view of any one of Uemura (Ex-1009), Han (Ex-1010),
`or Feldman (Ex-1011), renders obvious claim 1.” Pet. 6. Because there are
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`Claims Challenged 35 U.S.C.
`§2
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`
`1
`1
`2
`2
`2
`
`2
`2
`
`103(a)
`103(a)
`
`Basis
`
`Yamazaki, Schubert, Han10
`Yamazaki, Schubert, Feldman11
`Tanda, Tadatomo12,13
`Yamazaki, Schubert, Tadatomo
`Yamazaki, Schubert, Uemura,
`Tadatomo
`Yamazaki, Schubert, Han, Tadatomo
`Yamazaki, Schubert, Feldman,
`Tadatomo
`
`
`three separate combinations of references, we enter these combinations into
`our table as three separate grounds.
`10 Korean Registered Patent No. 10-0626365 B1 (published Sept. 20, 2006).
`Ex. 1010 (certified English translation pages 10–20).
`11 U.S. Patent No. 6,666,567 B1 (issued Dec. 23, 2003). Ex. 1011.
`12 Tadatomo, K. et al. “High Output Power Near-Ultraviolet and Violet
`Light-Emitting Diodes Fabricated on Patterned Sapphire Substrates Using
`Metalorganic Vapor Phase Epitaxy.” Proceedings of SPIE – the
`International Society for Optical Engineering, vol. 5187, Third International
`Conference on Solid State Lighting, (26 January 2004): 243–249.
`Bellingham, WA: SPIE, c2004. Ex. 1012.
`13 Petitioner styles as one ground “Ground 2, 3, and 4, further in view of
`Tadatomo (Ex-1012), renders obvious claim 1.” Pet. 6. Because this ground
`adds Tadatomo to five combinations of references, we enter these
`combinations into our table as five separate grounds.
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`Pet. 6, 38–89. Petitioner submits the declarations of Russell D. Dupuis,
`Ph.D. (Ex. 1035) and Takao Miyano (Ex. 1048) in support of its arguments.
`Patent Owner submits the declarations of E. Fred Schubert, Ph.D., M.S.
`(Ex. 211214), Steven P. DenBaars, Ph.D. (Ex. 211015), and Sherylle M.
`Englander (Ex. 210916) in support of its arguments.
`
`F. Effective Filing Date
`The parties disagree on the proper effective filing date for the claims
`of the ’213 patent. On its face, the ’213 patent claims priority to “a string of
`continuation applications stretching back to” the original ’154 application,
`filed December 11, 2007. Ex. 1003, code (63). The ’213 patent also claims
`priority to the ’447 provisional, filed December 11, 2006. Ex. 1003, code
`(60). Patent Owner asserts that claims 1 and 2 of the ’213 patent are entitled
`to an effective filing date of December 11, 2006. See PO Resp. 9–25.
`Petitioner asserts that “the ’213 patent is not entitled to an effective filing
`date prior to its actual filing date of September 11, 2019.” Pet. 7, 12–22.
`If Patent Owner is correct and the effective filing date is December
`11, 2006, several of Petitioner’s asserted references—namely Nakamura-
`959, Nakamura-949, and Tanda—would not qualify as prior art. See
`Ex. 1004 (published June 26, 2008); Ex. 1005 (published June 26, 2008);
`Ex. 1006 (filed Dec. 14, 2006). In addition, because the AIA included
`revisions to 35 U.S.C. § 103 that became effective on March 16, 2013,
`Patent Owner’s proposed date would result in application of the pre-AIA
`
`
`14 Exhibit 2112 is a redacted version of Exhibit 2034.
`15 Exhibit 2111 is a redacted version of Exhibit 2105.
`16 Exhibit 2019 is a redacted version of Exhibit 2108.
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`versions of the statutory bases for unpatentability, while Petitioner’s
`proposed date would result in application of the post-AIA versions.
`Because, as discussed below, we find that Petitioner has shown by a
`preponderance of the evidence that claims 1 and 2 of the ’213 patent would
`have been obvious, respectively, over the combined disclosures of Yamazaki
`and Schubert, and the combined disclosures of Yamazaki, Schubert, and
`Tadamoto, we need not decide if Nakamura-959, Nakamura-949, or Tanda
`qualify as prior art. Moreover, neither party asserts that the outcome of this
`case is affected by whether we apply the pre- or post-AIA version of 35
`U.S.C. § 103. Thus, we do not address this issue further.
`
`III. ANALYSIS
`A. Level of Skill in the Art
`The level of skill in the art is a factual determination that provides a
`primary guarantee of objectivity in an obviousness analysis. See Al-Site
`Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1323 (Fed. Cir. 1999) (citing
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)). The level of skill in
`the art also informs the claim-construction analysis. See Teva Pharms. USA,
`Inc. v. Sandoz, Inc., 574 U.S. 318, 332 (2015) (explaining that claim
`construction seeks the meaning “a skilled artisan would ascribe” to the claim
`term “in the context of the specific patent claim” (emphasis omitted)).
`Petitioner asserts that a person of ordinary skill in the art “would have
`been knowledgeable regarding conventional designs and fabrication
`techniques pertaining to LEDs, including LED package designs, and would
`have had at least 2 years of experience in LED design and fabrication as well
`as at least a master’s degree in a relevant field (e.g., chemical engineering,
`materials engineering, or electrical engineering), or alternatively would have
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`an equivalent combination of advanced education and practical experience.”
`Pet. 10–11 (citing Ex. 1035 ¶¶ 27–29). Patent Owner does not address the
`level of ordinary skill in the art. See generally PO Resp.
`We have reviewed Petitioner’s proposal and find it reasonable and
`consistent with the prior art, and apply it for purposes of this Decision. See
`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art
`may reflect an appropriate level of skill in the art).
`
`B. Claim Construction
`For petitions filed on or after November 13, 2018, such as the one in
`this case, we interpret claims in the same manner used in a civil action under
`35 U.S.C. § 282(b), “including construing the claim in accordance with the
`ordinary and customary meaning of such claim as understood by one of
`ordinary skill in the art and the prosecution history pertaining to the patent.”
`37 C.F.R. § 42.100(b) (2022). Only terms that are in controversy need to be
`construed, and then only to the extent necessary to resolve the controversy.
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
`1017 (Fed. Cir. 2017).
`For purposes of the Institution Decision we agreed with the parties
`that no particular claim term need be construed. Inst. Dec. 26–27. In
`post-institution briefing, however, the parties disagree over the proper
`construction of several claim terms. First, the parties disagree over whether
`the term “phosphor” includes “fluorescent material” as disclosed in
`Yamazaki. PO Resp. 26–28; Reply 1–4; Sur-Reply 1–5. Second, the terms
`“sapphire” and “molding” become relevant when analyzing secondary
`considerations of non-obviousness. PO Resp. 6–8; Reply 29–30; Sur-Reply
`26–27. However, because we adopt Petitioner’s construction of the term
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`“sapphire,” which is determinative of the secondary consideration issue, we
`need not construe the term “molding.” We, therefore, address below the
`construction of the terms “phosphor” and “sapphire.”
`The 1220 Investigation addressed each of these two terms. In the
`Markman order, the ALJ construed the term “sapphire” (as recited in the
`related patents) as having the “plain and ordinary meaning, which is single
`crystal aluminum oxide.” Ex. 1038, 9–11, 16–17; PO Resp. 6. According to
`Patent Owner, this construction has been affirmed by the Commission and
`Patent Owner is not appealing the construction of the term to the Federal
`Circuit. PO Resp. 6 n.1; Tr. 6:13–20, 39:1–16.
`Although the Markman Decision of the 1220 Investigation did not
`address the term “phosphor,” the Initial Determination stated that
`Yamazaki’s fluorescent material discloses the phosphor recited by the claim
`at issue because “the fluorescent material will emit white light when ‘excited
`by blue light,’ just like the phosphor recited in claim 1” of the related patent,
`U.S. Patent No. 9,240,529. Ex. 2009, 92.
`Neither party has argued that the terms “phosphor” and “sapphire,” as
`recited in the claims of the ’213 patent should be given a different
`construction than the same term as recited in the related patents at issue in
`the 1220 Investigation. PO Resp. 6–8, 26–28; Reply 1–4, 29–30; Sur-Reply
`1–5, 26–27. In fact, both parties appear to agree that the terms in the ’213
`patent share a construction with those same terms in the related patents. PO
`Resp. 68 (stating that licenses that cover the ’213 patent also cover those that
`are directly related to the ’213 patent); Reply 29–30; Tr. 45:4–46:14.
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`1. Phosphor
`Claim 1 recites “a molding comprising a phosphor.” Ex 1003, 22:12.
`The Petition asserts that “Yamazaki discloses this limitation.” Pet. 79. In
`particular, Petitioner quotes from Yamazaki highlighting that it uses the
`word “phosphor” in the context of discussing the transparent resin of the
`light-emitting device. Id. at 79–80 (quoting Ex. 1007 ¶¶ 34–35). Patent
`Owner, however, points out that this quotation is an error and that the
`official translation of Yamazaki proffered by Petitioner does not use the
`word “phosphor” and instead uses the words “fluorescent material.” PO
`Resp. 26–28 (quoting Ex. 1007 ¶ 35). Petitioner concedes that the quotation
`of Yamazaki in its Petition was an inadvertent error. Reply 1–2. According
`to Petitioner, the quotation used in the Petition was from “a version of
`Yamazaki that was produced in related ITC cases.” Id. (citing Ex. 1045
`¶¶ 34–35).
`Based on this error, Patent Owner argues that “[n]either the Petition
`nor Dr. Dupuis allege or contend that the fluorescent material is phosphor or
`that it would be obvious to use phosphor as the fluorescent material,” and
`therefore Petitioner has “failed to meet [its] burden of showing Yamazaki
`discloses ‘a molding comprising phosphor.’” PO Resp. 28 (citing Pet. 79–
`80; Ex. 1035 ¶¶ 262–264); Sur-Reply 1. Further, Patent Owner asserts that
`Petitioner’s attempts, in the Reply, to provide arguments and evidence that
`“ameliorate its mistake” are impermissible as outside the proper scope of a
`reply. 17 Sur-Reply 1–2 (citing Office Patent Trial Practice Guide, 77 Fed.
`
`
`17 Patent Owner also filed a Motion to Exclude the evidence submitted to
`support this argument. Paper 47. We address the arguments included in that
`motion below in Section IV.
`
`17
`
`
`
`IPR2021-00662
`Patent 10,644,213 B1
`
`Reg. 48,756, 48,774–75 (Aug. 14, 2012) (“Trial Practice Guide”); Intelligent
`Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed.
`Cir. 2016); 37 C.F.R. 42.23(b); Qiagen N. Am. Holdings, Inc. v. HandyLab,
`Inc., 2021 WL 5024387 at *4 (Fed. Cir. Oct. 29, 2021)).
`We do not agree with Patent Owner that Petitioner’s response to this
`issue is impermissibly beyond the scope of the Reply. The disputed
`arguments and evidence respond to Patent Owner’s argument that Petitioner
`has not shown that Yamazaki discloses a phosphor as recited in the
`challenged claims. See Ericsson Inc. v. Intellectual Ventures I LLC, 901
`F.3d 1374, 1379–81 (Fed. Cir. 2018) (holding that the Board had abused its
`discretion where it “pars[ed] [the party’s] arguments on reply with too fine
`of a filter” and noting that the reply “expands the same argument made in
`[the] Petition”); Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F.3d
`919, 925 (Fed. Cir. 2019) (determining that the purportedly “new argument”
`presented by the patent owner at oral argument “was not a new argument for
`patentability, but a clarification of its prior position in response to arguments
`raised in [petitioner’s] reply”).
`Unlike the situation described in Intelligent Bio-Systems relied upon
`by Patent Owner, Petitioner, in its Reply, does not newly assert that a person
`of ordinary skill would have considered it obvious to use phosphor with
`Yamazaki. Intelligent Bio-Sys., 821 F.3d at 1369–70. Instead, Petitioner
`reiterates its argument from the Petition that a person of ordinary skill would
`have understood Yamazaki to disclose using phosphor. Reply 3 (“Yamazaki
`discloses phosphors, as confirmed by dictionaries as well as Patentee’s
`
`18
`
`
`
`IPR2021-00662
`Patent 10,644,213 B1
`
`expert’s testimony and book”). We consider Exhibits18 1013, 1039, 1042
`(39:9–42.5), 39:9–42:5, and 1049 to be responsive to Patent Owner’s
`argument and thus proper to be relied upon in a reply. Upon examination,
`we also find some of this evidence to be highly probative and persuasive of
`Petitioner’s position that a person of ordinary skill in the art would have
`found the terms phosphor and fluorescent material to be interchangeable.
`First, Petitioner points to a definition from Hawley’s Chemical
`Dictionary describing phosphor as:
`A substance . . . that is capable of luminescence, i.e., of
`absorbing energy from sources such as . . . UV radiations . . . and
`emitting a portion of the energy in the UV, visible, or infrared.
`When the emission of the substance ceases immediately or in the
`order of 10+8 sec after excitation, the material is said to be
`fluorescent.
`Ex. 104919 (emphasis added by Petitioner). Patent Owner points out that this
`definition shows there is a difference between phosphorescence and
`fluorescence such that phosphorescence does not necessarily immediately
`cease emission. Sur-Reply 2 (citing Ex. 1049, 3 (defining
`“phosphorescence” as “[a] type of luminescence in which the emission of
`radiation resulting from excitation of a crystalline or liquid material occurs
`after excitation has ceased and may last from a fraction of a second to an
`
`
`18 Petitioner also provides a declaration of Mr. Miyano discussing the
`Japanese translation of the word that resulted in the English word
`“fluorescent material” in the official version of Yamazaki. Ex. 1048.
`Because we find sufficient evidence in the record to show the English terms
`“fluorescent material” and “phosphor” are interchangeable, we do not rely
`upon, or otherwise address this evidence regarding the issue of translation.
`19 We address Patent Owner’s motion to exclude this document below in
`Section IV.
`
`19
`
`
`
`IPR2021-00662
`Patent 10,644,213 B1
`
`hour or more.”)). During the hearing, Petitioner’s counsel agreed that the
`dictionary definition indicates that fluorescent material is a subset of
`phosphor. Tr. 18:3–15; see also Tr. 15:20–16:8. We also agree that this
`definition supports a finding that there is some overlap in the terms, but it
`does not, on its own, support a finding that a person of ordinary skill would
`understand the terms “fluorescent material” and “phosphor” to be
`interchangeable.
`Second, Petitioner points to testimony from Dr. Schubert supporting
`its position that a person of ordinary skill in the art would use the two terms
`interchangeably. Reply 3 (citing Ex. 1042, 38:3–42:5; Ex. 1039, 3-2, 3-4).
`The testimony in question discusses a portion of the 3rd Edition of Dr.
`Schubert’s textbook “Light-Emitting Diodes.” Ex. 1039. In his testimony,
`Dr. Schubert concedes that his textbook characterizes the use of fluorescent
`material as using a phosphor. Tr. 40:23–41:4, 41:20–42:5. However, Patent
`Owner argues that because the textbook in question was published in 2018,
`its statements “have no bearing on the correct translation of Yamazaki or a
`[person of ordinary skill in the art (POSITA)]’s understanding over a decade
`earlier.” Sur-Reply 4. We agree that, by itself, this testimony supports only
`a finding that, in 2018, a person of ordinary skill in the art would have used
`the terms fluorescent material and phosphor interchangeably.
`Third, and most significantly, Petitioner points to Shimizu, a patent
`filed in 1999, as repeatedly referring to phosphor as a garnet-based
`fluorescent material. Reply 3 (citing Pet. 27; Ex. 1013, 10:16–13:50). We
`agree that Shimizu appears to use the two terms interchangeably. For
`example, Shimizu states that “[t]he phosphor is specifically garnet
`fluorescent material” and “the fluorescent material is preferably yttrium-
`
`20
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`
`
`IPR2021-00662
`Patent 10,644,213 B1
`
`aluminum-garnet fluorescent material (YAG phosphor) activated with
`cerium.” Ex. 1013, 10:17–30. Patent Owner does not dispute this reading of
`Shimizu, but argues instead that it is “impermissible to rely on an entirely
`different reference” in a Reply. See Sur-Reply 4–5 (citing Ariosa
`Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015)).
`For the same reasons discussed above, we do not agree that
`Petitioner’s use of Shimizu is improper, but is instead a proper response to
`Patent Owner’s argument that a person of ordinary skill in the art would not
`have understood Yamazaki to disclose phosphor. Ariosa, relied upon by
`Patent Owner, confirms that the Board should consider an exhibit “for what
`it show[s] about the background knowledge that a skilled artisan would have
`possessed.” Ariosa, 805 F.3d at 1365 (“The Board’s language on its face
`supports Ariosa’s interpretation of what the Board meant—that the Board
`was declining to consider Exhibit 1010, even as evidence of the background
`understanding of skilled artisans as of January 2010, simply because the
`brochure had not been identified at the petition stage as one of the pieces of
`prior art defining a combination for obviousness. If that is what the Board
`meant, the Board erred. Art can legitimately serve to document the
`knowledge that skilled artisans would bring to bear in reading the prior art
`identified as producing obviousness.”).
`The Petition relies on Shimizu to show such background
`understanding. Pet. 27. Specifically, the Petition states that conventional
`LEDs “were made using the III-nitride material system, with semiconductor
`layers formed on sapphire substrates and combined with YAG phosphors to
`efficiently generate white light output.” Id. (citing Ex. 1013, 10:30–11:35).
`Thus, Shimizu is properly objective evidence supporting a finding that at
`
`21
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`IPR2021-00662
`Patent 10,644,213 B1
`
`least as early as 1999, a person of ordinary skill in the art would have used
`the terms “phosphor” and “fluorescent material” interchangeably.
`Moreover, Dr. Schubert’s textbook published in 2018 explicitly references
`Sh
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