UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`SENSOR ELECTRONIC TECHNOLOGY, INC.,
`Petitioner,
`
`v.
`
`LITE-ON TECHNOLOGY CORPORATION,
`
`Patent Owner.
`
`____________
`
`IPR2022-00395
`
`U.S. Patent No. 10,916,685
`____________
`
`
`
`PETITIONER’S REPLY TO
`
`PATENT OWNER’S RESPONSE TO PETITION
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`SENSOR ELECTRONIC TECHNOLOGY, INC.,
`Petitioner,
`
`v.
`
`LITE-ON TECHNOLOGY CORPORATION,
`
`Patent Owner.
`
`____________
`
`IPR2022-00395
`
`U.S. Patent No. 10,916,685
`____________
`
`
`
`PETITIONER’S REPLY TO
`
`PATENT OWNER’S RESPONSE TO PETITION
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`II.
`
`1.
`
`2.
`
`Overview ......................................................................................................1
`Lite-On’s Proposed Claim Constructions are Incorrect .................................1
`A.
`“a center of a curvature” .....................................................................1
`B.
`“annular slot” ......................................................................................6
`III. GROUND 1: Claims 1 and 5 are obvious over Nichia-825 ...........................7
`A. Nichia-825 renders obvious the “center of a curvature”
`limitation in claim 1 ............................................................................7
`Lite-On imports additional limitations into its own
`proposed construction ...............................................................8
`Under the plain and ordinary meaning, a “center of
`curvature” in Nichia-825 is outside the accommodating
`space .......................................................................................13
`Even under Lite-On’s proposed construction, a “center of
`curvature” in Nichia-825 is outside the accommodating
`space .......................................................................................14
`Lite-On’s “attacks” on Dr. Josefowicz’ credibility should
`be disregarded .........................................................................15
`Claim 5 .............................................................................................17
`B.
`IV. GROUND 2: Claim 2 is obvious over Nichia-825, alone or in view
`of Achyut ....................................................................................................17
`V. GROUND 3: Claim 3 is obvious over Nichia-825, alone or in view
`of Hashimoto ..............................................................................................18
`A. A POSA would be motivated to modify Nichia-825 to add the
`claimed submount .............................................................................18
`
`3.
`
`4.
`
`i
`
`
`
`B.
`
`Hashimoto discloses a plurality of wires connecting the
`submount to the electrodes ................................................................20
`Hashimoto discloses an insulated submount......................................21
`C.
`VI. GROUND 4: Claims 1 and 5 are obvious over Nichia-824, alone or
`in view of Nichia-825 .................................................................................23
`A. Nichia-824 renders obvious the “center of a curvature”
`limitation ..........................................................................................23
`Claim 5 .............................................................................................24
`B.
`VII. GROUND 5: Claim 2 is obvious over Nichia-824, alone or in view
`of Achyut and/or Nichia-825.......................................................................24
`VIII. GROUND 6: Claim 3 is obvious over Nichia-824, alone or in view
`of Hashimoto and/or Nichia-825 .................................................................24
`IX. SECONDARY CONSIDERATIONS .........................................................25
`X.
`CONCLUSION ..........................................................................................25
`
`
`
`
`ii
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC,
`825 F.3d 1373 (Fed. Cir. 2016) ........................................................................ 18
`Baldwin Graphic, Inc. v. Siebert, Inc.,
`512 F.3d 1338 (Fed. Cir. 2008) .......................................................................... 2
`Biogen Idec, Inc. v. GlaxoSmithKline LLC,
`713 F.3d 1090 (Fed. Cir. 2013) .......................................................................... 6
`Grimco, Inc. v. Principal Lighting Group, LLC,
`IPR2021-00968, Paper 49 (P.T.A.B. Dec. 7, 2022) .......................................... 18
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal,
`868 F.3d 1013 (Fed. Cir. 2017) .......................................................................... 7
`In re NuVasive, Inc.,
`842 F.3d 1376 (Fed. Cir. 2016) .......................................................................... 7
`TorPharm Inc. v. Ranbaxy Pharm., Inc.,
`336 F.3d 1322 (Fed. Cir. 2003) .......................................................................... 6
`Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp.,
`587 F.3d 1339 (Fed. Cir. 2009) .......................................................................... 5
`
`
`
`iii
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`
`
`
`
`
`
`
`
`
`
`List of Exhibits
`
`Exhibit No. Description
`1001
`U.S. Patent No. 10,916,685 (’685 patent)
`1002
`File history for U.S. Patent No. 10,916,685
`1003
`Declaration of Jack Josefowicz, Ph.D. (“Josefowicz Decl.”)
`1004
`Japan Application Publication No. 2009-170824 (“Nichia-824”)
`Certified Translation of Japan Application Publication No. 2009-
`170824
`Japan Application Publication No. 2009-170825 (“Nichia-825”)
`Certified Translation of Japan Application Publication No. 2009-
`170825
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`1017
`1018
`
`Japan Application Publication No. 2016-072412 (“Nichia-412”)
`Certified Translation of Japan Application Publication No. 2016-
`072412
`U.S. Application Publication No. 2009/0045423 A1
`(“Hashimoto”)
`U.S. Application Publication No. 2005/0199897 (“Achyut”)
`U.S. Application Publication No. 2009/0278147 (“Suzuki”)
`Declaration of Etai Lahav in Support of Petitioner’s Motion For
`Pro Hac Vice Admission
`Declaration of Jack Josefowicz, Ph.D. in Support of Petitioner’s
`Opposition to Patent Owner’s Contingent Motion to Amend
`(“Josefowicz MTA Decl.”)
`Transcript of December 5, 2022 Deposition of Michael S. Lebby,
`PHD
`Figure 14A “center of a curvature” comparison
`Withdrawn Josefowicz Deposition Exhibit
`Josefowicz Deposition Exhibit 11
`
`iv
`
`
`
`
`
`
`
`
`
`1019
`
`1020
`
`1021
`1022
`
`Exhibit No. Description
`Kim et al., Effect of grain growth on electrical properties of
`silicon carbide ceramics sintered with gadolinia and yttria,
`Journal of the European Ceramic Society, 35:15, 4137-42 (2015)
`(“Kim”)
`Excerpt of CRC Handbook of Physics and Chemistry, 95th Edition
`(2014-2015) (“CRC Handbook”)
`U.S. Patent Appl. Pub. No. 2004-0201987 (“Omata”)
`U.S. Patent No. 10,490,712 (“Lin”)
`Hayashi et al., Dependence of Light Extraction From Near-
`Ultraviolet Light-Emitting Diodes on Refraction Index,
`Transmittance and Shape, J. Light & Vis. Env. 33:3 (2009)
`(“Hayashi”)
`Nichia-825 Figure 4 Comparison
`Declaration of Jack Josefowicz, Ph.D. in support of Petitioner’s
`Reply (“Josefowicz Reply Decl.”)
`
`1023
`
`1024
`
`1025
`
`
`
`v
`
`
`
`
`
`
`
`
`
`I.
`
`Overview
`
`Claims 1-3 and 5 of U.S. Patent No. 10,916,685 (“the ’685 patent”) are
`
`rendered obvious by Nichia-825 and Nichia-824. Patent Owner’s (“Lite-On”)
`
`Response fails to demonstrate otherwise. In particular, Lite-On and its expert apply
`
`the wrong claim construction for the one claim term it disputes, “a center of a
`
`curvature.” Lite-On also attacks a caricature of SETi’s obviousness grounds with
`
`respect to claim 3, assuming bodily incorporation where there is none. For these
`
`reasons and the reasons stated below, the Panel should find each of the challenged
`
`claims unpatentable.
`
`II. Lite-On’s Proposed Claim Constructions are Incorrect
`
`A. “a center of a curvature”
`Lite-On erroneously imports an extrinsic dictionary definition at the expense
`
`of the intrinsic evidence. Its proposed construction should therefore be rejected.1
`
`1 SETi does not disagree that the mathematics term “center of a curvature” has the
`
`definition the mathematics dictionary cited by Lite-On says it has. And neither
`
`does Dr. Josefowicz. However, Lite-On mischaracterizes and selectively quotes
`
`from Dr. Josefowicz’s testimony as if he agreed that Lite-On’s construction was
`
`
`
`correct. POR at 19-20. But Dr. Josefowicz merely testified that he agreed with the
`
`definition of the term in the dictionary. Ex. 2006 89:14-19.
`
`1
`
`
`
`
`
`
`
`
`
`The claim language indicates that Lite-On’s construction is incorrect.
`
`Limitation 1.12 requires that the top surface of the surrounding portion “is in a
`
`curved shape” and that “a center of a curvature of the top surface of the
`
`surrounding portion is arranged outside of the accommodating space.” By using
`
`the word “a” to describe “center of a curvature,” the claim language provides that
`
`there can be more than one center of a curvature for the top surface. See Baldwin
`
`Graphic, Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008); see also Ex.
`
`1015, 97:3-7. So long as one of those centers of curvature is arranged outside of
`
`the accommodating space, the limitation is met.
`
`
`
`This interpretation is consistent with the specification that similarly
`
`provides, “a center of curvature of the top surface 623 is located outside of the
`
`accommodating space S.” Ex. 1001, 7:30-31.
`
`
`
`Lite-On’s construction, “[t]he center of the circle which best fits a curve at a
`
`particular point on the curve,” is—on its face—consistent with the intrinsic
`
`evidence regarding how many centers of a curvature exist for the top surface.
`
`Because a surface has many points, there are many best-fit circles that can be
`
`drawn, each based on one of those many points. Ex. 1013 ¶ 7. Indeed, Lite-On
`
`seemingly recognizes that there is more than one best-fit circle for the claimed
`
`surface, having drawn three such circles for the exact same figure. Below is a
`
`comparison of three different annotations of Figure 14A, each showing a different
`
`2
`
`
`
`
`
`
`
`
`
`“center of a curvature.” Ex. 1013 ¶¶ 8-11. As can be seen by the colored lines that
`
`runs across the figures, Lite-On has identified three different centers of curvature
`
`in the same figure.2 Thus, Lite-On implicitly agrees that there is more than one
`
`center of a curvature for the top surface in Figure 14A.
`
`Despite the facial agreement between Lite-On’s construction and the
`
`intrinsic record (ignoring for the moment the prosecution history discussed below)
`
`and the implicit acknowledgement of multiple centers of curvature, Lite-On
`
`mischaracterizes and misuses its own construction to permit only “one best-fitting
`
`circle for a given curved surface.” POR at 28; Ex. 2007 ¶ 29; Ex. 1015, 172:20-
`
`173:3. Indeed, Dr. Lebby deliberately misquoted the specification because he
`
`recognized that the intrinsic evidence does not support there only being one best-
`
`fitting circle:
`
`Paragraph 53 provides that the “center of curvature of the top surface 623 is
`
`located outside of the accommodating space S. Therefore, light emitted
`
`2 A larger version of these figures can be found at Ex. 1016.
`
`3
`
`
`
`
`
`
`
`
`
`
`
`
`
`from the top surface 623 can be gathered outside of the wall 5, thereby
`
`preventing light spots from being formed inside of the wall.”
`
`Ex. 2005 ¶ 7 (emphasis added). That paragraph of the specification does not refer
`
`to “the center of curvature” but “a center of curvature”: “Specifically, a center of
`
`curvature of the top surface 623 is located outside of the accommodating space S.”
`
`Ex. 2004 ¶ 53 (emphasis added). At his deposition, Dr. Lebby admitted that he
`
`purposefully changed “a center of curvature” to “the center of curvature.” Ex.
`
`1015, Tr. 263:8-13.3
`
`Lite-On’s argument that there can only be one single best-fitting circle for
`
`the top surface of the surrounding portion cannot be reconciled with the intrinsic
`
`evidence, which provides for more than one best-fitting circle for the top surface,
`
`3 This is not the only evidence of sharp practices by Dr. Lebby and Lite-On’s
`
`
`
`counsel. During Dr. Josefowicz’s deposition, Lite-On’s counsel misrepresented a
`
`prior art figure in an effort to trick the witness. Ex. 2006, 149:16-150:3; Ex. 1017.
`
`As both SETi’s counsel and the witness identified, there were substantive
`
`alterations to the figure. Ex. 2006, 150:12-152:2. Lite-On’s counsel was then
`
`forced to withdraw the exhibit. Id. at 151:14-15. Additionally, after review of the
`
`other deposition exhibits, it appears that Lite-On also redrew and altered a second
`
`prior art figure shown to Dr. Josefowicz as deposition exhibit 11. Ex. 1018.
`
`4
`
`
`
`
`
`
`
`
`
`and Lite-On’s extrinsic evidence, which similarly provides that the best-fit circle is
`
`determined at each particular point.4 Because Lite-On has asserted that its
`
`construction entails a meaning that conflicts with the claims and specification (and
`
`even its own extrinsic evidence), it should be rejected. See Ultimax Cement Mfg.
`
`Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339, 1347–48 (Fed. Cir. 2009)
`
`(overturning district court’s construction that “erroneously relied on expert
`
`testimony and a single dictionary definition to the exclusion of other dictionary
`
`definitions and, most importantly, the context in which the term was used within
`
`the claim and the specification”).
`
`
`
`Finally, Lite-On’s proposed construction is incorrect for an additional
`
`reason, as it is also in conflict with the prosecution history. As discussed in the
`
`Petition, during prosecution, the applicant let stand the examiner’s application and
`
`use of both circles and ovals to determine a “center of a curvature,” and Lite-On
`
`4 When Dr. Lebby was presented with all three figures at his deposition and asked
`
`to confirm that there could not be three different best-fit circles under his theory,
`
`he evasively answered “I don’t have a theory. I am just interpreting what a center
`
`
`
`of curvature is for a circle,” Ex. 1015, 176:13-15, and stated that it did not matter if
`
`there were different best-fit circles, as long as the center of those circles was
`
`outside the accommodating space, id. at 171:3-11.
`
`5
`
`
`
`
`
`
`
`
`
`should be held to that same analysis here. Petition at 38-39. Therefore, its
`
`proposed construction, which limits the term to the use of a circle to determine the
`
`claimed “center of a curvature” should be rejected. See Biogen Idec, Inc. v.
`
`GlaxoSmithKline LLC, 713 F.3d 1090, 1096 (Fed. Cir. 2013) (“If an applicant
`
`chooses, she can challenge an examiner’s characterization in order to avoid any
`
`chance for disclaimer, but the applicants in this case did not directly challenge the
`
`examiner’s characterization.”); see TorPharm Inc. v. Ranbaxy Pharm., Inc., 336
`
`F.3d 1322, 1330 (Fed. Cir. 2003) (“Whether the patentee chooses to dispute the
`
`examiner’s view of matters is relevant to claim interpretation, for there a court may
`
`need to ascertain exactly what subject matter was actually examined and allowed
`
`by the PTO.”). Not surprisingly, Lite-On (and its expert) completely ignores this
`
`prosecution history in arguing for its construction.
`
`Thus, the Panel should construe this term according to its plain and ordinary
`
`meaning, which allows for either a circle or an oval to be used to determine a
`
`center of a curvature for the top surface of the surrounding portion.
`
`“annular slot”
`
`B.
`In its preliminary response, Lite-On argued that the term “annular slot”
`
`should be construed and then argued that Nichia-825 did not meet the “annular
`
`slot” limitation as construed. POPR at 17-23. The Panel, however, in its
`
`6
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`
`
`
`
`
`
`
`
`institution decision, found that Nichia-825 disclosed the “annular slot” limitation
`
`under Lite-On’s proposed construction. Paper 8 at 20-22.
`
`In its response, Lite-On again proposed the same construction for “annular
`
`slot,” POR at 20-23, but failed to raise its argument based on that construction, id.
`
`at 23-33 (only arguing that “center of a curvature” limitation is absent). Thus,
`
`Lite-On waived its annular slot-based argument and therefore there is no need for
`
`the Panel to construe this term because there is no remaining dispute impacted by
`
`the construction of the term. See Nidec Motor Corp. v. Zhongshan Broad Ocean
`
`Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017).
`
`III. GROUND 1: Claims 1 and 5 are obvious over Nichia-825
`A. Nichia-825 renders obvious the “center of a curvature” limitation
`in claim 15
`
`
`
`Lite-On’s argument relies on its flawed claim construction of “center of a
`
`curvature,” which, as discussed above, is inconsistent with the specification and
`
`the prosecution history and should be rejected. See supra Secion II.A.
`
`5 Although Lite-On states that “Nichia-825 does not disclose or render obvious
`
`
`
`each of the limitations recited in independent claim 1,” POR at 23, it only responds
`
`with respect to one limitation, 1.12, id. at 23-33. It has thus waived argument on
`
`any other limitation. See In re NuVasive, Inc., 842 F.3d 1376, 1380-81 (Fed. Cir.
`
`2016).
`
`7
`
`
`
`
`
`
`
`
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`Additionally, in response to and despite the Panel’s institution decision adopting its
`
`construction, Lite-On surreptitiously and improperly adds additional limitations to
`
`its proposed claim construction (that it knows it could not justify if explicitly
`
`argued for). Indeed, Dr. Lebby has not applied Lite-On’s explicitly proposed
`
`construction but only these new limitations.
`
`Using the plain and ordinary meaning of the term, as informed by the
`
`prosecution history, a POSA would undestand that an oval, in addition to a circle,
`
`could be used to determine the center of curvature, as Dr. Josefowicz has done.
`
`Petition at 37-41; Ex. 1003 ¶ 51.
`
`Alternatively, even if Lite-On’s construction were adopted, Nichia-825 still
`
`discloses or renders obvious this limitation, as the Panel found in its institution
`
`decision. Paper 8 at 25-26.
`
`Lite-On imports additional limitations into its own
`1.
`proposed construction
`As discussed above, Lite-On improperly relies on an extrinsic mathematical
`
`dictionary definition for its proposed construction of “center of a curvature,” that
`
`contradicts the intrinsic evidence. Now, after the Panel found that Nichia-825
`
`discloses this limitation even under Lite-On’s proposed construction, Lite-On
`
`pivoted, implicitly adding new requirements to its proposed construction. This is
`
`improper.
`
`8
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`
`
`
`
`
`
`
`
`a.
`
`Lite-On’s importation of “most overlap” and “maximum
`coincidence” should be rejected
`Lite-On argues that the best-fit circle used to show the center of curvature
`
`must “have the most overlap” or the “maximum coincidence” with the top surface
`
`of the surrounding portion. POR at 25-26. These added limitations were not
`
`discussed, disclosed, or mentioned in Lite-On’ preliminary response. Instead, they
`
`were added to attempt to circumvent the Panel’s application of that proposed
`
`construction against Lite-On’s position. Paper 8 at 25-26.
`
` More importantly, nowhere do Lite-On or Dr. Lebby explain how a POSA
`
`should determine when the circle has the “most overlap” or “maximum
`
`coincidence. Instead, they use the terms in a conclusory, ends-oriented fashion.
`
`How is a POSA to determine whether a circle has the “most overlap” or the
`
`“maximum confidence” with the curved surface? “Most” compared to what?
`
`Neither Lite-On nor Dr. Lebby shed any light on the meaning of these terms or the
`
`source of these additional requirements, and instead, they seem to have been
`
`created out of thin air. Ex. 1013 ¶¶ 23-24. Indeed, when asked at his deposition
`
`where he came up the concept of “maximum coincidence,” Dr. Lebby coined a
`
`new term, “maximum overlap,” and said that it was merely what a POSA would
`
`do. Ex. 1015, 214:13-215:6.
`
`Critically, Lite-On’s proposed construction requires that the circle used is
`
`one that “best fits a curve at a particular point on the curve.” POR at 19; Ex.
`
`9
`
`
`
`
`
`
`
`
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`1015, 164:10-22. But as Dr. Lebby admitted, he did not fit the circle he drew to a
`
`particular point at all, but rather a surface:
`
`I have looked at the most overlap or the maximum coincidence of drawing a
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`circle as per the shape of the surface of the silicone resin as found in the
`
`surrounding area of an LED package.
`
`Ex. 1015, 148:13-19 (emphasis added).
`
`I talk about the best-fitting circle that coincides with the top surface 623. . .
`
`. I do talk about in the maximum overlap and maximum coincidence with
`
`the top surface 623.
`
`Id. at 196:15-22 (emphasis added).
`
`Q. So the construction refers to a point. But then in the very next sentence
`
`[in paragraph 20], you start . . . applying that to a surface, right?
`
`A. That is correct.
`
`Id. at 197:17-21. Dr. Lebby even admitted that he did not criticize Dr.
`
`Josefowicz’s circle for fitting the curve at a particular point and admitted that Dr.
`
`Josefowicz applied “the proposed constructions that have been derived from the
`
`mathematical dictionary.” Id. at 204:14-205:3.
`
`Lite-On’s attempts to implicitly change its claim construction should be
`
`rejected and Dr. Lebby’s analysis, which does not apply Lite-On’s proposed
`
`construction, should be disregarded.
`
`10
`
`
`
`
`
`
`
`
`
`b.
`
`Lite-On’s importation of “substantially arranged at the same
`height” should be rejected
`Lite-On argues that according to the ’685 patent, “in order for the center of
`
`curvature of the top surface 623 of the surrounding portion 62 to be arranged
`
`outside of the accommodating space, ‘the top end 611 of the attaching portion 61
`
`and a top end 6221 of the outer annular part 622 of the surrounding portion 62 are
`
`substantially arranged at the same height with respect to the substrate 1.’” POR at
`
`29. Lite-On then concludes that because the top end of the attaching portion in
`
`Figure 4 of Nichia-825 is not substantially arranged at the same height with the top
`
`end of the outer annular part of the surrounding portion in Figure 4, then the center
`
`of curvature cannot be outside the accommodating space. POR at 30. Lite-On is
`
`incorrect for two reasons.
`
`First, Lite-On’s argument is based on an improper implied claim
`
`construction. It already proposed a construction for the “center of a curvature”
`
`term but chose not to include this extra requirement. For the same reasons
`
`discussed above, Lite-On’s construction-of-a-construction should be rejected.
`
`Additionally, Lite-On’s pending motion to amend seeks to explicitly add this
`
`limitation into substitute claim 21, which amends claim 2, demonstrating that this
`
`language is not currently required by the original claim. Tellingly, Lite-On did not
`
`request in its motion to amend, as provided in the PTAB Practice Guide, that the
`
`11
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`
`
`Panel determine that the amended claim and original patent claim are substantially
`
`identical within the meaning of 35 U.S.C. § 252. 77 Fed. Reg. at 48,766.
`
`Second, as Dr. Josefowicz demonstrates in the figure below, because the
`
`heights of the top ends of the outer annular part and the attaching portion in
`
`Nichia-825 Figure 4 are so close to being at the same height, a POSA would
`
`understand that under any reasonable metric, those top ends are “substantially
`
`arranged at a same height.”
`
`
`
`Ex. 1013 ¶¶ 25-27.
`
`Critically, Dr. Lebby took irreconcilably conflicting positions at his
`
`deposition regarding this non-limitation at his deposition. When asked whether the
`
`top ends of the outer annular part and the attaching portion of Figure 4 of Nichia-
`
`825 were substantially arranged at the same height, he said they were not. Ex.
`
`1015, 217:21-218:11. However, when he was shown the below picture of SETi’s
`
`product accused of infringement and asked whether the alleged top ends of the
`
`outer annular part and attaching portion were substantially arranged at the same
`
`12
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`
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`
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`
`
`
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`height, he said that they were. Id. at 268:11-270:15. Dr. Lebby could not provide
`
`any rationale for his conclusions. Id. at 274:8-275:1.
`
`
`
`Under the plain and ordinary meaning, a “center of
`2.
`curvature” in Nichia-825 is outside the accommodating space
`To the extent the Panel does not adopt Lite-On’s proposed construction, the
`
`analysis presented in the Petition using an oval, in addition to a circle (discussed
`
`infra), demonstrates that a “center of curvature” in Nichia-825 is outside the
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`accommodating space. Petition at 37-41.6 Lite-On criticizes the use of an oval or
`
`ellipse because it has two focal points and that therefore the center of curvature is
`
`6 Lite-On presents no argument that Nichia-825 does not disclose this limitation if
`
`
`
`an oval is permitted as per the file history.
`
`13
`
`
`
`
`
`
`
`
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`not at the center point of the ellipse, but at one of these two focal points. POR at
`
`27-29. Lite-On is mistaken.
`
`The focal points of an ellipse are not the same thing as the center of an
`
`ellipse. Ex. 1013 ¶ 12. Although an ellipse has two focal points, the center point
`
`of the ellipse is located between those two focal points, so an ellipse has one center
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`point and can be used to determine a “center of curvature.” Lite-On’s argument
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`conflates the two to cause confusion and should therefore be rejected.
`
`Lite-On also argues that because the center point of the ellipse and the circle
`
`in Dr. Josefowicz’s declaration are different, then Dr. Josefowicz’s position
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`contradicts itself and is not correct. POR at 28. But because a circle and an ellipse
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`have different shapes, and have different diameters, the position of the center point
`
`is inevitably different from each other. Ex. 1013 ¶ 13. Thus, Lite-On is incorrect
`
`in saying that Dr. Josefowicz’s declaration contradicts itself.
`
`Even under Lite-On’s proposed construction, a “center of
`3.
`curvature” in Nichia-825 is outside the accommodating space
` In determining whether a “center of curvature” of the top surface of
`
`covering member 330 is outside the accommodating space, Dr. Josefowicz
`
`analyzed the center of a circle drawn using the curvature of the top surface of
`
`covering member 330 and determined that the center was outside the
`
`accommodating space. Petition at 37-41.
`
`14
`
`
`
`
`
`
`
`
`
`Lite-On’s applied construction requires that the circle “best fit[] a curve at a
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`particular point.” As can be seen below, the circle used in the Petition does just
`
`that. Ex. 1013 ¶¶ 17-18. The Panel found in its institution decision that the circle
`
`in the Petition has its center outside of the accommodating space and its edge along
`
`the top surface of the surrounding portion of covering member 330, and thus
`
`concluded that, under Lite-On’s proposed construction, “Nichia-825 discloses the
`
`subject matter of Element 1.12.” Paper 8 at 25-26.
`
`
`
`Lite-On’s “attacks” on Dr. Josefowicz’ credibility should be
`4.
`disregarded
`Lite-On tries to attack Dr. Josefowicz’s expertise, but these attacks fall flat.
`
`First, Lite-On selectively quotes Dr. Josefowicz’s deposition testimony about his
`
`background and expertise. Dr. Josefowicz was asked if he “considered [him]self to
`
`be an expert in LED packaging.” POR at 31. Dr. Josefowicz responded that he
`
`15
`
`
`
`“never said [he] was an expert in LED packaging,” and Lite-On ended the quote
`
`
`
`
`
`
`
`there.
`
`However, the rest of Dr. Josefowicz’s answer is as follows:
`
`I said . . . I participated in LED design and the applications of LEDs.·
`But I wasn’t someone who specifically did research on LEDs -- by
`“LED packaging,” you’re talking about the whole LED device. This
`LED device goes into something that is critically connected, and they’re
`– they’re associated.
`
`Ex. 2006 42:2-8. Indeed, as Dr. Josefowicz testified, he has extensive experience
`
`in, for example, designing, engineering, and developing specifications for LED
`
`surface mounting, including layout of discrete LEDs, selection and design of
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`printed circuit material for LED light engines and design for surface mounting, and
`
`the selection and specification of surface-mount pad materials and surface coating.
`
`Ex. 1003 ¶¶ 4-7.
`
`Second, Lite-On quotes Dr. Josefowicz’s testimony about whether there is a
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`“real-world device” that looks like in Figure 14A of the ’685 patent,” in which he
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`stated that “I am sure that a device package could not look like this.” POR at 31.
`
`As Dr. Josefowicz had previously explained, the LED package depicted in Figure
`
`14A is an artist’s rendition, not an engineering drawing, that it depicts an LED chip
`
`that is not drawn to scale relative to the wall, and that to see the LED chip, one
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`would need to look at it under a microscope. Ex. 2006, 66:23-25, 104:15-18.
`
`Indeed, Dr. Lebby admitted that Figure 14A was not drawn to scale. Ex. 1015,
`
`16
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`
`
`
`
`
`
`
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`38:13-18. And he also admitted that the epi layers depicted in Figure 14A are
`
`enlarged, that a POSA would need a scanning electron microscope to see them
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`because they are tens of nanometers thick. Id. at 39:3-40:20.
`
`
`
`In sum, knowing that it cannot rebut Dr. Josefowicz’s analysis, Lite-On
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`resorted to applying the wrong claim construction, creating fabricated figures, and
`
`making spurious attacks on Dr. Josefowicz’s credibility. For all of the reasons
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`discussed above, the Panel should find that Nichia-825 discloses or renders
`
`obvious claim 1.
`
`B. Claim 5
`Lite-On does not offer an independent argument with respect to claim 5,
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`only implicitly relying on its arguments for claim 1. Thus, should the Panel
`
`determine that claim 1 is invalid for the reasons stated in the Petition in Ground 1,
`
`it should find that claim 5 is invalid for those same reasons and for the reasons
`
`stated in the Petition.
`
`IV. GROUND 2: Claim 2 is obvious over Nichia-825, alone or in view of
`Achyut
`
`Lite-On does not offer an independent argument with respect to Ground 2,
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`only implicitly relying on its arguments for Ground 1. Thus, should the Panel
`
`determine that claim 1 is invalid for the reasons stated in Ground 1, it should find
`
`that claim 2 is invalid for those same reasons and for the reasons stated in the
`
`Petition.
`
`17
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`
`
`
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`
`
`V. GROUND 3: Claim 3 is obvious over Nichia-825, alone or in view of
`Hashimoto
`
`A. A POSA would be motivated to modify Nichia-825 to add the
`claimed submount
`
`Lite-On argues that a POSA would not be motivated to modify Nichia-825
`
`because that reference’s flip-chip package structure is allegedly “fundamentally
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`different” than the structure in Hashimoto. POR at 36.
`
`Lite-On mischaracterizes SETi’s argument as bodily incorporation of
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`allegedly incompatible features from Hashimoto Figure 1 into Nichia-825. Id. But
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`the obviousness analysis in general and Ground 3 here does not require that bodily
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`incorporation. See Allied Erecting & Dismantling Co. v. Genesis Attachments,
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`LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016); Grimco, Inc. v. Principal Lighting
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`Group, LLC, IPR2021-00968, Paper 49 at 26-27 (P.T.A.B. Dec. 7, 2022) (rejecting
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`patent owner’s bodily incorporation argument and finding that the proposed
`
`combination did not require a direct substitution).
`
`As stated in the Petition, it would have been obvious over Nichia-825 alone
`
`to modify the reference to add the claimed submount because such a submount for
`
`flip-chip LED designs was well-known at the time of the filing of the ’685 patent.
`
`Petition at 52. Indeed, Dr. Lebby admitted that flip-chip LEDs were well-known
`
`in the art at the time of the filing of the ’685 patent. Ex. 1015, 22:19-23:3. And he
`
`also admitted that wire bonding LED electrodes was known for decades, id. at
`
`18
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`
`
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`
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`
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`29:3-16, and that similarly submounts (both insulating and conductive) had been
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`used with LEDs for decades at the time of the filing of the ’685 patent, id. at 29:18-
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`31:1.
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`Lite-On states that the “flip-chip package structure in Figure 6 of Nichia-825
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`makes a direct solder bump electrical connection to the printed circuit board and
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`does not require any intervening submount to make the connection.” POR at 36.
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`But Lite-On ignores Dr. Josefowicz’s testimony that a submount for flip-chip LED
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`designs would have been preferred to the solder balls used to connect light-
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`emitting element 410 in Figure 6. Ex. 1003 ¶ 131.
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`Lite-On also argues that a POSA would not be motivated to modify Nichia-
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`825 to add a submount because it would allegedly “increase the height of the LED
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`with respect to the bottom of the package structure such that the covering member
`
`330 package compound could not be maintained at
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