Document Security systems, Inc.

Patent Trials and Appeals Board

Nov 16, 2021

IPR2020-00908 (P.T.A.B. Nov. 16, 2021)

Trials@uspto.gov Paper 42
571-272-7822 Date: November 16, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

NICHIA CORPORATION,
Petitioner,
v.
DOCUMENT SECURITY SYSTEMS, INC.,
Patent Owner.

IPR2020-00908
Patent 6,879,040 B2

Before SCOTT C. MOORE, AMBER L. HAGY, and JASON M. REPKO,
Administrative Patent Judges.
REPKO, Administrative Patent Judge.
JUDGMENT
Final Written Decision
Determining No Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
Nichia Corporation (“Petitioner”) filed a petition to institute inter
partes review of claims 1–4, 8, and 11 of U.S. Patent No. 6,879,040 B2
(Ex. 1001, “the ’040 patent”). Paper 1 (“Pet.”). Document Security Systems,
Inc. (“Patent Owner”) did not file a Preliminary Response.
On November 17, 2020, we instituted an inter partes review of all
challenged claims based on all grounds in the Petition. Paper 6
(“Inst. Dec.”). Patent Owner filed a Response. Paper 23 (“PO Resp.”).
Petitioner filed a Reply. Paper 29 (“Pet. Reply”). Patent Owner filed a Sur-
reply. Paper 33 (“Sur-reply”). An oral hearing was held on August 20, 2021.
A transcript of that hearing has been entered into the record. Paper 41
(“Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Final Written Decision
is issued under 35 U.S.C. § 318(a). For the reasons that follow, Petitioner
has not shown by a preponderance of the evidence that any of claims 1–4, 8,
and 11 are unpatentable.
A. Related Matters
The parties indicate that Document Security Systems, Inc. v. Nichia
Corporation, No. 2:19-cv-08172 (C.D. Cal.) is related. Pet. 1; Paper 4, 2
(Patent Owner Mandatory Notices).
B. The ’040 Patent
The ’040 patent generally relates to surface-mount technology and
light emitting diodes (LEDs). Ex. 1001, 1:1–22. Surface-mount technology
refers to devices that are mounted directly onto a surface without being
“plugged into” it. Id. at 1:10–12. Surface-mounted LEDs are used in signs
and video screens, among other things. Id. at 1:17–22. It is desirable for
surface-mountable LEDs to have a small footprint, while maintaining low
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thermal resistance. Id. at 2:48–58. By contrast, Figure 1A, below, shows a
prior-art LED with undesirable properties. See id. at 2:18–26.

Figure 1A, above, shows device 100 connected to substrate 110
by solder joints 111. Id. at 1:63–67.
Device 100 contains LED 101. Id. at 1:49. The device’s footprint
corresponds to the size of its body (106). Id. at 2:23–26. But solder joints
111 extend beyond that footprint. Id. As a result, the joints are visibly
exposed to an observer. Id. at 2:40–46. A display that uses these devices can
suffer from visual disturbances caused by reflections from these joints. Id.
Also, the device’s thermal resistance is high because the heat path between
the LED and the substrate is very long. Id. at 2:19–22. This, in turn,
increases the LED’s temperature, which affects the drive current.
Id. at 2:19–23.
To purportedly mitigate these and other issues, the ’040 patent’s
surface-mountable device has a smaller footprint and recesses that minimize
the amount of solder that is visible. Id. at 5:29–36. Figure 4A, below, shows
one embodiment. Id. at 3:7–9.
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Figure 4A, above, is a side view of surface-mountable opto-electronic
device 400 with transparent body 402. Id. at 4:60–63.
Because the contacts do not extend horizontally beyond the package’s body,
this device’s footprint is smaller than the one in Figure 1A. Id. at 5:29–31.
Also, the recesses provide enough room for solder so that it does not extend
beyond the length of the body. Id. at 5:32–35. As a result, the devices can be
more closely packed, and the solder is not visible from the viewing
direction. Id. at 5:35–36.
C. Claims
Of the challenged claims, only claim 1 is independent.
1. A surface mountable electronic device, comprising:
a packaged body having a mounting surface, the mounting
surface having a plurality of recesses at side edges of the body
and
a plurality of electrical contacts, each of which extends from an
interior portion of the mounting surface and terminates in one
of said recesses, and each of which conforms to one of said
recesses, wherein said recesses and electrical contacts are
sized to provide offsets between said mounting surface and
said electrical contacts.
Id. at 11:16–28.
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D. Evidence
Name Reference Exhibit No.
Kim Japanese Unexamined Patent Application
Publication No. 10-200038
10041
Adachi Japanese Unexamined Patent Application
Publication No. 6-350206
1005
Nagayama Japanese Unexamined Patent Application
Publication No. 2000-77725
1006
Okazaki Japanese Unexamined Patent Application
Publication No. 6-90026
1007
Shirahata Japanese Examined Patent Publication No. 7-
50754B2
1019
The declaration of James R. Shealy, Ph.D. (“Shealy Decl.”) is Exhibit
1003. The declaration of R. Jacob Baker, Ph.D., P.E. (“Baker Decl.”) is
Exhibit 2001.
E. Instituted Grounds
Claim(s) Challenged Pre-AIA
2
35 U.S.C. § Reference(s)/Basis
1–3, 11 102(b) Kim
8 103(a) Kim, Shirahata
1–4, 8 102(b) Adachi
1–4, 8 102(b) Nagayama
1–4, 8, 11 102(b) Okazaki

1 All citations in this Decision refer to the translated version of Kim.
2 Congress amended §§ 102 and 103 when it passed the Leahy-Smith
America Invents Act (AIA). Pub. L. No. 112–29, § 3(c), 125 Stat. 284, 287
(2011). Because the ’040 patent issued before the effective date of the AIA’s
amendments to §§ 102 and 103, the previous versions of §§ 102 and 103
apply.

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II. ANALYSIS
A. Level of Ordinary Skill in the Art
According to Petitioner, “a person of ordinary skill in the art
(‘POSA’) would have had at least a B.S. in mechanical or electrical
engineering or a related field, and four [years of] experience designing or
developing semiconductor—including LED—packages.” Pet. 13 (citing
Shealy Decl. ¶ 31). Petitioner adds that “a higher education or skill level
might make up for less experience, and vice-versa.” Id. at 13–14.
Patent Owner does not propose an alternative assessment but states:
“For the purposes of this IPR proceeding, Patent Owner adopts Petitioner’s
definition of level of ordinary skill.” PO Resp. 7 (citing Baker Decl. ¶ 26).
We apply Petitioner’s proposed definition, which appears to be
consistent with the level of skill reflected in the asserted references.
See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining
that the prior art itself can reflect an appropriate level of skill in the art).
B. Claim Construction
1. Petitioner’s Constructions
In the Petition, Petitioner asks the Board to construe the claim terms
(1) “packaged body” and “body” as a “protective shell to hold a
semiconductor and electrical contacts,” (2) “conforms to” as “is adapted to
and follows the shape of,” (3) “offset” as “space,” and (4) “mounting
surface” as a “planar surface at which the device is mounted, which surface
is essentially co-planar with the planar bottom surface of the body, and
which surface does not follow the contours of its recesses.” Pet. 18–26.
The Petition discusses two possible constructions for “recesses.”
Id. at 17–19. First, Petitioner asserts that the recited “recesses” are “the
depressions or indentations at the side edges of the body.” Id. at 17. To
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illustrate this construction, Petitioner annotates Figure 4A with the recesses
circled in blue, which is shown below. Id.

Annotated Figure 4A, above, shows a lead-less surface mountable
opto-electronic device. Ex. 1001, 3:7–8.
As annotated by Petitioner, Figure 4A shows the packaged body in yellow,
the mounting surface as a red line, the electrical contacts in green, the offsets
as gray regions, and the area defined by the recesses circled in blue. Pet. 17.
Second, Petitioner explains that “Patent Owner may also argue that
the ‘recesses’ are the depressions or indentations in the device as a whole
(including the electrical contacts), as opposed to in the body.” Id. at 18
(citing Ex. 1009, 13–14; Ex. 1010, 1–2; Ex. 1011, 3–4; Ex. 1017, 1;
Ex. 1018). To illustrate this construction, Petitioner provides a different
annotated version of Figure 4A, also with the area defined by the recesses
circled in blue, as shown below. Id.
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Annotated Figure 4A, above, shows a lead-less surface mountable
opto-electronic device. Ex. 1001, 3:7–8.
As annotated by Petitioner, Figure 4A shows the packaged body in yellow,
the mounting surface as a red line, the electrical contacts in green, the offsets
as gray regions, and the area defined by the recesses circled in blue. Pet. 18.
Petitioner asserts that “this ‘alternative’ construction does not affect the
Grounds [in the Petition], as the prior art teaches both ‘recesses’ in the body,
as well as conforming electrical contacts, such that the contacts also have
‘recesses.’” Id. at 19.
2. The Institution Decision
Patent Owner did not file a Preliminary Response. Thus, when the
Board instituted this proceeding, the record did not contain any alternatives
to Petitioner’s proposed constructions.
For the purpose of determining whether to institute this proceeding,
the Board adopted Petitioner’s proposed constructions. Inst. Dec. 8. The
Board requested that “the parties address the proper construction of the
claim terms ‘mounting surface’ and ‘recesses’” during trial. Id. The Board
also requested that the parties “address the related issue of how (1) the
mounting surface has ‘recesses’ to which portions of the ‘electrical contacts’
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conform yet (2) the mounting surface is spaced apart from those contacts by
‘offsets.’” Id.
3. Patent Owner’s Construction
In its Response, Patent Owner disputes only Petitioner’s proposed
construction of “mounting surface.” PO Resp. 11. In particular, Patent
Owner argues that “the mounting surface having a plurality of recesses”
should be construed as “the mounting surface having indentations or clefts
that provide room for solder to mount the device.” Id. According to Patent
Owner, the mounting surface must “follow the contours of the recesses.” Id.
In Patent Owner’s view, the patent’s inventive concept is a mounting surface
with indentations or clefts to provide room for solder. Id. at 11–12.
Patent Owner also responds to the issue of how the mounting surface
has recesses to which portions of the electrical contacts conform and yet the
mounting surface is spaced apart from those contacts by offsets. In
particular, Patent Owner explains that the District Court in the parallel
proceeding provided one example in its order denying Petitioner’s motion to
dismiss: “if the lead frame were simply a flat piece of metal at the bottom of
the recess and in the shape of the recess, that could be one example of a way
that the lead frame could conform to the recess and yet not fill the space.”
Id. at 13–14 (quoting Ex. 2003, Order Regarding Motion to Dismiss, 3)
(emphasis added). In Dr. Baker’s opinion, the term “lead frame” in the order
refers to “[t]he metal used for the electrical contacts.” Ex. 1025 (Transcript
of Dr. Baker’s Deposition), 36:15. Dr. Baker added that “[p]art of a lead
frame is the electrical contacts” but “the lead frame can be more than just
[the] electrical contacts, it can be a mounting.” Id. at 36:16–37:12.
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4. Analysis
We need only construe terms that are in controversy. Nidec Motor
Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
803 (Fed. Cir. 1999)). We use “the same claim construction standard that
would be used to construe the claim[s] in a civil action under 35 U.S.C.
[§] 282(b).” See 37 C.F.R. § 42.100(b) (2019). Under this standard, we
construe the claims in accordance with the ordinary and customary meaning
as would have been understood by one of ordinary skill in the art in light of
the patent’s written description and the prosecution history. See id.; Phillips
v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc).
For purposes of this decision, we need only address the proper
construction of “mounting surface,” which is disputed by the parties. Here,
Patent Owner’s argument and evidence produced during trial show that
Petitioner’s construction of “mounting surface” is not in accordance with the
ordinary and customary meaning as would have been understood by one of
ordinary skill in the art. In particular, we agree with Patent Owner that “the
mounting surface having a plurality of recesses,” as recited in claim 1,
means that the recesses are in the mounting surface itself. PO Resp. 10–11.
As we discuss further here, this requirement cannot be satisfied by a
single planar surface, as used in Petitioner’s analysis. See, e.g., Pet. 18. Both
parties acknowledge the argument that the claimed recesses could be
interpreted in at least two ways: The recesses could be (1) only in the
packaged body, excluding the contacts; or (2) in the device as a whole.
PO Resp. 12 n.6; see also Pet. 18–19 (reviewing the second interpretation).
Under both interpretations, Petitioner asks the Board to construe the
mounting surface as a plane. See Pet. 18–19. We need not resolve which
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interpretation is correct because Petitioner’s construction of “mounting
surface” is flawed under either interpretation of recesses.
In particular, Petitioner’s construction relies heavily on the
embodiment shown in Figure 4A. See id. at 17–18. But, read in light of
Figure 4A alone, the claim would fail to inform one skilled in the art, with
reasonable certainty, how the recited mounting surface can have “recesses,”
to which portions of the “electrical contacts” conform, while also being
spaced apart from those contacts by “offsets,” as required by claim 1. Figure
4A from the patent is reproduced below:

Figure 4A above shows a lead-less surface mountable
opto-electronic device. Ex. 1001, 3:7–8.
The written description states that, in Figure 4A, “underside 410 is itself the
mounting surface of the device.” Id. at 5:3–4. By contrast, the written
description refers to the surface underneath the device as “a flat surface on
which the device is mounted.” Id. at 5:11–14. That is, the written description
distinguishes “the mounting surface” (underside 410) from another surface
“on which the device is mounted” in the Figure 4A embodiment. See id. at
5:3–14. Unlike this embodiment, Petitioner’s construction equates the
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recited mounting surface to “a planar surface at which the device is
mounted.” Pet. 18.
Also, claim 1 recites that the “recesses and electrical contacts are
sized to provide offsets between said mounting surface and said electrical
contacts.” Ex. 1001, 11:25–28. But Figure 4A shows recesses 420, 421
formed between parts of the contact (412, 414, 416, and 418) and “a flat
surface on which the device is mounted.” Id. at 5:11–14. In fact, “electrical
contacts 404, 406 are mounted in the underside 410” Id. at 5:1–3 (emphasis
added). We emphasize “in” here because it suggests that contacts 404, 406
are within underside 410, not offset from it. In view of these differences, we
see no persuasive support for the position that Figure 4A falls within the
scope of claim 1, contrary to Petitioner’s arguments here. See, e.g., Pet. 17–
18; Pet. Reply 3–4.
In a deposition during trial, Patent Owner’s declarant, Dr. Baker, gave
an opinion on how Figure 4A might fall within the scope of claim 1.
See, e.g., Ex. 1025, 44:24–93:5 (Baker Deposition Transcript). As part of his
testimony, Dr. Baker annotated Figure 4A, which is reproduced below.
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Figure 4A with annotations from Dr. Baker: green highlighting on the
contacts, pink highlighting on the mounting surface, and blue labels on
the offset and parts of the mounting surface (“1” and “2”). Ex. 1026, 12;
Pet. Reply 5–6; Ex. 1025, 82:6–83:8.
According to Petitioner, “Dr. Baker stated that the ‘offset’ he identified was
a distance, in a ‘y direction,’ between the bottom of electrical contact portion
416 in the recess (blue dot labeled ‘1’) and ‘a line that extends from’ a
different portion of the mounting surface (blue dot labeled ‘2’).”
Pet. Reply 6 (citing Ex. 1025, 84:5–85:18, 85:21–86:4).
Patent Owner’s arguments suggest that it believes Dr. Baker’s
interpretation of the recited “mounting surface” is correct. Sur-reply 9–13.3
We disagree because Dr. Baker’s identified mounting surface is inconsistent
with the claim language and written description. In particular, it is unclear
how the offset that Dr. Baker drew on Figure 4A is “between said mounting
surface and said electrical contacts,” as recited by the claim. Ex. 1026.
Rather, Dr. Baker appears to have drawn an offset from a mounting surface

3 We note that Patent Owner states that it “has not offered a construction for
‘mounting surface.’” Sur-reply 9 n.1.
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with hypothetical “planar projections” that extend beyond the device.
Accord Pet. Reply 6. This is inconsistent with the ’040 patent’s description
of Figure 4A, which describes that “underside 410 is itself the mounting
surface of the device.” Ex. 1001, 5:3–4.
To the extent that Dr. Baker’s testimony contemplates a mounting
surface as a single plane, such a surface is inconsistent with the claim
language requiring a mounting surface having recesses, which cannot be
satisfied by a plane for the reasons discussed in connection with Petitioner’s
construction. Thus, we assign Dr. Baker’s testimony on this issue little
weight. See, e.g., Ex. 1025, 39:4–12, 41:7–10, 44:7–45:2; Ex. 1026, 12.
Petitioner argues that its construction resolves an impossibility
inherent to the claim language. See Pet. 14–19; Pet. Reply 3. In Petitioner’s
view, “a mounting surface that follows the contours of the recesses renders
impossible an offset between the recess-conforming electrical contacts and
the mounting surface’s recesses.” Pet. Reply 3. Testimony from Petitioner’s
own declarant, though, does not support this assertion. In a deposition during
the trial, Dr. Shealy testified that the construction of mounting surface
offered in the Petition is not the proper construction that one of ordinary skill
in the art would understand, and the planar mounting surface described in
the Petition “may not be the only way” to resolve the claim language.
Ex. 2002, 22:5–19.
In sum, neither party has sufficiently explained how the mounting
surface in Figure 4A (1) has “recesses” to which portions of the “electrical
contacts” conform and (2) is spaced apart from those contacts by “offsets,”
as required by the claim. Specifically, Petitioner construes “mounting
surface” as a plane. Pet. 18–19. And Patent Owner’s argument suggests that
it believes Dr. Baker’s interpretation correctly reconciles how the Figure 4A
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device can meet both requirements. Sur-reply 9–13. Both parties’
explanations, however, rely on an offset with respect to a planar surface that
does not follow the surface of the device itself, which contradicts the claim
language in the ways discussed above.
In this proceeding, Petitioner “has the burden from the onset to show
with particularity why the patent it challenges is unpatentable.” Harmonic
Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). For the
reasons discussed here, we determine that Petitioner has not made that
showing in this proceeding because the claim construction that is the basis
for its unpatentability arguments is unsupportable by the record.
To resolve the issues in this case, we need not further construe
“mounting surface” or any other terms.
C. Anticipation by Kim
Petitioner asserts that Kim discloses the surface-mountable device
recited in claims 1–3 and 11. Pet. 38–53. Petitioner asserts that, in Kim’s
annotated Figures 1 and 3, below, the recited “packaged body” is highlighted
in yellow. Id. at 41, 43–44.
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Kim’s Figure 1, above, is a longitudinal cross-sectional view of a
bottom-lead semiconductor package with Petitioner’s annotations.
Id. at 44.

Kim’s Figure 3, above, is a cross-sectional view of a bottom-lead
semiconductor package mounted on a PCB with
Petitioner’s annotations. Id. at 41.
Annotated Figures 1 and 3, above, show molded resin package body 37 in
yellow. Id. at 40. Kim describes element 37 as “a molding part” that is
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“molded so as to seal the bottom lead frame, the semiconductor chip, and the
conductive wire groups.” Ex. 1004 ¶ 8.
In annotated Figures 1 and 3, above, a red line identifies the recited
“mounting surface” under Petitioner’s construction. Pet. 41. Petitioner
asserts that this mounting surface has recesses that are “the depressions or
indentations in molded resin package body 37, occupied by ‘internal leads
32, which first extend obliquely upward . . . then extend horizontally,’ and
also occupied by the grooves 38 under the internal leads) at ‘side edges of
[that] body.’” Id. at 41–42 (citing Ex. 1004 ¶ 8, Fig. 1). According to
Petitioner’s alternative construction, “If the ‘recesses’ are the depressions or
indentations in the device as a whole, then, in Kim, the ‘recesses’ would
define ‘grooves 38’ below the internal leads 32.” Id. at 42 n.5 (citing
Shealy Decl. ¶ 42).
For the reasons discussed in the Claim Construction Section, we
disagree that the recited mounting surface can be a plane and still satisfy all
the claim limitations. Supra § II.B. In particular, we agree with Patent
Owner that Petitioner’s planar mounting surface does not include “recesses”
at the side edges of the body as the claim requires. PO Resp. 15. Rather, the
planar surface identified by Petitioner sits below the recesses in Kim’s
device—i.e., “the depressions or indentations in molded resin package body
37” or the device as a whole. Pet. 41–42; Ex. 1004, Figs. 1, 3.
Petitioner argues that, even under Dr. Baker’s analysis, Kim discloses
the claimed mounting surface. Pet. Reply 10–11 (citing Ex. 1027).
Dr. Baker’s analysis, however, is not consistent with the written description
or the claims. Supra § II.B. In its challenge, Petitioner compares Kim’s
device to the embodiment shown in Figure 4A of the ’040 patent.
See Pet. 38–53. As discussed in the Claim Construction Section, however,
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we see little support for the argument that Figure 4A falls within the scope
of the challenged claim. Supra § II.B. Contrary to the claim’s requirement
that the device itself comprise a mounting surface with “recesses and
electrical contacts [that] are sized to provide offsets between said mounting
surface and said electrical contacts,” both Kim’s device and the Figure 4A
embodiment show recesses between the device and a flat surface on which
the device is mounted. Compare Ex. 1004, Figs. 1, 3, with Ex. 1001, Fig.
4A, 5:11–14.
Thus, Petitioner has not shown by a preponderance of the evidence
that claim 1 is unpatentable as anticipated by Kim.
Claims 2, 3, and 11 also require a “mounting surface” because those
claims depend from claim 1. Thus, Petitioner has not shown that claims 2, 3,
and 11 are unpatentable as anticipated by Kim for the same reasons as
claim 1.
D. Obviousness over Kim and Shirahata
Petitioner asserts that claim 8 is unpatentable as obvious over Kim
and Shirahata. Pet. 54–59. Claim 8 depends from claim 1. Ex. 1001, 12:3–5.
This ground relies on Kim for the limitations of claim 1, including the
recited “mounting surface.” Pet. 54–59. Petitioner has not shown that Kim
teaches the mounting surface in claim 1. Supra § II.C. Thus, Petitioner has
not shown by a preponderance of the evidence that claim 8 is unpatentable
as obvious over Kim and Shirahata.
E. Anticipation by Adachi
Petitioner asserts that claims 1–4 and 8 are unpatentable as anticipated
by Adachi. Pet. 59–71. Adachi’s Figure 11 is shown below with Petitioner’s
annotations. Id. at 64.
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Adachi’s Figure 11 shows a side view illustrating a chip-type light
emitting electronic component mounted on a mounting board with
Petitioner’s annotations. Id.
The annotated figure, above, shows Petitioner’s identification of the body
(yellow), the recesses (blue), and the mounting surface (red), as asserted in
this challenge. Id. According to Petitioner, “These recesses—the areas
defined thereby circled in blue—are depressions or indentations in the
yellow packaged body in Adachi’s Figure 11 ( . . . (‘cutaway portions 7’)),
occupied by the ‘terminal parts 3e’ . . . (green), as well as the spaces beneath
(pink).” Id. at 63. According to Petitioner’s alternative construction, “If the
claimed ‘recesses’ are the depressions or indentations in the device as a
whole, then in Adachi, the ‘recesses’ would define just the pink-shaded
regions.” Id. at 63 n.12.
Like the ground based on Kim, however, Petitioner identifies the
mounting surface as the red line in the annotated drawing above: “The
packaged body is yellow, and its mounting surface, which is
essentially co-planar with the planar bottom of lead electrode parts 3b,
secondary molding 5, and primary molding 1, is identified in red in Adachi’s
Figures 10 and 11 . . . .” Id. at 61 (citing Shealy Decl. ¶ 229). Adachi’s
Figures 10 and 11 are shown below with Petitioner’s annotations. Id. at 62.
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Annotated Figure 10, above, shows a cross-sectional view
of Adachi’s device. Id.

Annotated Figure 11, above, shows a side view of Adachi’s device. Id.
For the reasons discussed in the Claim Construction Section, we
disagree that the recited mounting surface can be a plane and still satisfy all
the claim limitations. Supra § II.B. In particular, we agree with Patent
Owner that Petitioner has not shown that the planar mounting surface
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identified in Adachi includes “recesses” at the side edges of the body as
required by the claim. PO Resp. 23 (citing Baker Decl. ¶ 74). The planar
surface identified by Petitioner sits below the recesses. See Ex. 1005,
Figs. 10, 11; Pet. 62.
Petitioner argues that, even under Dr. Baker’s analysis, Adachi
discloses the claimed mounting surface. Pet. Reply 18–19. Dr. Baker’s
analysis, however, is not consistent with the written description or the
claims. Supra § II.B. In its challenge, Petitioner compares Adachi’s device
to the embodiment shown in Figure 4A of the patent. See Pet. 59–71. As
discussed in the Claim Construction Section, we see little support for the
argument that Figure 4A falls within the scope of the challenged claim.
Supra § II.B. Contrary to the claim’s requirement that the device itself
comprise a mounting surface with “recesses and electrical contacts [that] are
sized to provide offsets between said mounting surface and said electrical
contacts,” both Adachi’s device and the Figure 4A embodiment show
recesses between the device and a flat surface on which the device is
mounted. Compare Ex. 1005, Figs 10, 11, with Ex. 1001, Fig. 4A, 5:11–14.
Thus, Petitioner has not shown by a preponderance of the evidence
that claim 1 is unpatentable as anticipated by Adachi.
Claims 2–4 and 8 also require a “mounting surface” according to
claim 1 because those claims depend from claim 1. Thus, Petitioner has not
shown that claims 2–4 and 8 are unpatentable as anticipated by Adachi for
the same reasons as claim 1.
F. Anticipation by Nagayama
Petitioner also asserts that claims 1–4 and 8 are unpatentable as
anticipated by Nagayama. Pet. 71–82. Nagayama’s Figure 1(b) is shown
below with Petitioner’s annotations. Id. at 76.
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Nagayama’s Figure 1(b), above, is a cross-sectional view of a
semiconductor package with Petitioner’s annotations. Id.
As annotated by Petitioner, Figure 1(b) shows the body (yellow), the
electrical contacts (green), the mounting surface (red), and the offsets (pink).
Id. Petitioner asserts that Nagayama’s “recesses are depressions or
indentations in the yellow packaged body, at side edges thereof; and the
areas defined by the recesses are circled in blue in Figure 1(b).” Id. at 75.
According to Petitioner’s alternative construction, “If the ‘recesses’ are the
depressions or indentations in the device as a whole, then, in Nagayama, the
‘recesses’ would define just the pink-shaded regions.” Id. at 76 n.17.
For the reasons discussed in the Claim Construction Section, we
disagree that the recited mounting surface can be a plane and still satisfy all
the limitations of claim 1. Supra § II.B. In particular, we agree with Patent
Owner that Petitioner has not shown that the planar mounting surface
identified in Nagayama includes “recesses” at the side edges of the body as
required by the claim. PO Resp. 31 (citing Baker Decl. ¶ 92). The planar
surface identified by Petitioner sits below the recesses. See Ex. 1006,
Fig. 1(b); Pet. 75–76.
Petitioner argues that, even under Dr. Baker’s analysis, Nagayama
discloses the claimed mounting surface. Pet. Reply 26 (citing Ex. 1028).
Dr. Baker’s analysis, however, is not consistent with the written description
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23
or the claims. Supra § II.B. In its challenge, Petitioner compares
Nagayama’s device to the embodiment shown in Figure 4A of the patent.
See Pet. 71–82. As discussed in the Claim Construction Section, we see little
support for the argument that Figure 4A falls within the scope of the
challenged claim. Supra § II.B. Contrary to the claim’s requirement that the
device itself comprise a mounting surface with “recesses and electrical
contacts [that] are sized to provide offsets between said mounting surface
and said electrical contacts,” both Nagayama’s device and the Figure 4A
embodiment show recesses between the device and a flat surface on which
the device is mounted. Compare Ex. 1006, Fig. 1(b), with Ex. 1001, Fig.
4A, 5:11–14.
Thus, Petitioner has not shown by a preponderance of the evidence
that claim 1 is unpatentable as anticipated by Nagayama.
Claims 2–4 and 8 also require a “mounting surface” according to
claim 1 because those claims depend from claim 1. Thus, Petitioner has not
shown that claims 2–4 and 8 are unpatentable as anticipated by Nagayama
for the same reasons as claim 1.
G. Anticipation by Okazaki
Petitioner also asserts that claims 1–4, 8, and 11 are unpatentable as
anticipated by Okazaki. Pet. 83–95. Okazaki’s Figures 5E and 5B are shown
below with Petitioner’s annotations. Id. at 87.
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Okazaki’s Figures 5E and 5B, above, are a cross-sectional view and a
side view, respectively, of a light-emitting device
with Petitioner’s annotations. Id.
The annotated figures show the body (yellow), the electrical contacts
(green), the mounting surface (red), and the offsets (pink). Id. at 86–87, 90.
Petitioner asserts that Okazaki’s “recesses at side edges of the body are the
depressions or indentations in the yellow packaged body, and the areas
defined thereby are identified by blue circles” in the figures shown above,
and the recesses “are occupied by portions of metal plating 4 (green), as well
as the pink spaces beneath.” Id. at 86 (citing Shealy Decl. ¶¶ 280–82).
According to Petitioner’s alternative construction, “If the claimed ‘recesses’
are the depressions or indentations in the device as a whole, then, in
Okazaki, the ‘recesses’ would define just the pink regions.” Id. at 87 n.22
(citing Shealy Decl. ¶ 282).
For the reasons discussed in the Claim Construction Section, we
disagree that the recited mounting surface can be a plane and still satisfy all
the claim limitations. Supra § II.B. In particular, we agree with Patent
Owner that Petitioner has not shown that the planar mounting surface
identified in Okazaki includes “recesses” at the side edges of the body as
required by the claim. PO Resp. 36 (citing Baker Decl. ¶ 105). The planar
surface identified by Petitioner sits below the recesses. See Ex. 1007,
Figs. 5E and 5B; Pet. 86–87, 90.
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Petitioner argues that, even under Dr. Baker’s analysis, Okazaki
discloses the claimed mounting surface. Pet. Reply 31–32. Dr. Baker’s
analysis is not consistent with the written description or the claims.
Supra § II.B. In its challenge, Petitioner compares Okazaki’s device to the
embodiment shown in Figure 4A of the patent. Pet. 83–95. As discussed in
the Claim Construction Section, we see little support for the argument that
Figure 4A falls within the scope of the challenged claim. Supra § II.B.
Contrary to the claim’s requirement that the device itself comprise a
mounting surface with “recesses and electrical contacts [that] are sized to
provide offsets between said mounting surface and said electrical contacts,”
both Okazaki’s device and the Figure 4A embodiment show recesses
between the device and a flat surface on which the device is mounted.
Compare Ex. 1007, Figs. 5E, 5B, with Ex. 1001, Fig. 4A, 5:11–14.
Thus, Petitioner has not shown by a preponderance of the evidence
that claim 1 is unpatentable as anticipated by Okazaki.
Claims 2–4, 8, and 11 also require a “mounting surface” according to
claim 1 because those claims depend from claim 1. Thus, Petitioner has not
shown that claims 2–4, 8, and 11 are unpatentable as anticipated by Okazaki
for the same reasons as claim 1.

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III. CONCLUSION
Petitioner has not met its burden to show that claims 1–4, 8, and 11
are unpatentable.

Claims 35 U.S.C. § Reference(s)
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1–3, 11 102(b) Kim 1–3, 11
8 103(a) Kim, Shirahata 8
1–4, 8 102(b) Adachi 1–4, 8
1–4, 8 102(b) Nagayama 1–4, 8
1–4, 8, 11 102(b) Okazaki 1–4, 8, 11
Overall
Outcome
1–4, 8, 11

IV. ORDER
It is
ORDERED that Petitioner has not shown that claims 1–4, 8, and 11 of
U.S. Patent No. 6,879,040 B2 are unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to this proceeding seeking judicial review of the Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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FOR PETITIONER:
Patrick R. Colsher
Matthew G. Berkowitz
David J. Cooperberg
Eric S. Lucas
SHEARMAN & STERLING LLP
patrick.colsher@shearman.com
matthew.berkowtiz@shearman.com
david.cooperberg@shearman.com
eric.lucas@shearman.com

FOR PATENT OWNER:
Neil A. Reubin
Philip Wang
Brian Ledahl
Paul A. Kroeger
RUSS AUGUST & KABAT
nrubin@raklaw.com
pwang@raklaw.com
bledahl@raklaw.com
pkroeger@raklaw.com