Seoul Semiconductor Co., Ltd.

Patent Trials and Appeals Board

Jul 21, 2021

IPR2020-00410 (P.T.A.B. Jul. 21, 2021)

Trials@uspto.gov Paper 47
571-272-7822 Date: July 21, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SATCO PRODUCTS, INC.,
Petitioner,
v.
SEOUL SEMICONDUCTOR CO., LTD.
Patent Owner.

IPR2020-00410
Patent 10,134,967 B2

Before ERICA A. FRANKLIN, JEFFREY W. ABRAHAM, and
ELIZABETH M. ROESEL, Administrative Patent Judges.
ROESEL, Administrative Patent Judge.
JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
Granting Patent Owner’s Motion to Amend
35 U.S.C. § 318(a)
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I. INTRODUCTION
A. Background and Summary
Satco Products, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
seeking inter partes review of claims 1–16 (“the challenged claims”) of U.S.
Patent No. 10,134,967 B2 (Ex. 1001, “the ’967 Patent”). Seoul
Semiconductor Co., Ltd. (“Patent Owner”) filed a Preliminary Response.
Paper 7. We instituted an inter partes review. Paper 8 (“Inst. Dec.”).
After institution, Patent Owner filed a Response (Paper 17, “PO
Resp.”), Petitioner filed a Reply (Paper 25, “Pet. Reply”), and Patent Owner
filed a Sur-reply (Paper 37, “PO Sur-reply”). Patent Owner also filed a
contingent Motion to Amend (Paper 19, “PO MTA”), and Petitioner filed an
Opposition (Paper 26, “Pet. MTA Opp.”). We issued Preliminary Guidance.
Paper 32 (“Prelim. Guidance”). Petitioner filed a Reply to the Preliminary
Guidance (Paper 41, “Pet. MTA Reply”), and Patent Owner filed a Sur-reply
to the Preliminary Guidance (Paper 43, “PO MTA Sur-reply”). An oral
hearing was held on April 11, 2021, and a transcript of the hearing is
included in the record. Paper 46.
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons that
follow, we determine that Petitioner has shown by a preponderance of the
evidence that claims 1–16 of the ’967 Patent are unpatentable and that
Petitioner has not shown by a preponderance of the evidence that proposed
substitute claims 17–22 are unpatentable.
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B. Real Parties in Interest
Petitioner identifies Satco Products, Inc. as the real party in interest.
Pet. 1. Patent Owner identifies Seoul Semiconductor Co., Ltd. as the real
party in interest. Paper 4, 1 (Mandatory Notice).
C. Related Matters
The parties identify the following district court actions in which
Patent Owner is asserting the ’967 Patent:
Seoul Semiconductor Co., Ltd. v. Satco Products, Inc.,
No. 2:19-cv-04951 (E.D.N.Y.);
Seoul Semiconductor Co., Ltd. v. The Factory Depot
Advantages, Inc., No. 2-19-cv-05065 (C.D. Cal.); and
Seoul Semiconductor Co., Ltd. v. Healthe, Inc., No. 6-19-
cv-02264 (M.D. Fla.).
Pet. 1; Paper 4, 1–2.
Patent Owner identifies Application No. 16/953,254, filed November
19, 2020, seeking a broadening reissue of the ’967 Patent. Paper 18
(Updated Mandatory Notices). In view of this inter partes review,
prosecution of the reissue application was suspended for a period of six
months effective December 3, 2020.
D. The ’967 Patent (Ex. 1001)
The ’967 Patent discloses a light emitting device “configured to
enhance adhesive force between a lead frame and a molding unit by forming
a fixing space through the lead frame and integrally forming the molding
unit on the top surface of the lead frame and in the fixing space.” Ex. 1001,
1:26–31. An embodiment is shown in Figures 1 and 2, which are
reproduced below.
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Figures 1 and 2 show top and bottom views, respectively, of a light emitting
device having lead frame units 10 formed of metal, including first and
second lead frames 110 and 120 having fixing spaces 20, including outer
fixing holes 111 and 121. Ex. 1001, 2:43–46, 3:1–27, 3:37–47. Stepped
portions 113 and 123 are formed on sidewalls of outer fixing holes 111
and 121. Id. at 3:48–52. Light emitting diode chip 130 is mounted on first
lead frame 110 and connected to second lead frame 120 by wire 150. Id.
at 3:67–4:3. Molding unit 140 is formed on a top surface of lead frame
units 10 to protect light emitting diode chip 130. Id. at 3:10–12.
The ’967 Patent describes the function of fixing spaces 20 as follows:
When the molding unit 140 is formed on top surfaces of
the first and second lead frames 110 and 120, molding resin for
the molding unit 140 is filled in the fixing spaces 20 such that the
molding resin applied on the top surfaces of the first and second
lead frames 110 and 120 and the molding resin filled in the fixing
spaces 20 can be monolithic. That is, the fixing spaces 20
function to allow the molding unit 140 to be securely adhered to
the top surfaces of the lead frame units 10.
Ex. 1001, 3:28–36.
Therefore, the molding unit 140 formed on the top surfaces of
the first and second lead frames 110 and 120 extends to the outer
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fixing holes 111 and 121 and is hooked on the stepped portions
113 and 123. Therefore, the separation of the molding unit 140
from the first and second lead frames 110 and 120 can be
physically prevented.
Id. at 3:52–58.
E. Illustrative Claim
The ’967 Patent includes 16 claims, all of which are challenged in the
Petition. Claims 1 and 9 are independent. Claim 1 is reproduced below:
1. A light-emitting device, comprising:
a first lead frame and a second lead frame spaced apart
from each other, the first and second lead frames each
comprising a top surface, an opposing bottom surface, and
sidewalls arranged between the top surface and the bottom
surface; and
a light-emitting diode chip disposed on the top surface of
the first or second lead frame, wherein:
each of the first lead frame and the second lead
frame comprises a first undercut sidewall, a second
undercut sidewall, and a third undercut sidewall that at
least partially define a fixing space, the fixing space being
formed by the undercut sidewalls of the first lead frame
and the second lead frame,
the top surfaces of the first and second lead frames
are substantially flat, and
the first lead frame and the second lead frame face
each other in a horizontal direction such that the first
undercut sidewall of the first lead frame faces the first
undercut sidewall of the second lead frame,
the second undercut sidewall and the third undercut
sidewall of the first lead frame are parallel to each other
and perpendicular to the first undercut sidewall of the first
lead frame, and
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the second undercut sidewall and the third undercut
sidewall of the second lead frame are parallel to each other
and perpendicular to the first undercut sidewall of the
second lead frame.
Ex. 1001, 6:28–55.
Claim 9 contains the same limitations as claim 1 and an additional
limitation that recites: “the top surface of the first and second lead frames
are on substantially the same plane.” Ex. 1001, 8:9–10; see Pet. 51–52
(chart comparing claims 1 and 9).
F. Asserted Grounds
Petitioner asserts the following grounds of unpatentability:
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1–16 102(b)1 Lee2
1–16 103(a) Lee
G. Testimonial Evidence
Petitioner filed a Declaration of P. Morgan Pattison, Ph.D. (Ex. 1003)
with the Petition and a second declaration of Dr. Pattison (Ex. 1024) with the
Reply. Patent Owner cross-examined Dr. Pattison twice and filed transcripts
of the depositions as Exhibits 2023 and 2024. Petitioner filed a Declaration
of Michael R. Krames, Ph.D. (Ex. 1025) with its Opposition to the Motion to
Amend. Patent Owner cross-examined Dr. Krames and filed a transcript of
the deposition as Exhibit 2027.

1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102 and 103, effective
March 16, 2013. Because the ’967 Patent asserts the benefit of applications
filed before this date, the pre-AIA version of §§ 102 and 103 apply.
Ex. 1001, code (63).
2 Ex. 1004, US 2006/0043401 A1, published March 2, 2006 (“Lee”).
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Patent Owner filed a Declaration of Dr. Jung Han (Ex. 2001) with the
Preliminary Response and a second declaration of Dr. Han (Ex. 2008) with
the Response. Petitioner cross-examined Dr. Han and filed a transcript of
the deposition as Exhibit 1022. Patent Owner also filed a Declaration of
Monica Hansen, Ph.D. (Ex. 2009) with the Response. Petitioner cross-
examined Dr. Hansen and filed a transcript of the deposition as
Exhibit 1023.
II. ANALYSIS
A. Legal Standards
“In an [inter partes review], the 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) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
petitions to identify “with particularity . . . the evidence that supports the
grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b)
(requiring a petition for inter partes review to identify how the challenged
claim is to be construed and where each element of the claim is found in the
prior art patents or printed publications relied upon).
A patent claim is unpatentable under 35 U.S.C. § 103 if the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved based on underlying factual
determinations including: (1) the scope and content of the prior art; (2) any
differences between the claimed subject matter and the prior art; (3) the level
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of ordinary skill in the art; and (4) when presented, objective evidence of
nonobviousness, i.e., secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17–18 (1966).3
Additionally, the obviousness inquiry typically requires an analysis of
“whether there was an apparent reason to combine the known elements in
the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”)). Furthermore, Petitioner does not satisfy its burden of
proving obviousness by employing “mere conclusory statements,” but “must
instead articulate specific reasoning, based on evidence of record, to support
the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd.,
829 F.3d 1364, 1380 (Fed. Cir. 2016).
B. Level of Ordinary Skill in the Art
Relying on Dr. Pattison’s testimony, Petitioner provides the following
contention regarding a person of ordinary skill in the art (“POSITA”):
A POSITA in the field of the ’967 patent at the time of the
effective filing date would have would have [sic] been
knowledgeable regarding conventional LED designs, LED
fabrication techniques, LED package designs, including surface
mount LED designs, and LED packaging techniques. A POSITA
would have had at least a master’s degree in a relevant field (e.g.,
chemical engineering, materials engineering, or electrical
engineering), as well as at least 2 years of experience in LED
fabrication and packaging. Alternatively, a POSITA would have
an equivalent combination of education and experience, such as
a Ph.D. and some practical work involving LED fabrication and
packaging. A person with less education but more relevant

3 Neither party presents evidence of secondary considerations of
nonobviousness.
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practical experience, depending on the nature of that experience
and degree of exposure to LED package fabrication and design,
could also qualify as a POSITA in the field of the ’967 patent.
Pet. 16–17 (citing Ex. 1003 ¶¶ 20–25). Patent Owner does not contest
Petitioner’s contention regarding the level of ordinary skill in the art. All of
the parties’ declarants have applied the above definition of a POSITA, which
we applied in the Institution Decision. Inst. Dec. 8; Ex. 1003 ¶¶ 24, 25
(Dr. Pattison); Ex. 1025 ¶ 22 (Dr. Krames); Ex. 2001 ¶ 22 (Dr. Han);
Ex. 2009 ¶ 17 (Dr. Hansen).
In our analysis below, we apply Petitioner’s uncontested definition of
a POSITA, which is supported by Dr. Pattison’s testimony (Ex. 1003 ¶¶ 24,
25) and is consistent with the scope and content of the ’967 Patent and the
asserted prior art.
C. Claim Construction
In an inter partes review, we apply the same claim construction
standard as would be used by a district court to construe a claim in a civil
action involving the validity or infringement of a patent. 37 C.F.R.
§ 42.100(b) (2020). Under that standard, claim terms are given their
ordinary and customary meaning, as would have been understood by a
person of ordinary skill in the art at the time of the invention, in light of the
language of the claims, the specification, and the prosecution history of
record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir.
2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362,
1365–66 (Fed. Cir. 2012).
Below we discuss the meaning of two claim terms addressed by the
parties. We determine that no other claim term requires express construction
for purposes of resolving the parties’ disputes. Vivid Techs., Inc. v. Am. Sci.
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& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those
terms need be construed that are in controversy, and only to the extent
necessary to resolve the controversy”); see also Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
(applying Vivid Techs. in the context of inter partes review).
1. “lead frame”
In the Institution Decision, we applied Patent Owner’s construction
for “lead frame” as the “metal portion of a device package that makes
electrical connections between a die and other parts of the circuitry.” Inst.
Dec. 12 (hereinafter “our preliminary construction”).
Patent Owner agrees with our preliminary construction (PO
Resp. 75–76), and Petitioner does not oppose it. See Pet. Reply 1–7
(addressing claim construction, but not for “lead frame”); see also Pet. 17
(“Petitioner does not believe any specific constructions are required at this
time . . . .”). Because neither party challenges our preliminary construction,
we apply the same construction as set forth in the Institution Decision and
support that construction with essentially the same analysis, which follows.
Under applicable law, the ordinary meaning of a claim term “may be
determined by reviewing various sources, such as the claims themselves, the
specification, the prosecution history, dictionaries, and any other relevant
evidence.” Ruckus Wireless, Inc. v. Innovative Wireless Sols., LLC, 824
F.3d 999, 1002–03 (Fed. Cir. 2016). We determine that our construction is
the ordinary and accustomed meaning of “lead frame,” as evidenced by the
Specification of the ’967 Patent, two technical dictionary definitions, and
Petitioner’s extrinsic evidence.
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The ’967 Patent does not define a “lead frame,” but it discloses
embodiments that are consistent with Patent Owner’s construction. First, the
Specification describes a lead frame “formed of metal.” Ex. 1001, 3:18–20
(in Figure 1, “lead frame unit 10 [is] formed of metal”). There is no
suggestion in the ’967 Patent that a “lead frame” can be made of anything
other than metal. Second, the Specification suggests that a lead frame
provides an electrical connection to a light emitting diode chip. When
describing the Figure 1 embodiment, for example, the ’967 Patent states,
“[t]he light emitting diode chip 130 is mounted on the first lead frame 110
and electrically connected to the second lead frame 120 by a wire 150.” Id.
at 3:67–4:3. Similarly, when describing the Figure 8 embodiment, the ’967
Patent states, “the light emitting diode chip 130 is electrically connected to
the first and second lead frames 110 and 120 by respective wires 150a and
150b.” Id. at 5:39–42. These passages suggest that the lead frame provides
electrical connection between the light emitting diode chip and other device
circuitry, e.g., on a printed circuit board. See id. at 1:44–47 (“Recently, . . .
the LEDs have been made in a surface mount device type so that they can be
directly mounted on a printed circuit board.”).
Our construction is also directly supported by definitions from two
different technical dictionaries. Ex. 20034 (“lead frame . . . [t]he metal part
of a solid-state device package that achieves electrical connection between
the die and other parts of the system of which the IC is a component . . .”);
Ex. 20045 (“lead frame[:] the metallic portion of the device package that

4 Graf, Modern Dictionary of Electronics (7th ed. 1999), page 417.
5 LaPlante, Electrical Engineering Dictionary (E-Book), ISBN, 0-8493-
2170-0 (2000), page 408.
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makes electrical connections from the die to the other circuitry”); see PO
Resp. 76 (relying on technical dictionaries, Exs. 2003, 2004). We find that
these dictionary definitions are consistent with the descriptions of a “lead
frame” in the ’967 Patent. It is therefore proper to rely upon these
definitions as evidence of the meaning of “lead frame” to a person of
ordinary skill in the art. Phillips, 415 at 1322–23 (Judges may “rely on
dictionary definitions when construing claim terms, so long as the dictionary
definition does not contradict any definition found in or ascertained by a
reading of the patent documents.”).
Our construction is further supported by additional extrinsic evidence
submitted by Petitioner and relied upon by Dr. Pattison. Ex. 1008,6 1:16–17
(stating “[c]onventional lead frames are usually produced from a metal sheet
by die-punching”); Ex. 1009,7 1:18–20 (“A conventional lead frame is
formed on a metal strip such as plate, sheet, etc. by punching or etching tile
metal strip to have predetermined patterns.”); see Ex. 1003 ¶¶ 42, 43 (Dr.
Pattison quoting passages that include these excerpts from Exhibits 1008 and
1009). This evidence supports our determination that a “lead frame” is a
“metal portion.”
Accordingly, for these reasons and consistent with the definition
provided in the Institution Decision, we construe the term “lead frame” as
the “metal portion of a device package that makes electrical connections
between a die and other parts of the circuitry.”

6 US 5,221,428, issued June 22, 1993.
7 US 5,406,119, issued April 11, 1995.
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2. “undercut sidewalls”
In the Institution Decision, we construed “undercut sidewalls” as
“sidewalls having a structure consistent with material having been cut away
from the underside so as to leave an overhanging portion in relief.” Inst.
Dec. 16.
Patent Owner agrees with our construction. PO Resp. 76–80.
Petitioner does not expressly oppose our construction for “undercut
sidewalls,” but presents other arguments about the meaning of the term. Pet.
Reply 1–7. After considering both parties’ arguments and evidence, we
apply the same construction as set forth in the Institution Decision. Our
reasoning follows.
Petitioner contends that “undercut sidewalls” does not impose a
processing requirement and means that the sidewalls are “indented from an
upper portion of the lead frame to leave overhanging portions.” Pet. 14–15,
17, 58–61; Pet. Reply 4. Petitioner contends that this definition is consistent
with the ’967 Patent Specification, dictionary definitions cited by the
Examiner and Patent Owner during prosecution, common usage in industry,
and Patent Owner’s proposed district court construction. Pet. 15, 17; Pet.
Reply 1–2 (citing Ex. 1016, 29). Petitioner argues that the term “undercut
sidewalls” does not require a one-piece structure and that sidewalls can be
undercut, even if they are formed from multiple layers. Pet. Reply 2–7.
Patent Owner agrees that the term “undercut sidewalls” does not have
a processing requirement. PO Resp. 77. The parties’ agreement does not,
however, mean that the term “undercut” should not be given patentable
weight. It is well-established that patentability of a product claim must be
“determined based on the product itself,” not the process by which the
product is made. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). Even
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so, a process-type limitation is not always disregarded when determining
patentability of a product claim. “If the process limitation connotes specific
structure and may be considered a structural limitation, however, that
structure should be considered.” In re Nordt Dev. Co., LLC, 881 F.3d 1371,
1374–75 (Fed. Cir. 2018) (holding that claim term, “injection molded,” “is
structural and should have been afforded weight when assessing
patentability”). As our reviewing court has explained, “words of limitation
that can connote with equal force a structural characteristic of the product or
a process of manufacture are commonly and by default interpreted in their
structural sense, unless the patentee has demonstrated otherwise.” Nordt,
881 F.3d at 1375–76 (quoting 3M Innovative Props. Co. v. Avery Dennison
Corp., 350 F.3d 1365, 1371–72 (Fed. Cir. 2003)).
We find that, in the context of claim 1, the term “undercut” connotes a
structural characteristic in much the same way as the term “injection
molded” connoted a structure in Nordt. 881 F.3d at 1375. Petitioner does
not disagree that “undercut” has a structural meaning and attempts to capture
that meaning with the definition, “indented from an upper portion of the lead
frame to leave overhanging portions.” Pet. 15, 17; Pet. Reply 4. In our
view, however, Petitioner’s definition is inconsistent with the meaning of
“undercut” in the prosecution history.
The Examiner’s reasons for allowance rely on the requirement for
three “undercut” sidewalls to distinguish claim 1 from the prior art.
Ex. 1002, 25. When examining the claims, the Examiner assumed that
“‘undercut sidewalls’ are sidewalls that have ‘cut away material from so as
to leave a portion overhanging, as in carving or sculpture.’” Id. at 78
(April 30, 2018 Office Action, citing http://www.dictionary.com/browse/
undercut?s=t). Applicant provided a similar definition: “‘Undercut is
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defined to mean ‘to cut away material from the underside of (an object) so as
to leave an overhanging portion in relief.’” Id. at 60 (June 19, 2018
Response, citing https://www.merriam-webster.com/dictionary/undercut);
see also id. at 62 (quoting same definition).
Both parties rely on these definitions from the prosecution history.
Pet. 9, 11, 15, 17; PO Resp. 78; Pet. Reply 5–6. We find that Petitioner’s
proposed construction differs substantially from the definitions provided by
the applicant and the Examiner. Instead of specifying that material has been
cut away from an object, Petitioner characterizes the sidewalls as simply
“indented” from an upper portion of a lead frame. Pet. 15, 17; Pet. Reply 4.
For this reason, we do not apply Petitioner’s construction for “undercut
sidewalls.”
To define “undercut sidewalls” in its structural sense, we rely on the
definitions of “undercut” from the prosecution history. According to these
definitions, “undercut” means that material has been cut away from the
underside of an object. Ex. 1002, 60, 62, 78. We also rely on applicant’s
prosecution history remarks, which rely on Figures 1 and 2 of the
’967 Patent as support for the claim recitation of “undercut sidewalls.” Id.
at 60 (“Applicants submit that FIGS. 1 and 2 below show sidewalls that cut
away material from the underside of an object so as to leave an overhanging
portion in relief.”); id. at 136 (“FIGS. 1 and 2 clearly disclose 3 undercut
sidewalls where the face of each sidewall has a clear undercut/step/ledge.”);
see Pet. Reply 5–6 (relying on these prosecution history remarks).
We find that the prosecution history and the dictionary definitions
relied upon by the applicant and the Examiner are the most helpful intrinsic
evidence for construing “undercut sidewalls.” Nevertheless, we also
consider the surrounding claim language and the Specification, which shed
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light on the meaning of “undercut sidewalls” by describing and depicting a
“fixing space” that is defined by undercut sidewalls.
Claims 1 and 9 recite that three undercut sidewalls “at least partially
define a fixing space.” Ex. 1001, 6:38–39, 7:21–22. The Specification
describes “three inset sidewalls that at least partially define a fixing space,
the fixing space undercutting at least one of the first lead frame and second
lead frame.” Id. at 2:10–11. The “fixing space” is depicted in Figures 1, 2,
4, 5, and 7–9 of the ’967 Patent, which show fixing spaces 20 defined either
by stepped portions 113, 117, 123, and 127 on the sidewalls or by inclined
surfaces 118, 119, 128, and 129. Id. at 3:48–52, 4:58–63, 5:55–63. The
Specification includes following description of “fixing spaces”:
In the modified example of FIG. 9, a shape of the fixing
spaces is varied. That is, instead of forming the stepped portions
113, 117, 123, and 127 on the sidewalls of the outer and inner
fixing holes 111, 121, 115, and 125 so that the lower area can be
greater than the upper area, the inner sidewalls of the outer and
inner fixing holes 111, 121, 115, and 125 are provided with
inclined surfaces 118, 119, 128, and 129 such that the areas of
the outer and inner fixing holes 111, 121, 115, and 125 gradually
increase downward.
Id. at 5:55–63.
We find that the “fixing spaces” depicted in Figures 1, 2, 4, 5, and 7–9
and described in the foregoing passage have a shape that is consistent with
material having been cut away from the underside so as to leave an
overhanging portion in relief, as set forth in our claim construction for
“undercut sidewalls.” By providing examples of fixing spaces defined by
undercut sidewalls that fall within the scope of our claim construction, the
Specification provides support for that construction.
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Although agreeing with our construction, Patent Owner argues that
“the use of the term ‘undercut’ indicates an integral structure.” PO Resp. 79.
Petitioner argues the opposite—that “the term ‘undercut’ does not require a
one-piece lead frame.” Pet. Reply 7. Because this dispute is relevant only to
Petitioner’s anticipation ground, not the obviousness ground, it is not
necessary for us to resolve this dispute for purposes of determining whether
Petitioner has met its burden to show that the challenged claims are
unpatentable.
Accordingly, for these reasons and consistent with the definition
provided in the Institution Decision, we construe “undercut sidewalls” as
“sidewalls having a structure consistent with material having been cut away
from the underside so as to leave an overhanging portion in relief.”
D. Overview of Lee (Ex. 1004)
Lee discloses a high power light emitting diode (“LED”) package,
including first and second sheet metal members that are each electrically
connected to an LED chip and a package body formed with resin that
partially surrounds the sheet metal members and has a recess that receives
the LED chip and is filled with a transparent sealant. Ex. 1004, codes (54),
(57), ¶ 15; see also id. at Figs. 3–6, ¶¶ 64–71 (showing and describing a first
embodiment). Lee discloses that the first sheet metal member has a bent
shape that “is formed by etching or press working of a source sheet metal.”
Id. ¶¶ 28, 29; see also id. ¶ 70 (sheet metal members may be formed by
cutting and punching a source sheet metal plate and selectively reducing
thickness through etching).
Petitioner relies on Lee’s seventh embodiment shown in
Figures 24–26, which are reproduced below.
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Lee Figures 24–26 show an LED package, with a plan view in Figure 24, a
sectional view in Figure 25, and a bottom view in Figure 26. Ex. 1004
¶ 110. As shown in these figures, high power LED package 700 includes
package body 702, recess 708, sealant 710, LED chip 712, and first and
second sheet metal members 714 and 716. Id. ¶ 112. Package body 702 is
integrally formed with injection molded resin to have recess 708 for
receiving LED 712 and is filled with sealant 710. Id. ¶¶ 112, 113. First and
second sheet metal members 714 and 716 are positioned in package
body 702 and function as a terminal and radiating means while supporting
the LED chip 712. Id. ¶ 112. Package body 702 includes upper and lower
portions 702A and 702B that are connected with each other at both
longitudinal edges to stably fix the first and second sheet metal members
714 and 716 therebetween. Id. ¶ 113. Lee discloses that LED package 700
can be mounted on a board having a metal plate, an insulating layer, and a
conductive pattern printed on the insulating layer. Id. ¶ 111.
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Lee provides the following description of first sheet metal
member 714:
The first sheet metal member 714 consists of first and
second sections 714A and 714B overlapped vertically and
combined in a half T shape, the first and second sections 714A
and 714B having a width smaller than the package body 702.
The first and second sections 714A and 714B are attached to each
other with conductive epoxy and the like having high thermal
and electric conductivity, rendering the current and heat transfer
therebetween conducted smoothly. The first section 714A
supports at one end the LED chip 712 in the recess 708 while
being electrically connected thereto, and extends at the other end
over the sidewall of the package body 702. The second section
714B is exposed at its bottom surface from the bottom face of the
lower portion 702B of the package body, and extends at one end
(positioned at right side in the drawing) over the sidewall of the
package body thus to form a protrusion together with the other
end of the first section 714A. Meanwhile, the second section
714B is formed shorter than the first section 714A such that
generally half portion thereof adjacent to the LED chip 712 on
the first section 714A is completely surrounded and fixed by the
package body 702.
Ex. 1004 ¶ 114. Lee provides a similar description of second sheet metal
member 716. Id. ¶ 115.
Lee discloses that, as result of the above-described structure, “heat
generated at LED chip 712 can be transferred smoothly through first and
second sections 714A and 714B of the first sheet metal member 714 to the
metal plate of the board.” Ex. 1004 ¶ 116. In addition, Lee discloses that
“metal member 714 has the half T shape, so that a path of foreign
substances, moisture and the like intruded from the lower portion 702B of
the package body into the package body becomes longer to improve
reliability of the LED package 700.” Id. ¶ 117.
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E. Petitioner’s Obviousness Ground
Petitioner contends that claims 1–16 are unpatentable as obvious over
Lee. Pet. 58–72. Patent Owner opposes. PO Resp. 6–60. For the reasons
discussed below, we determine that Petitioner has established by a
preponderance of the evidence that claims 1–16 are unpatentable as obvious
over Lee.
1. Independent Claims 1 and 9
a) Undisputed Elements
The parties’ post-institution dispute centers on the “undercut
sidewalls” limitation of independent claims 1 and 9. There is no dispute that
Lee discloses the remaining limitations (hereinafter “the undisputed
elements”) of claims 1 and 9. We find that Petitioner has shown that Lee
discloses the undisputed elements of claims 1 and 9 for the reasons as set
forth in the Petition and the Pattison Declaration. Pet. 22–27, 33–38, 52–54;
Ex. 1003 ¶¶ 62, 64 (claim charts for claims 1 and 9); Ex. 1004 ¶¶ 56–58,
110–118, Figs. 24–26.
Our findings are illustrated by the following annotations of Lee
Figures 25 and 26 reproduced from the Petition and the Pattison Declaration:

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Pet. 24–25, 27; Ex. 1003 ¶ 62. Lee Figures 25 and 26 depict a high power
LED package. As illustrated by Petitioner’s annotations of Lee Figures 25
and 26, we find that Lee discloses first lead frame 714 and second lead
frame 716 spaced apart from each other, the first and second lead frames
each comprising a top surface, an opposing bottom surface and sidewalls
arranged between the top surface and the bottom surface; and light-emitting
diode chip 712 disposed on the top surface of first lead frame 714.
Our findings for the undisputed claim elements are illustrated by the
following additional annotations of Lee Figures 25 and 26 reproduced from
the Petition and the Pattison Declaration:
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Pet. 28–29; Ex. 1003 ¶ 62. Lee Figures 25 and 26 depict a high power LED
package. Petitioner’s annotations identify a first, second and third “undercut
sidewall.” Our reproduction of Petitioner’s annotations should not be
construed as a finding that the unmodified structures Petitioner identifies are
“undercut sidewalls.” Instead, we use Petitioner’s annotations to illustrate
our findings for the undisputed claim elements, including that each of first
lead frame 714 and second lead frame 716 comprises a first sidewall, a
second sidewall, and a third sidewall that at least partially define a fixing
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space, the fixing space being formed by the sidewalls of first lead frame 714
and second lead frame 716. In addition, as illustrated by Petitioner’s
annotations, we find that first lead frame 714 and second lead frame 716
face each other in a horizontal direction such that the first sidewall of first
lead frame 714 faces the first sidewall of second lead frame 716. The
second sidewall and the third sidewall of first lead frame 714 are parallel to
each other and perpendicular to the first sidewall of first lead frame 714, and
the second sidewall and the third sidewall of second lead frame 716 are
parallel to each other and perpendicular to the first sidewall of second lead
frame 716.8
Our findings for the undisputed claim elements are illustrated by the
following additional annotations of Lee Figure 25 reproduced from the
Petition and the Pattison Declaration:

8 We intentionally omit the word “undercut” from our findings for the
undisputed elements of claims 1 and 9, and we do not find that the
unmodified structures Petitioner identifies are in fact “undercut sidewalls.”
As discussed below, we find that Petitioner has shown that its proposed
modification of Lee’s Figures 24–26 embodiment has undercut sidewalls.
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Pet. 34, 54; Ex. 1003 ¶¶ 62, 64. Lee Figures 25 and 26 depict a high power
LED package. As illustrated by Petitioner’s annotations of Lee Figure 25,
we find that Lee discloses that the top surfaces of first and second lead
frames 714, 716 are substantially flat and are on substantially the same
plane.
For the undisputed claim elements, Petitioner’s obviousness ground is
based on the same arguments and evidence as it presents for its anticipation
ground. Pet. 65–66, 68, 70–71. It is undisputed, and we find, that
Petitioner’s showing for the undisputed elements is equally applicable to
Petitioner’s obviousness grounds, which, as discussed below involves a
modification of the embodiment shown in Lee Figures 24–26 wherein the
lead frames are each made from a single metal sheet instead of two metal
sheets attached to each other with epoxy (as Lee expressly discloses). See
Pet. 63–65 (discussing motivation to modify the embodiment shown in Lee
Figures 24–26).
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b) Undercut Sidewalls
Petitioner contends that “even if the challenged claims require a metal
processing step, such as etching, physical cutting, punching or the like,” the
challenged claims are still unpatentable over Lee. Pet. 61–62. Petitioner
contends that “a POSITA would have found it obvious to use single pieces
of metal having ‘undercuts’ to create Lee[]’s first and second lead frames,”
instead of “two pieces of metal adhered to one another,” as Lee discloses for
the embodiment of Figures 24–26. Pet. 63–64. According to Petitioner, “[a]
POSITA would have found it obvious to create these single metal pieces by
physically cutting, punching, or etching them into the desired shape.”
Pet. 64.
Patent Owner argues that Petitioner has not shown that its proposed
modification of the embodiment shown in Lee Figures 24–26 has “undercut
sidewalls,” as we have construed that term. PO Resp. 6–7, 27–33.
As discussed above, we construe “undercut sidewalls” as “sidewalls
having a structure consistent with material having been cut away from the
underside so as to leave an overhanging portion in relief.” After considering
the parties’ arguments and evidence, we are persuaded that Petitioner has
met its burden to show that its proposed modification of the embodiment
shown in Lee Figures 24–26 would result in “undercut sidewalls” within the
scope of our construction. Petitioner shows persuasively that Lee “discloses
other embodiments where the first and second lead frames consist of a single
component from which material is removed to form undercut sidewalls,” by
cutting, punching, or etching a source sheet metal plate. Pet. 62–63 (citing
Ex. 1004 ¶¶ 21, 29, 67–70, 97, 108, 109, 122, 127, 131, Fig. 4).
Our finding is supported by Lee’s teachings that lead frames can be
made by selective etching to reduce the thickness of a source metal sheet.
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Ex. 1004 ¶¶ 29, 70, 97, 122, 127, Figs. 4, 28, 29. For example, Petitioner
relies on the following colored version of Lee Figure 4:

Pet. 62. Lee Figure 4 shows an LED package having first and second sheet
metal members 114 and 116, which function as lead frames. Ex. 1004 ¶¶ 67,
74; see also Ex. 1003 ¶¶ 52, 67 (discussing Lee Figure 4). Lee discloses that
“[a] cross-sectional shape of these sheet metal members 114 and 116 may be
formed by . . . cutting and punching a source sheet metal plate, and
selectively reducing thickness through etching.” Ex. 1004 ¶ 70. According
to Lee, second and third sections 114b and 114c extend integrally from first
section 114a and have a reduced thickness relative to first section 114a. Id.
¶ 69. Patent Owner’s expert, Dr. Han, agreed that, when portion 114b is
formed by etching, an undercut sidewall is formed in portion 114a in Lee
Figure 4. Ex. 1022, 127:12–128:6. We find that Lee Figure 4, the
description of that figure, and Dr. Han’s testimony provide persuasive
support for Petitioner’s argument that Lee teaches selective etching as a way
to reduce the thickness of a single piece of metal so as to remove material
from the underside and form an undercut sidewall. Pet. 62–63; Ex. 1003
¶¶ 55, 67.
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As further support for its argument, Petitioner presents the following
annotations of Lee Figures 28 and 29 and the corresponding paragraphs 122
and 127:

Pet. Reply 16; see also Pet. 63 (quoting Lee’s descriptions of Figures 28
and 29 in paragraphs 122 and 127). Lee Figure 28 shows an LED package
having first and second sheet metal members 814 and 816, and Lee
Figure 29 shows an LED package having first and second sheet metal
members 914 and 916. Ex. 1004 ¶¶ 120, 125. Lee discloses that the shape
of the sheet metal members can be obtained either by bending a source sheet
metal plate or by selective etching of the source sheet metal plate. Id.
¶¶ 122, 127. We find that Lee’s Figures 28 and 29 and the description of
those figures provide additional persuasive support for Petitioner’s argument
that Lee teaches forming a lead frame from a single piece of metal by
selectively etching the underside to remove material and form an undercut
sidewall. Pet. 63; Pet. Reply 15–16; Ex. 1003 ¶¶ 55, 67.
Lee’s teachings about Figures 4, 28, and 29, as discussed above,
provide persuasive evidence that, if the lead frames in Lee Figures 24–26
were made by selective etching, then their sidewalls would have a structure
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consistent with material having been cut away from the underside so as to
leave an overhanging portion in relief, as provided in our claim construction.
Patent Owner argues that “Petitioner and its expert provided no
analysis or evidence regarding whether its purported modifications to
FIGS. 24–26 are consistent with one that had material that had been cut
away.” PO Resp. 29. We disagree. Petitioner and Dr. Pattison show that
cutting material away by selective etching would have been one way to form
the lead frames shown in Lee Figures 24–26 with undercut sidewalls.
Pet. 62–65; Pet. Reply 15–16; Ex. 1003 ¶¶ 55, 67; Ex. 1024 ¶¶ 21–23.
Patent Owner’s declarant, Dr. Han, agreed that if sheet metal member 714 in
Lee Figures 24–26 were made by etching, then “it has a side wall, undercut
side wall.” Ex. 1022, 110:18–111:5.
Patent Owner argues that Lee Figures 24–26 provide “a thin lead
frame” having “large overhangs” and that cutting metal to make these lead
frames would be “impractical” because “cutting is practical only for smaller
features and at certain cutting angles.” PO Resp. 30 (citing Ex. 2023,
143:10–22, 172:8–14). From this, Patent Owner concludes that “a POSITA
would not have viewed Petitioner’s modifications to Lee as ‘consistent’ with
a frame that practically had material cut away from it.” Id. In our view,
however, Patent Owner’s argument focuses on cutting and disregards
Petitioner’s evidence about etching. Patent Owner’s evidence does not rebut
Petitioner’s showing that sheet metal members 714 and 716 in Lee
Figures 24–26 could be made by selective etching to form an undercut
sidewall. As discussed above, Petitioner and Dr. Pattison show persuasively
that Lee teaches making similarly shaped lead frames by etching to reduce
the thickness of a source metal sheet so as to remove material from the
underside and form an undercut sidewall. Pet. 62–65; Pet. Reply 15–16;
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Ex. 1003 ¶¶ 55, 67; Ex. 1004 ¶¶ 29, 67–70, 122, 127, Figs. 4, 28, 29;
Ex. 1024 ¶¶ 22, 23. Regarding Patent Owner’s impracticality argument, we
credit Dr. Pattison’s deposition testimony concerning a “selective step etch”
or “mesa etch.” Ex. 2024, 122:20–124:14, 125:12–127:19. In response to
questions from Patent Owner’s counsel, Dr. Pattison persuasively testified
that the frames 714 and 716 in Lee Figure 25 could be created by wet
chemical etching or reactive ion etching using a photoresist to mask the area
denoted by 714B that should not be etched. Id.
To the extent Patent Owner argues that “undercut sidewalls” have a
size limitation that excludes large, thin overhangs (see PO Sur-reply 11–13),
we disagree. We discern no such size limitation in the claims themselves.
Nor does our claim construction include a size limitation. Rather, our claim
construction may be viewed as recognizing a shape limitation, insofar as the
structure must be consistent with material having been cut away from the
underside so as to leave an overhanging portion in relief. We are persuaded
that Petitioner has shown that if sheet metal members 714 and 716 were
made from a single piece of metal by etching to reduce the thickness of the
metal and form overhanging portions 714A and 716A, then they would have
“undercut sidewalls” within the scope of our claim construction.
c) Motivation
As a motivation for modifying the embodiment shown in Lee Figures
24–26 by making the lead frames from single pieces of metal having
“undercuts,” Petitioner contends that a “POSITA would have known that
both electrical and thermal conductivity are likely improved when using a
single, monolithic piece of metal because metal is generally more conductive
(both thermally and electrically) than adhesives.” Pet. 64. In addition,
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Petitioner contends that “[a] POSITA would have found it obvious to create
these single metal pieces by physically cutting, punching, or etching them
into the desired shape as Lee[] already discloses that its lead frames can be
created in this manner.” Id. (citing Ex. 1004 ¶¶ 21, 32, 70, 108, 109, 131).
Petitioner relies on Dr. Pattison’s testimony as support for its contentions.
Ex. 1003 ¶¶ 67, 68.
Patent Owner argues that Petitioner’s proposed modification deviates
from Lee’s teachings, that a POSITA would not have been motivated to
modify the embodiment shown in Lee Figures 24–26, and that Petitioner’s
arguments rely on impermissible hindsight bias. PO Resp. 7–27, 33–60.
After considering the parties’ arguments and evidence, we are
persuaded that Petitioner has met its burden to show a motivation for its
proposed modification of Lee Figures 24–26. We find that a POSITA would
have been motivated to modify the embodiment shown in Lee Figures 24–26
by making the lead frames from a single metal sheet, rather than by
attaching two metal sheets to each other with epoxy. Pet. 62–65; Pet.
Reply 10–13; Ex. 1003 ¶¶ 66–68. We credit Dr. Pattison’s testimony that
“[a] POSITA would have known that both electrical and thermal
conductivity are likely improved when using a single, monolithic piece of
metal because metal is generally more conductive (both thermally and
electrically) than adhesives.” Ex. 1003 ¶ 68. We also credit Dr. Pattison’s
testimony that a POSITA would have found it obvious to create lead frames
from single metal pieces by selectively etching to reduce the thickness of a
source metal sheet because Lee discloses that lead frames can be created in
this manner. Id. Dr. Pattison’s testimony is supported by Lee’s teachings
about the importance of electrical and thermal conductivity (Ex. 1004 ¶¶ 3,
13, 23, 114, 115), as well as Lee’s teachings about forming sheet metal
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members from a source sheet metal plate by selective etching (id. ¶¶ 29, 70,
97, 122, 127).
As discussed above, Petitioner and Dr. Pattison show persuasively
that Lee teaches selective etching to reduce the thickness of a source metal
sheet as one way to make lead frames having a shape similar to the shape of
the lead frames of Figures 24–26. Pet. 62–65; Pet. Reply 15–16; Ex. 1003
¶¶ 55, 67; Ex. 1004 ¶¶ 29, 67–70, 122, 127, Figs. 4, 28, 29; Ex. 1024 ¶¶ 22,
23. Petitioner illustrates this concept with the following comparison of
annotated versions of Lee Figures 28 and 29 with an annotation of Lee
Figure 25 and a perspective view of the lead frame of the embodiment
shown in Lee Figures 24–26:

Pet. Reply 16; Ex. 1024 ¶ 22. The above figures show LED packages and a
perspective view of a lead frame. Petitioner’s annotations of Lee Figures 28
and 29 identify where material has been removed from a metal sheet by
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selective etching to reduce the thickness of part of the metal sheet.
Petitioner’s annotations of Figures 28 and 29 are supported by Lee’s
disclosure that the lead frames in these embodiments can be formed by
selectively etching a source sheet metal plate. Ex. 1004 ¶¶ 122, 127.
Petitioner’s comparison shows persuasively that selectively etching a single
metal sheet would have been an obvious alternative to attaching two metal
sheets to each other with epoxy as a way of forming the lead frames of the
embodiment shown in Lee Figures 24–26. Pet. 62–65; Pet. Reply 15–16.
As demonstrated by Petitioner’s comparison, the lead frames of
Figures 24–26 are sufficiently similar in shape to the lead frames of Figures
28 and 29, such that the size of the area that would need to be etched and the
thickness of both the source metal sheet and the resulting product would not
be significantly different for the lead frames of Figures 24–26, as compared
with the lead frames of Figures 28 and 29, which Lee expressly teaches can
be made by selective etching to reduce the thickness of a source metal sheet.
Ex. 1004 ¶¶ 122, 127.
We have considered Patent Owner’s argument that Petitioner’s
proposed modification deviates from Lee’s teachings. PO Resp. 7–27. In
our view, however, the lead frames shown in Figures 24–26 are sufficiently
similar in shape to the lead frames shown in Figures 4, 28, and 29 that a
POSITA would have appreciated that Lee’s teaching about using selective
etching to reduce the thickness of a source metal sheet to form the lead
frames in Figures 4, 28, and 29 would be applicable as an alternative way of
making the lead frames in Figures 24–26. Ex. 1004 ¶¶ 70, 122, 127; see
also Ex. 1003 ¶ 67 (Dr. Pattison’s testimony summarizing Lee’s teachings of
various ways to make lead frames); Ex. 1024 ¶ 22 (Dr. Pattison: “Lee[]
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expressly discloses using selective etching to form large features in various,
relatively thin lead frames, as shown in at least FIGS. 4, 28, and 29.”).
Patent Owner argues that lead frames for LEDs are made in batches
from large metal sheets containing an array of lead frames (PO
Resp. 13–24), but does not argue that selective etching, as taught by Lee, is
inapplicable to such batch manufacturing. In fact, Patent Owner’s declarant,
Dr. Hansen, illustrates an exemplary array of lead frames she says could be
made by “[p]erforming cutting, punching, and/or etching on a metal sheet to
create Lee’s FIGS. 24–26.” Ex. 2009 ¶¶ 67–70. Furthermore, Patent Owner
directs us to Dr. Pattison’s deposition testimony that etching “is a production
practical way” of making the step structure in Lee’s Figures 24–26.
Ex. 2023, 171:20–172:7; see PO Resp. 36 (relying on Dr. Pattison’s
testimony to argue that other methods—cutting and punching—would not be
practical). Still further, although Dr. Hansen’s declaration states that “when
Lee does use etching to reduce thickness it does so only in instances where
smaller features are etched” (Ex. 2009 ¶ 84), Dr. Hansen conceded at her
deposition that she “was not really referring to figure 28” of Lee. Ex. 1023,
141:4–17.
Patent Owner argues that Petitioner’s proposed modifications “would
require additional processing, and more metal” as compared with attaching
two metal sheets to each other with epoxy. PO Resp. 25–26; Ex. 2009
¶¶ 59–70. We find that Patent Owner’s argument is not persuasively
supported by the cited testimony because Dr. Hansen does not directly
compare the number of processing steps or the amount of metal required for
the two methods. The examples provided in Dr. Hansen’s testimony appear
to show that the epoxy method would require removing more metal from the
bottom sheet than would need to be removed from a single metal sheet by an
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etching method. Compare Ex. 2009 ¶ 62 (illustrating bottom sheet made by
cutting or punching), with id. ¶ 70 (illustrating metal sheet from which metal
is removed by etching).
We have considered Patent Owner’s argument that it would have been
neither possible nor practical to create the lead frames in Lee Figures 24–26
by etching single metal sheets. PO Resp. 36–41 (citing Ex. 2009 ¶¶ 74–85;
Exs. 2011–2015). Patent Owner’s evidence does not outweigh Petitioner’s
evidence that it would have been obvious to form the lead frames in Lee
Figures 24–26 by etching. See, e.g., Ex. 1003 ¶¶ 67, 68; Ex. 1004 ¶¶ 29, 70,
97, 122, 127; Ex. 1024 ¶¶ 21–23. Although Dr. Hansen testifies that the
lead frames in Lee Figures 24–26 could not be made by etching (Ex. 2009
¶¶ 74–85), it appears that Dr. Hansen does not consider whether such lead
frames could be made by anisotropic etching. Ex. 1023, 106:21–107:22
(explaining isotropic and anisotropic etching techniques); id. at 108:3–15,
116:2–11 (Dr. Hansen’s annotation of Lee Figure 25 shows “[t]he impact of
an isotropic etch” and “an inability to etch the shape of the lead frames in
[F]igure 25 using isotropic etching”); id. at 108:19–109:4, 117:8–17
(Dr. Hansen does not have experience with anisotropic etching of metals,
such as copper, the most common metal used for lead frames). Dr. Hansen’s
testimony is persuasively rebutted by Dr. Pattison, who relies on some of the
same evidence as Dr. Hansen and testifies that “a POSITA would have no
difficulty etching complex lead frame shapes, including lead frames having
undercut/overhanging portions and holes having a variety of sizes and
shapes based on what is appropriate for a given design/application.”
Ex. 1024 ¶ 28 (citing Exs. 1020, 1021, 1028, 2014); see also id. ¶¶ 24–27
(quoting from these exhibits).
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We have also considered Patent Owner’s argument that Lee
Figures 24–26 are “meaningfully different” from Lee’s other embodiments.
PO Resp. 54–55. We are persuaded that the differences Patent Owner
identifies, including the size of the overhang and the location of the LED
relative to the overhang, would not dissuade a POSITA from making the
lead frame from a single metal sheet by selective etching rather than by
attaching two metal sheets to each other with epoxy. We credit
Dr. Pattison’s testimony that a POSITA would have found it obvious to
make the lead frames of Figures 24–26 by etching to selectively reduce the
thickness of a metal sheet. Ex. 1003 ¶ 68; Ex. 1024 ¶¶ 21–23. We find that
Dr. Pattison’s testimony is consistent with Lee’s teachings to use selective
etching to make similarly shaped lead frames. Ex. 1004 ¶¶ 29, 70, 122, 127.
Patent Owner argues that increased conductivity is not a sufficient
rationale for modifying the embodiment shown in Lee Figures 24–26
because “using epoxy (or metal) makes little material difference in device
operation.” PO Resp. 56 (citing Ex. 2009 ¶¶ 100–103). Patent Owner
argues that there would have been “no real reason” to make Petitioner’s
modification because “Lee’s epoxy already addresses Petitioner’s stated
problem—the epoxy in Lee provides high thermal and electric
conductivity.” Id. at 56–57. We agree that Patent Owner’s argument has
some merit, but it is not sufficient to tip the scales in Patent Owner’s favor.
In our view, Petitioner’s proposed modification is relatively minor.
Essentially, Petitioner contends that a POSITA would have changed the way
the lead frames are made, without changing their shape or the design or
method of manufacture of the rest of the LED package. Even a small
improvement in thermal or electrical conductivity provides a sufficient
reason for a POSITA to consider changing the way the lead frames are
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made, particularly for high power applications. Pet. Reply 13; Ex. 1023,
147:15–151:13; Ex. 1024 ¶ 18.
Furthermore, the record shows an additional reason why a POSITA
would have considered making Petitioner’s proposed modification.
Drs. Han and Pattison agree that a two-piece lead frame joined by epoxy
would have been more likely to break than a single-piece metal lead frame
when subjected to high-power operation and high-heat environments.
Ex. 1024 ¶ 19; Ex. 2001 ¶¶ 64–68; see Pet. Reply 14 (“Patentee’s own
expert provides a rationale for using a one-piece lead frame, in addition to
those originally offered by Petitioner.”). Thus, a POSITA concerned about
mechanical device failure would have had a reason to make the lead frames
for the embodiment shown in Lee Figures 24–26 from a single piece of
metal.
Accordingly, we are persuaded that Petitioner has shown that a
POSITA would have been motivated to modify the embodiment shown in
Lee Figures 24–26 by making the lead frames by selectively etching a single
metal sheet instead of by attaching two metal sheets to each other with
epoxy.
d) Reasonable Expectation of Success
Petitioner contends that “‘undercutting’ metal into desired shapes by
any of etching, physical cutting, or punching and the like was conventional,
required no more than ordinary skill, and a POSITA would have had a
reasonable expectation of success in making the lead frames of FIGS. 24–26
as single metal pieces.” Pet. 64 (citing Ex. 1004 ¶¶ 40–46, 68); see also
Pet. 67 (citing Ex. 1003 ¶¶ 40–49, 55, 61, 68, 69).
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Patent Owner contends that “[t]he Petition does not demonstrate that a
POSITA would have achieved the desired result, or have had a reasonable
expectation of success, if they attempted to recreate the metal sheets of
FIGS. 24–26 as a single metal piece.” PO Resp. 2; see also id. at 35, 42, 48,
49 (same).
After considering the parties’ arguments and evidence, we determine
that Petitioner has met its burden to show a reasonable expectation of
success for its proposed modification of the lead frames in Lee
Figures 24–26. Our finding is supported by Lee, which teaches that
similarly shaped lead frames can be made as single pieces of metal by
etching to selectively reduce the thickness of a source metal sheet. Ex. 1004
¶¶ 29, 70, 122, 127, Figs. 4, 28, 29.
Our finding is also supported by the undisputed fact that the
’967 Patent does not disclose how to make a lead frame with undercut
sidewalls. Ex. 1001, 3:48–52, 4:58–63, 5:55–63 (describing exemplary
embodiments of fixing space defined by undercut sidewalls); Ex. 1003 ¶ 46
(Dr. Pattison: “the ’967 patent fails to explain how to create undercut
sidewalls”); Ex. 1022, 39:20–40:3 (Dr. Han: the ’967 Patent does not
describe how to form undercut sidewalls); id. at 50:12–51:5 (cutting,
etching, and punching techniques for material removal of lead frames are not
disclosed in the ’967 Patent, but were known to a POSITA before 2008).
We agree with Petitioner that the lack of disclosure in the ’967 Patent of
how to make a lead frame with undercut sidewalls supports a conclusion that
a POSITA would have been aware of conventional techniques for doing so
and would have had a reasonable expectation of success in modifying the
embodiment shown in Lee Figures 24–25 to include undercut sidewalls. Pet.
Reply 17–19.
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e) Conclusion for claims 1 and 9
For all of the foregoing reasons, we determine that Petitioner has
shown by a preponderance of the evidence that claims 1 and 9 are
unpatentable as obvious in view of Lee.
2. Dependent Claims 2–8 and 10–16
There is no dispute that Lee discloses the additional limitations of
dependent claims 2–8 and 10–16.9 We find that Petitioner has shown that
Lee discloses the additional limitations of dependent claims 2–8 and 10–16
for the reasons as set forth in the Petition and the Pattison Declaration.
Pet. 38–50, 54–58, 69–72; Ex. 1003 ¶¶ 62, 64 (claim charts for dependent
claims 2–8 and 10–16); Ex. 1004 ¶¶ 56–58, 110–118, Figs. 24–26.
F. Petitioner’s Anticipation Ground
In view of our determination that Petitioner has established
unpatentability of claims 1–16 based on obviousness, we do not reach
Petitioner’s anticipation ground.
G. Patent Owner’s Contingent Motion to Amend
Pursuant to 35 U.S.C. § 316(d)(1) and 37 C.F.R. § 42.121(a), Patent
Owner filed a contingent Motion to Amend the ’967 Patent and proposed
substitute claims 17–22, which should replace claims 1, 2, 6, 9, 10, and 14, if
the Board determines that any of those claims is unpatentable. PO
MTA 1–2. Patent Owner also requested preliminary guidance in accordance
with the Pilot Program. Id. at 2.

9 Dependent claims 10–16 introduce the same limitations as those introduced
in dependent claims 2–8 respectively. See Pet. 54–58 (claim charts); Ex.
1003 ¶ 63 (claim chart).
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We issued our non-binding Preliminary Guidance, advising the parties
that, on the contingent motion to amend record, Patent Owner demonstrated
a reasonable likelihood that it had satisfied the procedural requirements
imposed by 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121(a) for its Motion to
Amend. Prelim. Guidance 3–4. We further advised the parties that, on the
contingent motion to amend record, Petitioner did not demonstrate a
reasonable likelihood that proposed substitute claims 17–22 were
unpatentable for lack of enablement or obviousness. Id. at 5–11.
As discussed above, we determine that Petitioner has established by a
preponderance of the evidence that claims 1–16 are unpatentable as obvious
over Lee. Therefore, we proceed to address Patent Owner’s contingent
motion to amend and proposed substitute claims 17–22, which correspond to
original claims 1, 2, 6, 9, 10, and 14, respectively. For the reasons discussed
below, we determine that Petitioner has not proven that the proposed
substitute claims are unpatentable, and for that reason, we grant Patent
Owner’s contingent Motion to Amend.
1. Applicable Law
In an inter partes review, amended claims are not added to a patent as
of right, but rather must be proposed as a part of a motion to amend.
35 U.S.C. § 316(d) (2018). The Board must assess the patentability of
proposed substitute claims “without placing the burden of persuasion on the
patent owner.” Aqua Prods., Inc. v. Matal, 872 F.3d 1290, 1328 (Fed. Cir.
2017) (en banc); see Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129,
Paper 15 at 3–4 (PTAB Feb. 25, 2019) (precedential) (“Lectrosonics”).
Subsequent to the issuance of Aqua Products, the Federal Circuit issued a
decision in Bosch Automotive Service Solutions, LLC v. Matal, 878 F.3d
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1027 (Fed. Cir. 2017) (“Bosch”), as well as a follow-up Order amending that
decision on rehearing. See Bosch Auto. Serv. Sols., LLC v. Iancu, No. 2015-
1928 (Fed. Cir. Mar. 15, 2018) (Order on Petition for Panel Rehearing).
In accordance with Aqua Products, Bosch, and Lectrosonics, a patent
owner does not bear the burden of persuasion to demonstrate the
patentability of the substitute claims presented in the motion to amend.
Rather, ordinarily, “the petitioner bears the burden of proving that the
proposed amended claims are unpatentable by a preponderance of the
evidence.” Bosch, 878 F.3d at 1040 (as amended on rehearing); see
Lectrosonics, Paper 15 at 3–4; 37 C.F.R. § 42.121(d)(2). In determining
whether a petitioner has proven unpatentability of the substitute claims, the
Board focuses on “arguments and theories raised by the petitioner in its
petition or opposition to the motion to amend.” Nike, Inc. v. Adidas AG, 955
F.3d 45, 51 (Fed. Cir. 2020).
2. Proposed Substitute Claims
The Motion to Amend includes proposed substitute claims 17–22.
Proposed substitute claim 17 is reproduced below with the added limitations
underlined (as compared to claim 1):
17. A light-emitting device, comprising:
a first lead frame and a second lead frame spaced apart
from each other, the first and second lead frames each
comprising a top surface, an opposing bottom surface, a fixing
hole, and sidewalls arranged between the top surface and the
bottom surface; and
a light-emitting diode chip disposed on the top surface of
the first or second lead frame, wherein:
each of the first lead frame and the second lead
frame comprises a first undercut sidewall, a second
undercut sidewall, and a third undercut sidewall that at
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least partially define a fixing space and interior portions of
the first and second lead frames, the fixing space being
formed by the undercut sidewalls of the first lead frame
and the second lead frame,
each fixing hole is located in the interior portions of
each of the first and second lead frames and includes an
undercut sidewall that envelopes inner bounds of the
fixing hole,
the top surfaces of the first and second lead frames
are substantially flat, and
the first lead frame and the second lead frame face
each other in a horizontal direction such that the first
undercut sidewall of the first lead frame faces the first
undercut sidewall of the second lead frame,
the second undercut sidewall and the third undercut
sidewall of the first lead frame are parallel to each other
and perpendicular to the first undercut sidewall of the first
lead frame, and
the second undercut sidewall and the third undercut
sidewall of the second lead frame are parallel to each other
and perpendicular to the first undercut sidewall of the
second lead frame.
PO MTA, App. A, 3–4.10 Proposed substitute claim 20 includes the same
underlined limitations as proposed substitute claim 17. Id. at 5–6. Proposed
substitute claims 18 and 21 include a substantive amendment reciting that “a
resin part comprising a phosphor [is] disposed in the fixing space to support
the first and second lead frames.” Id. at 4–7. Proposed substitute claims 19
and 22 include a substantive amendment reciting that “a second fixing hole
[is] formed in at least one of the interior portions of the first and second lead
frames. Id.

10 Appendix A to Patent Owner’s Motion to Amend begins at page 3.
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Patent Owner’s Motion to Amend states: “All dependent claims in
the ’967 Patent (and dependent substitute Claims 18–19 and 21–22) all
depend on substitute Claims 17 and 20, and are patentable for the same
reasons.” PO MTA 19 (emphasis added). As presented in Appendix A,
however, proposed substitute claims 18 and 19 depend from original claim 1
(instead of proposed substitute claim 17), and proposed substitute claims 21
and 22 depend from original claim 9 (instead of proposed substitute
claim 20). Id. App. A. Despite this apparent drafting error in Patent
Owner’s claim listing in Appendix A, we determine patentability of
proposed substitute claims 18, 19, 21, and 22 consistent with Patent Owner’s
statement that they “all depend on substitute claims 17 and 20.” Id. at 19.
Furthermore, Patent Owner’s claim listing in Appendix A does not include
substitutes for dependent claims 3–5, 7, 8, 11–13, 15, and 16 to change their
dependency. This omission appears to be unintentional in view of Patent
Owner’s statement that “[a]ll dependent claims in the ’967 Patent . . . depend
on substitute Claims 17 and 20.” Id.
3. Procedural Requirements
“Before considering the patentability of any substitute claims, . . . the
Board first must determine whether the motion to amend meets the statutory
and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R.
§ 42.121.” See Lectrosonics, Paper 15 at 4.
First, we consider whether the motion to amend proposes a reasonable
number of substitute claims. 35 U.S.C. § 316(d)(1)(B). “There is a
rebuttable presumption that a reasonable number of substitute claims per
challenged claim is one (1) substitute claim.” Lectrosonics, Paper 15 at 4–5
(citing 37 C.F.R. § 42.121(a)(3)).
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Patent Owner proposes substitute claims 17–22 as replacements for
original claims 1, 2, 6, 9, 10, and 14. PO MTA 1–2, App. A.
Because Patent Owner’s Motion proposes no more than one substitute
claim for each challenged claim, we determine that Patent Owner has
proposed a reasonable number of substitute claims. See Prelim. Guidance 3
(taking same approach in preliminary guidance in finding that Patent Owner
proposes a reasonable number of substitute claims).
Second, we consider whether the proposed substitute claims respond
to a ground of unpatentability involved in this trial. Lectrosonics, Paper 15
at 5–6. Patent Owner argues that the proposed substitute claims respond to
each of the trial grounds set forth in the Institution Decision. PO MTA 2–3.
Patent Owner’s Motion to Amend also includes arguments and evidence
addressing the grounds of unpatentability. Id. at 10–23. Petitioner does not
argue that Patent Owner’s Motion to Amend fails to respond to a ground of
unpatentability. We agree with Patent Owner that the proposed substitute
claims respond to a ground of unpatentability involved in this trial.
Third, we consider the breadth of the proposed substitute claims. “A
motion to amend may not present substitute claims that enlarge the scope of
the claims of the challenged patent or introduce new subject matter.”
Lectrosonics, Paper 15 at 6–8 (citing 35 U.S.C. § 316(d)(3); 37 C.F.R.
§ 41.121(a)(2)(ii)). As to the requirement that the amendments may not
enlarge the scope of the original claims, Patent Owner argues that its
proposed substitute claims 17–22 add limitations and do not delete any
limitations. PO MTA 3. Petitioner does not argue that Patent Owner’s
amendment enlarges the scope of the claims. We determine that proposed
substitute claims 17–22 are narrower in scope than claims 1, 2, 6, 9, 10, and
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14 and that Patent Owner’s amendment does not enlarge the scope of the
claims.
As to the requirement that the amendments not introduce “new
matter,” Patent Owner provides citations to the application from which the
’967 Patent issued to demonstrate written description support for each
limitation in the proposed substitute claims. PO MTA 3–10. Petitioner does
not argue that Patent Owner’s Motion fails to meet the “no new matter”
requirement. We agree with Patent Owner that the original disclosure
supports the proposed amendment and that the proposed substitute claims do
not introduce new matter.
Finally, the Contingent Motion includes a claim listing, as required by
37 C.F.R. § 42.121(b). PO MTA, App. A; see Lectrosonics, Paper 15 at 8.
As discussed above, the claim listing appears to have inadvertent errors and
omissions related to claim dependency.
In view of the above, we determine that Patent Owner’s contingent
Motion to Amend meets the statutory and regulatory requirements of
35 U.S.C. § 316(d) and 37 C.F.R. § 42.121 respectively.
4. Claim Construction
Patent Owner states that, in its Motion to Amend, it has applied the
Board’s constructions for “lead frame” and “undercut sidewalls,” as set forth
in the Institution Decision. PO MTA 24. Petitioner’s opposition does not
address claim construction.
For the reasons discussed above, we construe the term “lead frame” as
the “metal portion of a device package that makes electrical connections
between a die and other parts of the circuitry.” We construe “undercut
sidewalls” as “sidewalls having a structure consistent with material having
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been cut away from the underside so as to leave an overhanging portion in
relief.” These are the same constructions as we applied in the Institution
Decision. Inst. Dec. 12, 16.
5. Challenge to Patentability Based on Lack of Enablement
Petitioner contends that proposed substitute claims 17–22 require
undercut sidewalls and a fixing hole, and although Figure 6A of the ’967
illustrates the “newly claimed fixing holes,” it is “undisputed that the
’967 patent does not disclose how to create such undercut sidewalls or fixing
holes.” Pet. MTA Opp. 1 (citing PO MTA 4–5; Ex. 1023, 27:24–28:10).
Petitioner interprets the Patent Owner Response as arguing that a POSITA
would not reasonably have been able to create undercut sidewalls in a one-
piece version of Lee’s lead frames by etching, cutting, or punching. Id.
at 1–2 (citing PO Resp. 2, 7–8, 34–35, 42, 48–49). Petitioner contends that
“[i]f the PTAB accepts [Patent Owner’s] contentions regarding Lee, then the
substitute claims are not enabled.” Id. at 2. Petitioner provides an analysis
of the Wands factors, and contends that its analysis shows that “a POSITA
would not [have been] able to make the claimed inventions of the substitute
claims without undue experimentation.” Id. at 2–4 (citing In re Wands, 858
F.2d 731, 737 (Fed. Cir. 1988)). Petitioner’s Wands analysis relies on Patent
Owner’s contentions about Lee. Id. In the Reply, Petitioner reiterates that
“[i]f Patentee is correct, that a POSITA would require undue
experimentation to form undercut sidewalls or fixing holes in the structure of
Lee, then a POSITA would equally require undue experimentation to form
undercut sidewalls or fixing holes in the structure of the ʼ967 patent.” Pet.
MTA Reply 12.
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After considering Petitioner’s Opposition and Reply, we determine
that Petitioner presents no argument for non-enablement that is not
contingent on the Board agreeing with Patent Owner’s argument that the
challenged claims would not have been obvious in view of Lee. The
contingent nature of Petitioner’s non-enablement argument is emphasized in
the following passage from the Opposition:
To be clear, and as shown in Petitioner’s Reply,
Petitioner’s position is that it is conventional to etch, cut, and
punch lead frames to achieve any suitable lead frame structure,
including undercut sidewalls and fixing holes. It is Patentee who
believes the opposite. Patentee cannot have it both ways. Either
it is conventional to etch, cut, and punch lead frames as shown in
its ’967 patent, or there is no reasonable expectation of doing so
successfully, i.e., undue experimentation is required.
Pet. MTA Opp. 3 n.1.
For the reasons discussed above, we do not accept Patent Owner’s
non-obviousness argument, and we find that a POSITA would have had a
reasonable expectation of success in modifying Lee’s Figures 24–25
embodiment to include undercut sidewalls made by etching. Because
Petitioner’s non-enablement argument is contingent on an argument by
Patent Owner that we reject, we reject Petitioner’s contingent non-
enablement argument for the same reasons.
6. Challenges to Patentability Based on Obviousness
Petitioner asserts the following grounds of unpatentability against the
proposed substitute Claims:
Proposed Substitute
Claims Challenged 35 U.S.C. § References
17, 19, 20, 22 103(a) Lee, Mahle11

11 Ex. 1028, US 2004/0063244, published April 1, 2004 (“Mahle”).
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Proposed Substitute
Claims Challenged 35 U.S.C. § References
18, 21 103(a) Lee, Mahle, Brunner12

7. Petitioner’s Challenge Based on Lee and Mahle
a) Overview of Mahle
Mahle discloses an integrated circuit (“IC”) package having a lead
frame-to-plastic mold lock. Ex. 1028, codes (54), (57), ¶¶ 1, 5, 21.

12 Ex. 1030, US 2004/0188697, published Sept. 30, 2004 (“Brunner”).
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Figure 1 of Mahle is reproduced below.

Mahle Figure 1 shows an IC lead frame having mold locks. Ex. 1028 ¶ 12.
As shown in Figure 1, lead frame 10 has die pad 12 and numerous lead
fingers 14. Id. ¶ 21. Die pad 12 and each of lead fingers 14 have perforating
apertures 16. Id.
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Figure 3 of Mahle is reproduced below.

Mahle Figure 3 shows IC package 26 having lead frame locks 28. Ex. 1028
¶ 24. As shown in Figure 3, lead frame 10 includes apertures 16 formed by
partially etching opposed, axially offset niches 22, 24 in lead frame surfaces
18, 20 from either side. Id. ¶¶ 22–24; see also Figs. 2A–C (illustrating
various stages in a method of making an IC package mold lock). Mahle
discloses, as shown at 44 in Figure 1, that a relatively larger cylindrical
niche may be axially aligned with an opposing relatively smaller cylindrical
niche. Id. ¶ 27, Fig. 1.
b) Analysis
Proposed substitute independent claims 17 and 20. These claims
recite “a fixing hole,” wherein “each fixing hole is located in the interior
portions of each of the first and second lead frames and includes an undercut
sidewall that envelopes inner bounds of the fixing hole.” PO MTA, App. A,
3–6.
Petitioner contends that “Mahle discloses the exact same fixing
holes.” Pet. MTA Opp. 13 (citing Ex. 1028 ¶ 27). More specifically,
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Petitioner contends that Mahle’s disclosure of a relatively larger cylindrical
niche axially aligned with an opposing relatively smaller cylindrical niche
results in “one cylindrical aperture sitting concentrically on top of another
cylindrical aperture of larger diameter,” which is what is claimed in
substitute independent claims 17 and 20. Id. (citing Ex. 1028 ¶ 27; Ex. 1025
¶¶ 37, 46, 64, 60–61). Petitioner further contends “a POSITA would [have
been] motivated to use Mahle’s lead frame locks, such as Mahle’s version 44
lead frame locks, with Lee because (a) Lee would want additional locks in
the interior of the lead frames to ensure that the package body is secured to
the lead frame, and (b) Mahle’s locks were a known way of locking an
encapsulant to a lead frame.” Id. at 13–14 (citing Ex. 1025 ¶¶ 73–83); see
also id. at 10 (“A POSITA would be motivated to include additional fixing
holes in these locations because a large volume of molding material may be
at these locations, which large volumes need to be properly secured to the
lead frame to ensure mechanical integrity and prevent moisture
penetration.”).
In our Preliminary Guidance, we made a preliminary finding that
Petitioner does not sufficiently articulate a rationale as to why, absent
impermissible hindsight, a POSITA would have modified the structure
disclosed in Lee so as to form fixing holes within the interior portions of
first and second sheet metal members 714 and 716. Prelim. Guidance 7–9.
In its Reply to the Preliminary Guidance, Petitioner reiterates its
position that a POSITA would have been motivated to include fixing holes
in the interior portions of the lead frame to secure the package body to the
lead frame for mechanical integrity and to prevent moisture intrusion. Pet.
MTA Reply 1–5.
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Patent Owner responds that “Petitioner’s proposed modification of
placing a hole in Lee’s T-Shaped cross section: (1) is inconsistent with
Lee’s disclosure which places holes to connect a lower/upper portion of the
package body; and (2) frustrates the purpose of Lee, which is to use the T-
Shaped cross section for heat transfer and dissipation.” PO MTA
Sur-reply 2–3.
After considering the parties’ arguments and evidence, we determine
that Petitioner has not met its burden to show that a POSITA would have
been motivated to combine the teachings of Lee and Mahle in the manner
proposed. More specifically, we are not persuaded by Petitioner’s argument
that preventing “securement issues and moisture penetration” would have
motivated a POSITA to include fixing holes in the interior portions of the
lead frame. Pet. MTA Opp. 10; Pet. MTA Reply 2.
Petitioner’s theory is that a POSITA would have been motivated to
include additional apertures in Lee’s lead frame in addition to the aperture
disclosed in Lee paragraph 113 and that an “obvious location” for such
additional apertures is the interior portions of Lee’s lead frames. Pet. MTA
Opp. 9–10; Pet. MTA Reply 2. Although one of the motivations advanced
by Petitioner is ensuring that the package body is secured to the lead frame,
Petitioner does not persuade us that a POSITA would have seen a need or
benefit of adding fixing holes, when Lee already discloses several other
features that stably secure the package body to the lead frame.
First, Lee discloses that “package body 702 is formed by injection
molding of resin” and that “upper and lower portions 702A and 702B of the
package body are connected with each other at their both [sic] longitudinal
edges to stably fix the first and second sheet metal members 714 and 716
therebetween.” Ex. 1004 ¶ 113. Lee also discloses that lead frames 714 and
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716 each have a width “smaller than the package body 702.” Id. ¶¶ 114,
115. These features are illustrated in Figure 26, which shows the perimeter
of package body 702 extending beyond perimeter of lead frames 714, 716
along the longitudinal edges and along the sides, except for protrusions 720,
722 that extend through the sidewall of the package body. Id. Thus, Lee
teaches that lead frames 714, 716 are sandwiched between upper and lower
portions 702A and 702B of the package body, which are connected with
each other along most of the perimeter of the package body.
Second, Lee discloses that “by forming a hole to each of the first
sections 714A and 716A and connecting the upper and lower portions 702A
and 702B of the package body together through the holes, it is possible to fix
the first and second sheet metal members 714 and 716 more stably.”
Ex. 1004 ¶ 113. Petitioner asserts that these holes are the “fixing holes”
recited in original dependent claims 6 and 14. Pet. 45, 56–57. Although Lee
states that these holes are not illustrated in Figures 24–26 (Ex. 1004 ¶ 113),
Petitioner provides the following modified version of Lee Figure 25 to show
the fixing holes disclosed by Lee:

Lee Figure 25 shows an LED package. Petitioner’s modification shows a
hole extending vertically through each of lead frame sections 714A and
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716A, and each hole is filled with resin to form a post that connects upper
and lower portions 702A and 702B of the package body, shown in orange.
Pet. 48; Ex. 1004 ¶¶ 17, 67, 106, 113. Petitioner contends that these
connecting posts secure the lead frame to the package body. Pet. MTA
Reply 2–3.
Third, Lee discloses that sections 714A and 716A form a “generally
half portion” of the lead frame and are “completely surrounded and fixed by
the package body 702.” Ex. 1004 ¶¶ 113–115, Fig. 26 (bottom view of LED
package showing lead frame sections 714A and 716A with dotted lines to
indicate they are embedded within package body 702). Petitioner shows that
the resin that surrounds lead frame sections 714A and 716A is “located in a
fixing space,” thus ensuring that the package body is secured to the lead
frame. Pet. 40–41. Petitioner illustrates this securement with the following
annotation of Lee Figure 25:

Pet. 41. Lee Figure 25 shows an LED package, and Petitioner’s annotation
identifies “resin located in a fixing space” beneath lead frame sections 714A
and 716A. Id. As shown by Lee Figure 26 and Petitioner, this fixing space
surrounds lead frame sections 714B and 716B on three sides. Pet. 29
(annotation of Lee Fig. 26 identifying three undercut sidewalls that “define a
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fixing space that is filled with resin to form the package body”). Thus, Lee
teaches, and Petitioner’s contentions confirm, that package body 702 is
securely attached to lead frames 714 and 716 because sections 714A and
716A are “completely surrounded and fixed by the package body 702”
(Ex. 1004 ¶ 114) and because the resin that forms the package body fills a
“fixing space” beneath these lead frame sections. Pet. 41.
In sum, Lee teaches at least three ways that the lead frames are stably
fixed to the package body in the Figures 24–26 embodiment:
(1) connections between the upper and lower portions of the package body
along its perimeter; (2) posts connecting the upper and lower portions of the
package body together through the holes in the lead frames; and (3) lead
frame sections that are completely surrounded and fixed by the package
body. Ex. 1004 ¶¶ 67, 113–115. In view of these teachings, we are not
persuaded that a POSITA would have perceived a need for or benefit to
adding fixing holes to more securely attach the lead frames to the package
body, as argued by Petitioner.
Our finding is reinforced by Lee’s teachings about heat transfer. Lee
teaches that an important function of the sheet metal lead frame is to transfer
heat from the LED chip to the metal plate of the underlying board. Ex. 1004
¶ 13 (stating that an object is to provide a high power LED package in which
a sheet metal member serves as a radiating means for conducting heat
generated by an LED chip to a metal plate of a board, thereby raising
thermal radiation efficiency while reducing the size and thickness of the
package). With respect to the embodiment shown in Figures 24–26, Lee
teaches that “heat generated at the LED chip 712 can be transferred
smoothly through the first and second sections 714A and 714B of the first
sheet metal member 714 to the metal plate of the board.” Id. ¶ 116.
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Even though Patent Owner does not have the burden of proof to show
patentability of its proposed substitute claims, Patent Owner shows
persuasively that Petitioner’s modification of Lee’s Figures 24–26
embodiment would frustrate Lee’s purpose of using the lead frame to
transfer heat from the LED chip. PO MTA Sur-reply 4–7. Patent Owner
shows that it is well known that heat transfer is proportional to the contact
surface area between the board and the metal. Id. at 6, 8 (citing Ex. 1019,
1313). The cited exhibit teaches that “[k]ey heat sink performance
parameters include (1) a large surface area to spread the heat generated by
the LED and provide access to circulating air; [and] (2) a flat contact area to
provide effective heat transfer from the PCB.” Ex. 1019, 13. Patent Owner
presents the following annotations of Lee Figure 25 to illustrate the heat
transfer path from the LED chip to the board and the reduction of heat
dissipation that would result from Petitioner’s proposed modification.

PO MTA Sur-reply 6. Lee Figure 25 shows an LED package. Patent
Owner’s annotations show persuasively that, if holes were placed in the
interior portions of the lead frames, then the contact surface area between the

13 K. Bahde, Thermal Management for LED Luminaires, LED Professional
Review (Nov./Dec. 2007). Like Patent Owner, we cite to Exhibit 1019
using the page numbers added by Petitioner.
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lead frame (i.e., the head dissipator) and the underlying board would be
reduced, reducing the LED package’s ability to dissipate heat. Id. at 6–7.
In the Preliminary Guidance, we stated that “Petitioner also does not
address how its proposed modification would affect Lee’s design
considerations pertaining to heat transfer and moisture intrusion.” Prelim.
Guidance 9 (citing Ex. 1004 ¶¶ 116, 117; Inst. Dec. 18). In the reply,
Petitioner addresses heat transfer by asserting: “There is also no evidence
that adding a fixing hole at Lee’s interior would create any issues with heat
transfer. To the contrary, Lee discloses using multiple fixing holes []and
discloses that a plurality of fixing holes is desirable to secure the package
body to the lead frame.” Pet. MTA Reply 4–5 (citing Ex. 1025 ¶ 32;
Ex. 1004, ¶¶ 17, 117, Figs. 5, 14). Petitioner’s argument is not persuasive
because the “multiple fixing holes” Petitioner identifies in Lee are posts that
connect the upper and lower portions of the package body and, unlike
Petitioner’s added fixing holes, they do not reduce the surface area of the
lead frame that is in contact with the underlying board. See Ex. 1004, ¶ 67,
Figs. 4, 5, 8, 9, 11, 13–19 (showing posts 104, 204, 304, 404, 504, or 604
connecting upper and lower portions of package body); see also id. ¶ 80
(stating that “constitutional elements the same as or similar to those of the
LED package 100 are designated with corresponding reference numerals,
increased by 100”).
Petitioner argues that a POSITA would have been motivated to
include additional fixing holes in the interior portions of Lee’s lead frames
to prevent moisture intrusion. Pet. MTA Opp. 10; Pet. MTA Reply 2, 5
(citing Ex. 1025 ¶¶ 50, 51, 56, 59, 63, 73, 79, 80, 94). Neither Petitioner nor
Dr. Krames explains sufficiently, however, how adding fixing holes in the
interior portions of the lead frames in the embodiment shown in Lee Figures
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24–26 would prevent moisture intrusion. We are persuaded by Patent
Owner’s argument that placing fixing holes in the interior portions would
create “yet another extra resin/metal junction where moisture can penetrate
and propagate inside the LED chip.” PO MTA Sur-reply 7. Patent Owner’s
argument is supported by the above annotation of Lee Figure 25, which
shows that Petitioner’s proposed hole placement would allow another point
where moisture could infiltrate the LED package from the outside. Patent
Owner’s argument is also supported by Dr. Hansen’s annotation of Lee
Figure 25 identifying a first path for moisture intrusion.

Ex. 2009 ¶ 47. Lee Figure 25 shows an LED package, and the red arrow
added by Dr. Hansen identifies a moisture path from the outside of the
package to the LED chip. Id. Although Petitioner and Dr. Krames assert
that a POSITA would have been motivated to include additional fixing holes
in the interior portions of the lead frames to secure the encapsulant to the
metal lead frame for mechanical integrity and to prevent moisture intrusion
(Pet. MTA Opp. 10; Pet. MTA Reply 2; Ex. 1025 ¶ 79), neither Petitioner
nor Dr. Krames addresses the additional moisture penetration path that
would be created by adding such fixing holes.
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Synthesizing our findings regarding motivation to combine Lee and
Mahle, we determine that Petitioner has not shown that a POSITA would
have viewed the potential benefit identified by Petitioner of more securely
attaching the package body to the lead frames as outweighing the detriments
identified by Patent Owner, including reduced heat dissipation and an
additional path for moisture penetration. Accordingly, we determine that
Petitioner has not met its burden to show that a POSITA would have been
motivated to combine the teachings of Lee and Mahle in the manner
proposed by Petitioner.
Proposed substitute claims 19 and 22. These claims depend from
proposed substitute claims 17 and 20, respectively, and recite “a second
fixing hole formed in at least one of the interior portions of the first and
second lead frames.” PO MTA 19, App. A, 5, 7.14 The shortcomings in
Petitioner’s arguments and evidence for independent claims 17 and 20 are
not remedied by its arguments and evidence for dependent claims 19 and 22.
On the contrary, for the reasons discussed above, we find that the detriments
identified by Patent Owner—reduced heat dissipation and an additional path
for moisture penetration—would have been exacerbated by adding a second
fixing hole in the interior portions of Lee’s lead frames. For these reasons,
we determine that Petitioner has not met its burden to show that proposed
substitute claims 19 and 22 are unpatentable as obvious in view of Lee and
Mahle.

14 As discussed above, we determine patentability of proposed substitute
claims 18, 19, 21, and 22 consistent with Patent Owner’s statement that they
“depend on substitute claims 17 and 20.” PO MTA 19.
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Accordingly, Petitioner has not met its burden to show that proposed
substitute claims 17, 19, 20, and 22 are unpatentable as obvious in view of
Lee and Mahle.
8. Petitioner’s Challenge Based on Lee, Mahle, and Brunner
Proposed substitute claims 18 and 21 depend from proposed substitute
claims 17 and 20, respectively, and recite “a resin part comprising a
phosphor disposed in the fixing space to support the first and second lead
frames.” PO MTA 19, App. A, 5, 7.15 Petitioner challenges proposed
substitute claims 18 and 21 as obvious based on Lee, Mahle, and Brunner.
The shortcomings in Petitioner’s arguments and evidence for independent
claims 17 and 20 are not remedied by its arguments and evidence for
dependent claims 18 and 21, including its arguments and evidence about
Brunner. For these reasons, we determine that Petitioner has not met its
burden to show that proposed substitute claims 18 and 21 are unpatentable
as obvious in view of Lee, Mahle, and Brunner.

15 See footnote 14 above.
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Patent 10,134,967 B2
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III. CONCLUSION
In summary:
Claims 35 U.S.C. § Reference
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1–16 102(b)16 Lee
1–16 103(a) Lee 1–16
Overall
Outcome 1–16

Motion to Amend Outcome Claims
Original Claims Cancelled by Amendment
Substitute Claims Proposed in the Amendment 17–2217
Substitute Claims: Motion to Amend Granted 17–22
Substitute Claims: Motion to Amend Denied
Substitute Claims: Not Reached

16 As discussed in Section II.F. above, we do not reach the anticipation
ground challenging claims 1–16, as we determine that those claims are
unpatentable based on the obviousness ground, as noted in the table.
17 As discussed in Section II.G.2. above, Patent Owner’s claim listing in
Appendix A of the Motion to Amend does not include substitutes for
dependent claims 3–5, 7, 8, 11–13, 15, and 16 to change their dependency,
and this omission appears to be unintentional. PO MTA 19. If Patent
Owner wishes to correct this omission, then it should meet and confer with
Petitioner and request a conference call with the Board to seek authorization
to file a replacement claims appendix.
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Patent 10,134,967 B2
61
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner has shown by a preponderance of the
evidence that claims 1–16 of the ’967 Patent are unpatentable;
FURTHER ORDERED that Patent Owner’s Contingent Motion to
Amend is granted as to proposed substitute claims 17–22; and
FURTHER ORDERED that because this Decision is final, a party to
the 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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Patent 10,134,967 B2
62
For PETITIONER:
Heath Briggs
Barry Schindler
GREENBERG TRAURIG, LLP
briggsh@gtlaw.com
schindlerb@gtlaw.com

For PATENT OWNER:

Bing Ai
Miguel Bombach
Kevin Patariu
Michael Eisenberg
PERKINS COIE LLP
ai-ptab@perkinscoie.com
bombach-ptab@perkinscoie.com
patariu-ptab@perkinscoie.com
meisenberg@steptoe.com