U.S. PATENT NO. 7,066,733 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

Transcription

1 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD ULTRADENT PRODUCTS, INC. Petitioner v. KERR CORPORATION Patent Owner Case (Unassigned) Patent 7,066,733 PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,066,733 UNDER 35 U.S.C AND 37 C.F.R. 42 Mail Stop Patent Board Patent Trial and Appeal Board U.S. Patent and Trademark Office P.O. Box 1450 Alexandria, VA Submitted electronically via the Patent Review Processing System

2 TABLE OF CONTENTS I. MANDATORY NOTICES (37 C.F.R. 42.8(a)(1), (b))... 1 A. Real Party-in-Interest Under 37 C.F.R. 42.8(b)(1)... 1 B. Related Matters Under 37 C.F.R. 42.8(b)(2)... 1 C. Lead and Back-up Counsel Under 37 C.F.R. 42.8(b)(3)... 1 D. Service Information Under 37 C.F.R. 42.8(b)(4)... 2 II. PAYMENT OF FEES UNDER 37 C.F.R III. STATEMENTS OF PRECISE RELIEF REQUESTED AND REASONS THEREFOR, PURSUANT TO 37 C.F.R (a)... 2 IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R A. Grounds for Standing Under 37 C.F.R (a)... 3 B. Identification of Challenge Under 37 C.F.R (b) Claims for Which IPR is Requested Specific Statutory Grounds and Prior Art... 3 a. Identification of Patents and Printed Publications... 3 b. Identification of Statutory Grounds How the Challenged Claims Are to Be Construed... 5 a. light-emitting element or elements... 5 b. optically reflective element coupled to surround... 6 c. forwardly... 7 d. heat exchanger and heat exchange element How the Construed Claims Are Unpatentable Supporting Evidence Relied Upon... 9 V. SUMMARY OF THE 733 Patent A. Disclosure of the 733 Patent B. Summary of Pertinent Portions of Prosecution History i

3 VI. 1. Summary of Grandparent Prosecution Summary of Remainder of Patent Prosecution Applicant s Arguments Were Flawed C. Effective Filing Date of the IPR Claims MANNER OF APPLYING PRIOR ART TO EVERY IPR CLAIM, THUS ESTABLISHING A REASONABLE LIKELIHOOD THAT EVERY IPR CLAIM IS UNPATENTABLE A. Ground 1: Claims 1, 2, 11, 13, and Are Anticipated by Kipke I B. Ground 2: Claims 1-15 Are Obvious over Doube in View of Berger Doube s Devices It Would Have Been Obvious to Modify Doube s Devices with Berger s Light Source Every Element of Claims 1-15 Is Present in the Combined Teachings of Doube and Berger C. Ground 3: Claims Are Obvious over Doube in View of Berger and Further in View of Breuer D. Ground 4: Claims 1-6, 11-13, and 16 Are Obvious over Kennedy II in View of Pimpl Kennedy II s Devices It Would Have Been Obvious to Modify Kennedy II s Devices with Pimpl s Light Source Assemblies Every Element of Claims 1-6, 11-13, and 16 Is Present in the Combined Teachings of Kennedy II and Pimpl E. Ground 5: Claims 17 and 18 Are Obvious over Kennedy II in View of Pimpl and Further in View of Murata ii

4 EXHIBIT LIST Exhibit 1001 Exhibit 1002 Exhibit 1003 Exhibit 1004 Exhibit 1005 Exhibit 1006 Exhibit 1007 Exhibit 1008 Exhibit 1009 Exhibit 1010 Exhibit 1011 Exhibit 1012 Exhibit 1013 Exhibit 1014 Exhibit 1015 Exhibit 1016 Exhibit 1017 U.S. Patent No. 7,066,733 to Logan et al. ( 733 Patent ) U.S. Patent No. 6,692,251 to Logan et al. (the Parent ) U.S. Patent No. 5,487,662 to Kipke et al. ( Kipke I ) PCT Application Publication No. WO 97/36552 of Doube et al. European Patent Application No of Berger et al., English Translation Thereof, and Affidavit of Accuracy Canadian Patent Application No. 2,190,225 of Breuer et al. U.S. Patent No. 5,634,711 to Kennedy et al. ( Kennedy II ) German Patent Application No of Pimpl, English Translation Thereof, and Affidavit of Accuracy U.S. Patent No. 4,935,665 to Murata U.S. Patent No. 6,200,134 to Kovac et al. (the Grandparent ) Kerr Corporation s Brief in Support of Its Proposed Claim Constructions for Terms in the Asserted Kerr Patents Dentsply s Opening Claim Construction Brief Merriam-Webster s Collegiate Dictionary heat exchanger Declaration of Robin Walter Mills, BDS, MSc, DDS Declaration of James Richard Shealy, M.S., Ph.D. Declaration of Roy H. Kayser Prosecution History of U.S. Patent Application No. iii

5 09/009,205 (Which Issued as U.S. Patent No. 6,200,134) Exhibit 1018 Exhibit 1019 Exhibit 1020 Exhibit 1021 Exhibit 1022 Exhibit 1023 Exhibit 1024 Exhibit 1025 Exhibit 1026 Exhibit 1027 Exhibit 1028 Exhibit 1029 Exhibit 1030 Exhibit 1031 Exhibit 1032 Exhibit 1033 UK Patent Application Publication No. GB of Mills et al. Prosecution History of U.S. Patent Application No. 09/632,260 (Which Issued as U.S. Patent No. 6,692,251) Prosecution History of U.S. Patent Application No. 10/655,781 (Which Issued as U.S. Patent No. 7,066,733) German Patent Application No of Schöberl, English Translation Thereof, and Affidavit of Accuracy RW Mills, Blue Light Emitting Diodes Another Method of Light Curing?, 178 Brit. Dent. J. 169 (1995) RW Mills, et al., Dental composite depth of cure with halogen and blue light emitting diode technology, 186 Brit. Dent. J (1999) U.S. Patent No. 6,439,888 to Boutoussov et al. U.S. Patent No. 6,331,111 to Cao U.S. Patent No. 5,316,473 to Hare U.S. Patent No. 5,689,866 to Doiron et al. U.S. Patent No. 5,475,417 to Ogata et al. U.S. Patent No. 5,886,401 to Liu U.S. Patent No. 5,803,579 to Turnbull U.S. Patent No. 5,702,250 to Kipke ( Kipke II ) U.S. Patent No. 5,420,768 to Kennedy ( Kennedy I ) Japanese Patent Application No. H of Goto et al., English Translation Thereof, and Affidavit of Accuracy iv

6 Exhibit 1034 Exhibit 1035 Exhibit 1036 Exhibit 1037 Exhibit 1038 Exhibit 1039 U.S. Patent No. 5,418,384 to Yamana et al. U.S. Patent No. 5,290,169 to Friedman et al. U.S. Patent No. 5,530,632 to Shikano et al. U.S. Patent No. 5,936,353 to Triner et al. U.S. Patent No. 4,857,801 to Farrell U.S. Patent No. 5,639,158 to Sato v

7 Petitioner Ultradent Products, Inc., of South Jordan, Utah, ( Petitioner or Ultradent ) petitions for inter partes review ( IPR ) and cancellation of claims 1-18 (the IPR Claims ) of U.S. Patent No. 7,066,733 (Ex. 1001, the 733 Patent ) pursuant to 35 U.S.C and 37 C.F.R. 42. I. MANDATORY NOTICES (37 C.F.R. 42.8(a)(1), (b)) A. Real Party-in-Interest Under 37 C.F.R. 42.8(b)(1) Ultradent is the real party-in-interest. B. Related Matters Under 37 C.F.R. 42.8(b)(2) All known judicial or administrative matters that may affect, or be affected by, a decision in the petitioned-for proceeding are three litigations: (1) Kerr Corporation v. Ultradent Products, Inc., 8:14-cv CJC-AN (C.D. Cal.), (2) CAO Group Inc. v. Sybron Dental Specialties et al., 2:12-cv DN-EJF (D. Utah), and (3) Kerr Corporation v. Dentsply International, Inc., 3:06-cv BBC (W.D. Wis.), and two IPRs: (1) No. IPR , filed October 10, 2014, which seeks the cancellation of claims 1, 2, 4-15, and of U.S. Patent No. 6,692,251 to Logan et al. (the Parent ); and (2) No , filed October 17, 2014, which seeks the cancellation of claims and of the Parent. C. Lead and Back-up Counsel Under 37 C.F.R. 42.8(b)(3) 1

8 Lead Counsel: Daniel C. Higgs, Reg. No. 55,265, Stoel Rives LLP, 201 South Main Street, Suite 1100, Salt Lake City, UT 84111, Tel.: (801) , Fax: (801) Back-up Counsel: Dorothy P. Whelan, Reg. No. 33,814, Fish & Richardson P.C., 3200 RBC Plaza, 60 South Sixth Street, Minneapolis, MN 55402, Tel.: (612) , Fax: (612) D. Service Information Under 37 C.F.R. 42.8(b)(4) Please address all correspondence and service to lead counsel at the address provided in Section I.C. Petitioner also consents to electronic service by at II. PAYMENT OF FEES UNDER 37 C.F.R Payment of all fees for this petition, as set forth in 37 C.F.R (a), is being made by credit card. Petitioner further authorizes the Patent and Trademark Office to charge Deposit Account No for any delinquency or any other necessary fees. III. STATEMENTS OF PRECISE RELIEF REQUESTED AND REASONS THEREFOR, PURSUANT TO 37 C.F.R (a) A statement of the precise relief requested pursuant to 37 C.F.R (b) is provided below in Section IV.B. A full statement of the reasons for the relief requested is provided below in Sections IV.B.2 and VI. 2

9 IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R A. Grounds for Standing Under 37 C.F.R (a) Pursuant to 37 C.F.R (a), Petitioner hereby certifies that the 733 Patent is available for IPR and that Petitioner is not barred or estopped from requesting the present IPR. This petition is being filed within one year of service of an original complaint against Petitioner in the matter Kerr Corporation v. Ultradent Products, Inc., 8:14-cv CJC-AN (C.D. Cal.), as Petitioner was first served on June 3, B. Identification of Challenge Under 37 C.F.R (b) 1. Claims for Which IPR is Requested Petitioner requests the IPR of claims 1-18 of the 733 Patent. 2. Specific Statutory Grounds and Prior Art a. Identification of Patents and Printed Publications The patents and printed publications listed below are relied upon, in specific combinations, for the statutory grounds on which each challenge to the IPR Claims of the 733 Patent is based. The effective filing date of the 733 Patent is no earlier than the actual filing date of the Parent August 4, 2000 for reasons discussed below. See Section V.C infra. The following references each published more than one year prior to the earliest possible effective filing date of the 733 Patent, and thus each reference 3

10 qualifies as prior art under 35 U.S.C. 102(b): U.S. Patent No. 5,487,662 to Kipke et al. (Ex. 1003, Kipke I ); International Publication No. WO 97/36552 to Doube et al. (Ex. 1004, Doube ); European Publication No. EP to Berger et al. (Ex. 1005, Berger ); Canadian Publication No. 2,190,225 to Breuer et al. (Ex. 1006, Breuer ); U.S. Patent No. 5,634,711 to Kennedy et al. (Ex. 1007, Kennedy II ); German Publication No. DE to Pimpl (Ex. 1008, Pimpl ); and U.S. Patent No. 4,935,665 to Murata (Ex. 1009, Murata ). b. Identification of Statutory Grounds Following is an overview of the specific statutory grounds on which the challenge to each of the IPR Claims is based: Ground 1: Claims 1, 2, 11, 13, and are anticipated under 35 U.S.C. 102(b) by Kipke I. Ground 2: Claims 1-15 are obvious under 35 U.S.C. 103(a) over Doube in view of Berger. Ground 3: Claims are obvious under 35 U.S.C. 103(a) over Doube in view of Berger and further in view of Breuer. Ground 4: Claims 1-6, 11-13, and 16 are obvious under 35 U.S.C. 103(a) over Kennedy II in view of Pimpl. 4

11 Ground 5: Claims 17 and 18 are obvious under 35 U.S.C. 103(a) over Kennedy II in view of Pimpl and further in view of Murata. 3. How the Challenged Claims Are to Be Construed For purposes of IPR, a claim is interpreted by applying its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R (b). Accordingly, the terms of the IPR Claims are given their ordinary meaning as understood by one of skill in the art unless that meaning is inconsistent with the specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Petitioner submits that the terms in the IPR Claims should be given their plain and ordinary meaning. To Petitioner s knowledge, no court has construed any term of the 733 Patent. 1 a. light-emitting element or elements 1 Claim terms are interpreted under different standards in District Court proceedings. Accordingly, the claim constructions presented in this petition, or ultimately adopted in the IPR, may differ from those presented or adopted in the litigations listed in Section I.B without being contradictory thereto or inconsistent therewith. Petitioner reserves the right to assert claim constructions different from those of the present petition and IPR in the first-listed litigation in Section I.B. 5

12 The IPR Claims recite a plurality of solid state, light-emitting elements, the elements comprising semiconductor junctions (claims 1-12), a lightemitting element having a plurality of generally bare semiconductor junctions (claims 13-15), or a first [and a second] plurality of light-emitting elements... comprising generally bare semiconductor junctions (claims 16-18) (the Light- Emitting Element Limitation ). The specification of the 733 Patent indicates that the light-emitting elements are light-emitting dies 30 which are mounted to form a collective array 32 on a substrate 34. The dies 30 are small, bare semiconductor junctions and are constructed using a light generating semiconductor material. (Ex. 1001, 8:11-13.) The 733 Patent claims priority to and incorporates by reference U.S. Patent No. 6,200,134 to Kovac et al. (Ex. 1010, the Grandparent ), which uses the terms dies synonymously with chips (See Ex. 1010, 7:63.) Accordingly, the broadest reasonable interpretation of the Light-Emitting Element Limitation is broad enough to include, inter alia, a plurality of light emitting diode (LED) dies or chips having semiconductor junctions. b. optically reflective element coupled to surround The IPR Claims recite an optically reflective element coupled to surround one of the plurality of light-emitting elements (claims 1-12), the light-emitting element and protective layer (claims 13-15), or at least one of 6

13 the pluralities of light-emitting elements (claims 16-18) (the Optically Reflective Element Limitation ). In a prior litigation, the Patent Owner alleged this limitation means a reflective surface positioned around such that the reflective surface redirects light emitted from either the light-emitting elements (as recited in claims 1-12) or the light emitting element and protective layer (as recited in claims 13-15). (Ex. 1011, pp. 20, 21, 23.) This construction was significantly different from that of the alleged infringer: a reflective surface joined to the edge of the carrier. (Ex. 1012, pp ) Strictly for purposes of this IPR, the Optically Reflective Element Limitation should be given its plain and ordinary meaning and, further, should be interpreted to include at least the Patent Owner s own interpretation: a reflective surface positioned around such that the reflective surface redirects light emitted from the light-emitting elements (claims 1-12 and 16-18) or from the light-emitting element and protective layer (claim 13-15). By proposing this interpretation for the present IPR, Petitioner does not adopt the Patent Owner s construction as its own. Petitioner reserves the right to challenge the validity of the IPR Claims on the basis that the Coupled to Surround Limitation is indefinite and/or propose a different construction of the Coupled to Surround Limitation in the first-listed litigation of Section I.B. c. forwardly 7

14 The IPR Claims require that the optically reflective element direct [light] forwardly away from the collective array and ultimately to a compound for curing (claims 1-12) or direct [light] generally forwardly (claims 13-18). The disclosure of the 733 Patent does not use the word forwardly or any variation thereof and does not define a specific reference frame. The Parent is also silent with respect to these items. The only context for the term forwardly is found in the Grandparent, which claims a hand-held dental instrument including a housing with an operator grippable section and a light emitting section, the light emitting section including a forwardmost tip section configured for being positionable within the mouth proximate the light-curable compound. (Ex. 1010, 13:18-22, emphasis added.) Therefore, for purposes of this IPR, the broadest reasonable interpretation of forwardly includes the plain and ordinary meaning of this term and, further, must be broad enough to include: in a direction toward a light-emitting region of the instrument that is positioned proximate a light-curable compound. d. heat exchanger and heat exchange element Claim 5 recites a heat exchanger and Claim 6 recites a heat exchange element (the Heat Exchanger Limitation ). The specification of the 733 Patent does not use the term heat exchange element. Rather, the specification 8

15 only uses the term heat exchanger, and thus the term heat exchange element is interpreted as heat exchanger for purposes of this IPR. Moreover, in the embodiment of Figure 1 of the 733 Patent, a heat exchanger 26 transfers heat from a liquid-filled heat tube 38 to surrounding air. (Ex. 1001, 8:40-52, 9:3-13.) This is consistent with the generally accepted definition of heat exchanger : a device... for transferring heat from one fluid to another without allowing them to mix. (Ex. 1013, p. 3.) However, in Figure 4, the heat exchanger 26 is not thermally coupled with a heat tube. Rather, the heat exchanger 26 of Figure 4 is physically identical to the heat sink 36 of Figure 1 (with the exception of having three additional fins), and each is directly coupled to the substrate 34. (Ex. 1001, 8:40-41, 14:34-35.) Thus, the broadest reasonable interpretation of the Heat Exchanger Limitation includes a heat sink. 4. How the Construed Claims Are Unpatentable An explanation of how the IPR Claims, claims 1-18 of the 733 Patent, are unpatentable under Grounds 1-5 is provided below in Section VI. 5. Supporting Evidence Relied Upon The supporting evidence relied upon in this IPR is identified in the accompanying Exhibit List. Exhibits are identified and discussed throughout the present petition. Exhibits are supporting evidence for 9

16 a Declaration of Dr. Robin Walter Mills, BDS, MSc, DDS (Ex. 1014, Mills Declaration ) and for a Declaration of Dr. James R. Shealy, M.S., Ph.D. (Ex. 1015, Shealy Declaration ). A Declaration of Roy H. Kayser (Ex. 1016, Kayser Declaration ) is also submitted herewith. Pursuant to 37 C.F.R (b)(5), the exhibit numbers of the supporting evidence relied upon to support the challenge and the relevance of the evidence to the challenge raised, including identification of specific portions of the evidence that support the challenge, are provided throughout Sections V and VI. V. SUMMARY OF THE 733 Patent A. Disclosure of the 733 Patent The claims of the 733 Patent recite instruments for curing light-curable compounds and have three basic components: (1) a plurality of light-emitting elements (claims 1-12 and 16-18) or a light emitting element having a plurality of generally bare semiconductor junctions (claims 13-15), (2) a generally clear layer simultaneously covering the light-emitting elements or semiconductor junctions, and (3) an optically reflective element coupled to surround the lightemitting elements (claims 1-12 and 16-18) or light-emitting element (claim 13-15). Simply put, each of the IPR Claims recites little more than a plurality of LED chips simultaneously covered by a generally clear layer and a reflective 10

17 element coupled to surround either the LED chips (claims 1-12 and 16-18) or the LED chips and the generally clear layer (claims 13-15). B. Summary of Pertinent Portions of Prosecution History 1. Summary of Grandparent Prosecution During the prosecution of the Grandparent, the examiner rejected the original claims over Kennedy II (Ex. 1007). (Ex. 1017, pp ) The applicant amended these claims and clarified that the invention included a plurality or array of unpackaged, light-emitting dies mounted on a substrate wherein each of the dies is a semiconductor junction free of an integral package and a lens. (Ex. 1017, p. 84, emphases added.) The applicant alleged that this feature was patentable because prior art devices only used arrays having a plurality of traditional or conventional packaged, light-emitting diodes. (Ex. 1017, pp ) The applicant argued that Kennedy II only discloses the use of conventional LEDs which are packaged. For example, referring to Figure 6, LEDs 22 are shown having the conventional dome shape of a packaged LED wherein the dome portion is part of a plastic housing which forms part of a lens for the LED and surrounds a semiconductor junction and wire leads. (Ex. 1017, p. 87). The applicant further alleged that Kennedy II provides no suggestion to a person of ordinary skill in the art... [to] utilize a plurality of 11

18 unpackaged semiconductor junctions in an array for a dental curing light. (Ex. 1017, pp ) The examiner stated he was somewhat reluctant to adopt applicant s characterization of Kennedy particularly in view of the fact that Kennedy specifically calls for substrate 24 to be a ceramic substrate as opposed to a mere circuit board on which conventional individual LED s [sic] would typically be mounted. (Ex. 1017, p. 97.) However, the examiner found this issue was moot in view of additional references that show that it is common and conventional to mount and/or form an array of LEDs directly on a ceramic substrate without a packaged layer of plastic covering the LEDs. (Ex. 1017, p. 97.) The applicant then amended the claims to emphasize that the array of light-emitting dies was a collection of individually mounted elements, and argued that the additional art applied by the examiner was only directed to unitary, integrated circuit structures. (Ex. 1017, p. 105, emphasis added.) The examiner rejected the newly amended claims in view of numerous references that taught arrays of LED chips individually mounted on a substrate, although (according to the applicant) none of these references were in the dental curing arts. (Ex. 1017, pp , 131.) The applicant then applied a rigid teaching-suggestion-motivation (TSM) test to counter each of the examiner s proposed combinations of references. 12

19 (Ex. 1017, pp ) That is, the applicant argued that because none of the secondary references contained specific teachings, suggestions, or motivations for using their light sources with dental curing lights, it would not have been obvious for one skilled in the art to make a simple substitution of any such array of individually-mounted LED chips for the array of traditional LEDs in known dental curing lights. (Ex. 1017, pp ) In making this argument, the applicant correctly assumed that the examiner would not revisit the issue of whether Kennedy II, which is clearly in the dental arts, teaches LED chips individually mounted on a substrate. The applicant supplemented its rigid application of the TSM test with a discussion of U.K. Patent No. GB to Dr. Robin Walter Mills et al. (Ex. 1018, Mills ). (Ex. 1017, pp ) According to the applicant, Dr. Mills was a person of ordinary skill in the art who had addressed the issues of increased LED density and intensity by changing the shape of the package of the traditional LED from the traditional spherical shape, [sic] to another shape which allows the LEDs to be positioned closer together. (Ex. 1017, pp ) The applicant argued that its own alleged invention of arranging multiple LED chips on a common substrate flies in the face of Dr. Mills approach, and further asserted that the applicant s own modification of the prior art is opposite to an actual modification, chosen by a real person of ordinary 13

20 skill in the art. (Ex. 1017, p. 134.) Implicit in this argument is the assertion that, because Dr. Mills approached the problem of LED density and intensity in a manner that differed from the applicant s approach, the applicant s alleged invention would not have been obvious to any person of ordinary skill in the art, including Dr. Mills. The examiner issued a Notice of Allowance in the following action. (Ex. 1017, pp ) 2. Summary of Remainder of Patent Prosecution There is nothing on the record in the prosecution history of the Grandparent, the Parent, or the 733 Patent that indicates the examiner (who was the same examiner in each case) ever revisited the question of whether or not Kennedy II taught individual LED chips mounted on a substrate. (Ex. 1017, Ex. 1019, Ex ) However, from the prosecution history of the patent application that gave rise to the 733 Patent, it is clear that the examiner believed that the mere recitation of a plurality of LED chips positioned on a substrate and covered with a generally clear protective layer to be patentable. (Compare Ex. 1020, pp with Ex. 1020, pp , ) In particular, the Examiner accepted the applicant s arguments that the foregoing limitations distinguished the invention recited in claims in nonobvious ways from a prior art reference that allegedly only disclosed a plurality of individually packaged LEDs. (Ex. 1020, pp. 131, ) 14

21 It is unclear from the record whether it was the recitation of multiple LED chips positioned on a common substrate, a generally clear protective layer covering those LED chips, or the combination of these features that caused the examiner to conclude that claims were patentable. The examiner never made any prior-art-based rejections of claims 1-12 or of the 733 Patent, which likewise recite the combination of a plurality of LED chips (claims 1-12 and 16-18) mounted on a substrate (claims 1-12) and a generally clear layer simultaneously covering the LED chips (claims 1-12 and 16-18). 3. Applicant s Arguments Were Flawed The foregoing prosecution took place long before the Supreme Court s KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007) decision that repudiated the type of rigid application of the TSM test that the examiner found persuasive during prosecution of the Grandparent. Thus, the examiner s assessment of patentability of certain features that carried through to the 733 Patent was based on an improper legal framework. Moreover, the Mills Declaration contradicts the applicant s argument that those of ordinary skill in the art would not have looked to other fields of endeavor, such as automobile brake lights, to inform their development of dental curing lights. (Ex. 1014, pp ) Dr. Robin Walter Mills testifies that those of ordinary skill in the art did, in fact, review LED technologies in many fields (including bicycle warning beacons, high- 15

22 speed color scanning, and data transmission) in developing dental curing devices, and he supports this assertion with an article that he published on this very topic in (Ex. 1014, pp ) Dr. Mills also contests the applicant s conclusions regarding what would or would not have been obvious to one of ordinary skill in the art based on the teachings of Dr. Mills own patent application. (Ex. 1014, pp ) Also submitted herewith is the Kayser Declaration, in which Roy H. Kayser one of the two joint inventors of the Kennedy II patent testifies that Kennedy II contains numerous teachings that would indicate to one of ordinary skill in the art that the LEDs disclosed in that patent could be (and in fact were likely to be) individually mounted chips rather than prepackaged LED assemblies. (Ex. 1016, pp ) This directly contradicts the applicant s arguments during prosecution. Kayser further testifies that the dome shape depicted in Kennedy II s Figure 6 would not have led one of ordinary skill in the art to definitively conclude that Kennedy II s LEDs are prepackaged LED assemblies, which is contrary to the applicant s assertions. (Ex. 1016, pp ) Kayser additionally testifies that he designed and built light curing prototypes having arrays of LED chips that were individually mounted on a common substrate prior the filing of the Kennedy II patent (almost six years in advance of the filing date of the Parent), that he intended for the application for 16

23 the Kennedy II patent to disclose such arrangements, and additionally testifies that he, as one of ordinary skill in the art, understood that the application did disclose such arrangements. (Ex. 1016, pp ) Furthermore, the examiner failed to recognize that the prior art was replete with references that explicitly taught the use of multiple light-emitting dies individually mounted on a substrate and covered with a clear protective layer. Three such references are discussed at length in Section VI namely, Kipke I and Berger (dental curing light references), as well as Pimpl (general LED lighting reference). The Mills Declaration and the Shealy Declaration discuss these and additional references to further demonstrate this point. (Ex. 1014, pp ; Ex. 1015, pp ) C. Effective Filing Date of the IPR Claims The IPR Claims are not entitled to the filing date of the Grandparent, as the recitation of an optically reflective element is present in each of these claims. (Ex. 1001, 15:33-18:11.) This feature is new matter that was added to the application for the Parent, as it finds absolutely no support in the grandparent case. For a claim in a later-filed application to be entitled to the benefit of the filing date of an earlier-filed application, the earlier-filed application must provide support for each limitation contained in the claim. See, e.g., Vas-Cath v. Mahurker, 935 F.2d 1555, (Fed. Cir. 1991). Therefore, the earliest 17

24 possible effective filing date to which the claims of the 733 Patent could be entitled is the same as the Parent s actual filing date: August 4, VI. MANNER OF APPLYING PRIOR ART TO EVERY IPR CLAIM, THUS ESTABLISHING A REASONABLE LIKELIHOOD THAT EVERY IPR CLAIM IS UNPATENTABLE The prior art references relied upon in this petition disclose each limitation recited in the IPR Claims. This section shows how these prior art references, whether alone or in the combinations specified, disclose all limitations of the IPR Claims, thus raising a reasonable likelihood of prevailing in each of the challenges levied against these claims. A. Ground 1: Claims 1, 2, 11, 13, and Are Anticipated by Kipke I Kipke I anticipates claims 1, 2, 11, 13, and of the 733 Patent. Kipke I discloses a dental impression tray that includes a self-contained light source for curing photocurable impression material. FIG. 1 of Kipke (Ex. 1003, Abstract.) The tray 10 includes a body 12 and a... battery pack 14 that is detachably connected to the body 12, as illustrated in Figure 1 (reproduced above). (Ex. 1003, 4:16-17.) 18

25 Kipke I teaches that a number of solid state light emitters 18 are mounted in an array that, in the embodiment shown, comprises three rows. (Ex. 1003, 4:30-32.) Light emitting diode assemblies... are typically... packaged with a relatively bulky focusing lens and a pair of wire leads.... [T]he emitters 18 lack such lenses and leads and include only the relatively small semiconductor chips so that the overall size of the tray 10 is relatively compact and the light is emitted in many directions. (Ex. 1003, 5:9-19.) The light emitting diodes... [emit] light within a desired, preferably narrow, band of wavelengths that match the wavelength band of light that is absorbed by the photoinitiator or photocatalyst. (Ex. 1003, 4:61-65.) Figure 4 (at right) is described as follows: [e]ach emitter 18 is bonded... to a conductive bus FIG. 4 of Kipke The bottom of each emitter 18 has a n-type terminal in electrical contact with the bus 19. Each emitter also has a top, p-type terminal that is electrically coupled by a small wire bond 20 to a second conductive bus Three pairs of buses 19, 21 are provided for the tray 10 illustrated in FIGS. 1-3, one pair for each of the three rows of emitters 18. Each pair of buses 19, 21 is mounted on a respective ceramic substrate 22 that is, in turn, adhesively bonded to one of the sidewalls or to the bottom of the channel 16. The three substrates 22 extend in three 19

26 generally parallel arcs along substantially the entire length of the curved channel 16. (Ex. 1003, 5:21-36, emphasis added.) Thus, one of the three rows, or arrays, of emitters 18 is mounted to a substrate 22 that is bonded to the bottom of the channel 16. These are referred to herein as the bottom row of emitters 18 and the bottom substrate 22, respectively. The positions of Bottom Substrate Bottom Row of Emitters FIG. 2 of Kipke I (in part, annotated) these features are identified in the annotated version of Figure 3 (above), although the outer edges of the bottom substrate are not delineated. Kipke I also discloses that [t]he emitters 18, the buses 19, 21 and the wire bonds 20 are covered with an electrically non-conductive transparent or translucent protective polymeric coating 24 that has a smooth upper surface for contact with the dental impression material. Suitable materials for the coating 24 include clear epoxies. (Ex. 1003, 5:36-43.) Kipke I further discloses that the upwardly facing surface of the body 12 adjacent the bottom of the channel 16 is covered with a reflective material (not shown) to facilitate distribution of light into the impression material.... The reflective material may be affixed to the body 12 below the substrates [and] is preferably covered by the protective coating 24. (Ex. 1003, 5:64-6:5, 20

27 emphases added.) Thus, the reflective, upwardly facing surface of the body 12, as depicted in Figure 2 (above) is positioned around at least the bottom row of emitters 18 such that it redirects light emitted from these emitters 18. The reflective surface is likewise positioned around the protective coating 24 to redirect light that it receives from the protective coating 24. For example, as can be appreciated from Figure 2 (above) some of the light emitted from the bottom row of emitters 18 can pass directly through a bottom surface of the protective coating to impinge on the reflective surface and be redirected thereby. (See Mills Declaration, Ex. 1014, pp ; Shealy Declaration, Ex. 1014, pp ) Therefore, in view of the claim construction set out in IV.B.3.b, above, the reflective surface of the body 12 is coupled to surround the emitters 18 (as recited in claims 1-18) and the protective coating 24 (as additionally recited in claims 13-15). In view of the foregoing teachings, Kipke I anticipates each of claims 1, 2, 11, 13, and A synopsis of these teachings is provided in the following claim chart to confirm that Kipke I teaches every element of claims 1, 2, 11, and 13. An analysis of claims follows the claim chart. Note that claim element 13[e] (as identified in the claim chart) and similar recitations in claims 1, 16, and 18 are discussed in the preceding paragraph. In the following analysis, italics are used to identify language from the claims of the 733 Patent. 21

28 Claim Element of 733 Patent Illustrative Teachings of Kipke I 1[a]. An instrument for curing lightcurable compounds which are a self-contained light source for curing A dental impression tray... includes curable in the mouth of a patient, the photocurable impression material. instrument comprising: (Ex. 1003, Abstract.) 1[b]. a housing; The body 12 and battery pack 14, collectively. (Ex. 1003, 4:14-18; FIG. 1 (reproduced above)). 1[c]. a plurality of solid state, lightemitting elements, the elements comprising semiconductor junctions and being mounted on a substrate supported by the housing to form a collective array on said substrate, 1[d]. the array of elements operable for collectively emitting light having wavelengths within a narrow band of wavelengths; 1[e]. a generally clear layer simultaneously covering all of the plurality of light-emitting elements for protecting the array of semiconductor junctions; 1[f]. an optically reflective element coupled to surround the plurality of light-emitting elements 1[g]. to capture the collective light from the array of light-emitting elements and direct it forwardly away from the collective array and ultimately to a compound for curing. 2. The instrument of claim 1 wherein said solid state elements are light emitting dies formed of a semiconductor material. The bottom row of emitters 18 mounted on the bottom substrate 22. (Ex. 1003, 5:15-46.) The light emitting diodes... [emit] light within a... narrow[] band of wavelengths. (Ex. 1003, 4:61-65.) The emitters are covered with an electrically non-conductive transparent or translucent protective polymeric coating 24. (Ex. 1003, 5:36-40.) The upwardly facing surface of the body 12 is covered with a reflective material and is coupled to surround the bottom row of emitters 18. (Ex. 1003, 5:29-6:5.) The purpose of the reflective material is to facilitate distribution of light into the impression material. (Ex. 1003, 5:66-67.) The light emitting diodes are p-n junction heterostructures made from semiconductor materials. (Ex. 1004, 4:61-62.) [T]he emitters 18 [preferably] lack... lenses and leads 22

29 Claim Element of 733 Patent 11. The instrument of claim 1 further comprising a portable power supply positioned within said housing for portable operation of the instrument. 13[a]. An instrument for curing light-curable dental compounds, the instrument comprising: 13[b]. a light-emitting element having a plurality of generally bare semiconductor junctions positioned together to form multiple light emitting surfaces on a substrate and 13[c]. operable for collectively emitting light having wavelengths within a narrow band of wavelengths suitable for curing dental compounds; 13[d]. a generally clear protective layer simultaneously covering the plurality of semiconductor junctions for protecting the junctions, the light generated by the light-emitting element passing through the protective layer; 13[e]. an optically reflective element coupled to surround the lightemitting element and protective layer and 13[f]. operable to capture the light generated by the light-emitting element and direct it generally forwardly. Illustrative Teachings of Kipke I and include only the relatively small semiconductor chips. (Ex. 1003, 5:16-17.) [T]he battery pack 14 includes one or more batteries that provide sufficient power to operate the emitters 18. (Ex. 1003, 6:18-20.) A dental impression tray... includes a self-contained light source for curing photocurable impression material. (Ex. 1003, Abstract.) The bottom row of emitters 18 mounted on the bottom substrate 22. (Ex. 1003, 5:15-46.) The light emitting diodes... [emit] light within a... narrow[] band of wavelengths that match the wavelength band of light that is absorbed by the photoinitiator or photocatalyst. (Ex. 1003, 4:61-65.) The emitters are covered with an electrically non-conductive transparent or translucent protective polymeric coating 24 that has a smooth upper surface for contact with the dental impression material. (Ex. 1003, 5:36-43.) See discussion of this claim limitation that precedes this claim chart. The purpose of the reflective material is to facilitate distribution of light into the impression material. (Ex. 1003, 5:66-67.) 23

30 Claim 16: Claim 16 recites [a]n instrument for curing light-curable dental compounds. Kipke I unambiguously teaches such an instrument. (See element 1[a] in preceding claim chart.) Claim 16 further recites that the instrument comprises a first and a second plurality of light-emitting elements, each of which comprises generally bare semiconductor junctions forming a collective array operable for collectively emitting light having within a narrow band of wavelengths suitable for curing a dental compound. These claim elements are clearly satisfied by Kipke I, such as by focusing on only the bottom row of emitters 18. For example, with reference to Figure 1 of Kipke I (reproduced and annotated below), the first plurality of light-emitting elements First Plurality of LEDs can be an arbitrary set of the emitters 18 (e.g., four emitters 18 at the right side of Second Plurality of LEDs the bottom row), and the second plurality FIG. 1 of Kipke I (annotated) of light-emitting elements can be another arbitrary set of the emitters 18 (e.g., four emitters 18 at the left side of the bottom row). Any other grouping of first and second pluralities of emitters would satisfy this limitation. Kipke I s emitters 18 unambiguously satisfy the other requirements of the light-emitting elements recited in claim 16 (see, e.g., elements 13[b] and 13 [c] in preceding claim chart). 24

31 Claim 16 further recites the second elements... operating separately from the first plurality of light-emitting elements. Kipke I teaches the use of small solid state light detectors (not shown) that are embedded in the coating [and] monitor light flux within the channel 16. (Ex. 1003, 7:3-6.) The detectors are connected to a microcontroller that turns the emitters 18 on or off as needed in various regions of the channel 16, or alternatively, varies the current level of various emitters 18 to obtain a desired light flux. (Ex. 1003, 7:8-10, emphases added.) Kipke I further teaches that [t]he detectors are used to alter or interrupt the current to some or all of the emitters 18. (Ex. 1003, 7:15-16, emphases added.) Therefore, Kipke I teaches one plurality the emitters 18 operating separately from a second plurality of the emitters 18. Claim 16 further recites a generally clear protective layer covering the semiconductor junctions of at least one of the pluralities of light-emitting elements for protecting the junctions, light generated by the plurality of lightemitting elements passing through the protective layer and an optically reflective element coupled to surround at least one of the pluralities of lightemitting elements and operable to capture the light generated by the plurality of light-emitting elements and direct it generally forwardly. For the reasons already presented above, these limitations are unambiguously satisfied by the 25

32 protective coating 24 and the reflective material of Kipke I, respectively. (See, e.g., element 13[d] and elements 1[f] and 1[g] in preceding claim chart.) Claim 17: Claim 17 recites: The instrument of claim 16 further comprising a generally clear protective layer covering the semiconductor junctions of both pluralities of light-emitting elements for protecting the junctions, light generated by the plurality of light-emitting elements passing through the protective layer. To the extent the limitations for a generally clear protective layer recited in claim 17 are interpreted to merely modify the generally clear protective layer that was previously recited in claim 16, rather than being interpreted to require a second generally clear protective layer, Kipke I anticipates claim 17. With reference to the annotated version of Kipke s Figure 1 presented above, the protective coating 24 covers all of the emitters 18 shown in the drawing, including both the first and second arbitrarily selected pluralities of light emitters 18. (See Ex. 1003, 5:36-43.) Claim 18: Claim 18 recites: The instrument of claim 16 further comprising an optically reflective element coupled to surround both pluralities of light-emitting elements and operable to capture the light generated by the pluralities of light-emitting elements and direct it generally forwardly. To the extent the limitations for an optically reflective element recited in claim 18 are interpreted to merely modify the optically reflective element that was previously 26

33 recited in claim 16, rather than being interpreted to require a second optically reflective element, Kipke I anticipates claim 18. With reference to the annotated version of Kipke s Figure 1 presented above, the reflective material is positioned beneath all of the emitters 18 shown in the drawing, including both the first and second arbitrarily selected pluralities of light emitters 18. (See Ex. 1003, 5:64-6:5, indicating the reflective material is below all three substrates upon which the emitters are mounted.) Therefore, the reflective material is coupled to surround the first and second pluralities of light emitters 18, as discussed in the two paragraphs that precede the claim chart. B. Ground 2: Claims 1-15 Are Obvious over Doube in View of Berger One of ordinary skill in the art during the relevant period would have found claims 1-15 of the 733 Patent obvious in view of the teachings of Doube and Berger. Although Doube is of record in the 733 Patent, the examiner did not cite to it in any office action; moreover, Berger is a German reference for which the applicant provided no English-language translation. (See Ex. 1020, pp. 56, 70-73, ) 27

34 1. Doube s Devices Doube discloses an apparatus and method for polymerising dental photopolymerisable compositions. (Ex. 1004, p. 1, title.) Doube s apparatus includes an array of blue LEDs 240, a FIG. 2 of Doube condenser 230, and a light conduit 22, such as an optical wave-guide that consists of a bundle of optical fibers, as illustrated in Figure 2 (reproduced above). (Ex. 1004, p. 8, ll , p. 11, ll. 5-15, FIG. 2.) Light emitted by LEDs 240 is collected by condenser 230 and is concentrated therein and conveyed to proximal end 221 of light conduit 220 whereby it is conveyed to distal end 222 of light conduit 220 and illuminates the dental composition in the tooth. (Ex. 1004, p. 11, ll ) Doube teaches alternatives to the design shown in Figure 2 (above), including a condenser 410 formed of a hollow shell having an inner optically reflective surface that surrounds the LEDs 440, such as shown in Figure 4. (Ex. 1004, p. 12, ll ; see also p. 6, l p. 6, l. 6.) Moreover, Doube explicitly teaches that the heatsink depicted in Figure 3, which includes both a 28

35 first heatsink 350 and a second finned heatsink 355, can be used with the device depicted in Figure 4. (Ex. 1004, p. 12, ll. 6-9, ) In particular, the heatsink 460 (comprised of the heatsink 350 and the finned heatsink 355) is attached to a circuit board 430 to which the LEDs 440 of Figure 4 are attached. (Ex. 1004, p. 12, ll ) An object of Doube s device is to overcome disadvantages associated with previous devices that used tungsten-halide lamps. (Ex. 1004, pp. 3-4.) These disadvantages include undesirable heating, low efficiency due to emissions over a broad spectral range, and a requirement for using a mainoperated power supply. (Ex. 1004, p. 3, l. 13 p. 4, l. 7, p. 13, ll ) 2. It Would Have Been Obvious to Modify Doube s Devices with Berger s Light Source Berger also discloses [a] radiation device for polymerization of lightcuring resins... in the dental field, and thus is within the same field of endeavor as Doube. (Ex. 1005, p. 1, Abstract.) Berger s device uses a light source that includes a plurality of LED chips mounted on a substrate and covered by a disc, e.g., made of glass or a sapphire plate. (Ex. 1005, p. 2, 1:59-60.) Berger s teachings are very similar to those of Doube and overlap in many respects. For example, Berger teaches that, although none of its drawings depict the use of a light guide, it can be desirable to use a plurality of LEDs... 29

36 directly focused into a fiber optic bundle, such as that used in Doube. (Ex. 1005, p. 2, 1:51-52.) One of ordinary skill in the art thus would have considered the teachings of Doube and Berger collectively and would have found it obvious to exchange any interchangeable parts among the devices disclosed in known manners to achieve predictable results. Moreover, Berger s objectives are nearly identical to those of Doube. Like Doube, Berger seeks to overcome disadvantages from the use of halogen lamps for curing dental materials, including undesirable heating, low efficiency due to emissions over a broad spectral range, and the inability to produce manageable battery-operated light radiation devices having sufficient light output. (Ex. 1005, p. 2, 1:6-18.) One skilled in the art thus would have naturally looked to Berger s teachings to improve Doube s devices. Among the improvements that one of ordinary skill in the art would have recognized are the more compact arrangement of Doube s devices and, relatedly, the incorporation of the battery power source into the housing of the device, which Doube suggested would be a desirable feature. (Compare Ex. 1004, p. 11, ll , p. 13, ll , FIG. 2 with Ex. 1005, p. 2, 1:31-36, p. 3, 1:2-10, FIG. 6.) For at least the foregoing reasons, one skilled in the art would have found it obvious to substitute Berger s LED array (e.g., the array of FIG. 2) for Doube s LED array (e.g., the array of FIG. 4). One skilled in the art would have 30

37 recognized that such a substitution would result in a more compact device and could include a battery power source within the housing, thus improving portability and ease of use. (See, e.g., Ex. 1004, p. 13, ll , describing the desirability of such arrangements.) An example FIGS. 3 and 4 of Doube, combined in manner explicitly taught in Doube, modified to incorporate the LED array of FIG. 2 of Berger of what the replacement of Doube s array of LEDs with one of Berger s arrays of LED chips could look like is provided at the right. The foregoing assertions regarding obviousness are confirmed in the Mills Declaration and the Shealy Declaration. (Ex. 1014, pp ; Ex. 1015, pp ) 3. Every Element of Claims 1-15 Is Present in the Combined Teachings of Doube and Berger A modification of Doube s device with Berger s LED array (such as that depicted above) would satisfy every element of claims 1-15 of the 733 Patent, as detailed below. The following claim chart illustrates how Doube and Berger render obvious each of claims 1-6 and With respect to claim element 13[e] (as identified in the claim chart), in the modification of Doube s device that includes Berger s array (depicted above), the condenser shell 410 is coupled 31

38 to surround both the array of LED chips and the transparent protective layer that covers the LED chips. Claims 7-10 are discussed after the claim chart. Claim/Element of 733 Patent 1[a]. An instrument for curing light-curable compounds which are curable in the mouth of a patient, the instrument comprising: 1[b]. a housing; 1[c]. a plurality of solid state, light-emitting elements, the elements comprising semiconductor junctions and being mounted on a substrate supported by the housing to form a collective array on said substrate, 1[d]. the array of elements operable for collectively emitting light having wavelengths within a narrow band of wavelengths; 1[e]. a generally clear layer simultaneously covering all of the plurality of light-emitting elements for protecting the array of semiconductor junctions; 1[f]. an optically reflective element coupled to surround the plurality of light-emitting elements 1[g]. to capture the collective light from the array of light- Combinable Teachings of Doube and Berger Doube teaches: [A]pparatus capable of being used for irradiating a photopolymerisable dental composition with light. (Ex. 1004, p. 3, ll. 5-6.) Doube teaches: [A]pparatus 200 comprises body (Ex. 1004, p. 11, ll ) Berger teaches: As can be seen in Figure 1, a total of five rows of LED chips 2 are arranged on a substrate. (Ex. 1005, p. 2, 2:42-44.) The substrate is supported by the housing. (Ex. 1005, FIG. 6.) Berger teaches: LEDs... in the blue wavelength range of, e.g., 435, 450 or 470 nm appear to be especially well suited. (Ex. 1005, p. 2, 1:39-42.) Berger teaches: [A] plurality of light emitting chips was arranged as densely as possible on a substrate... [and] covered by a disc, e.g., made of glass or a sapphire plate. (Ex. 1005, p. 2, 1:57-60.) The LED chips 2 are arranged under a (common) glass body 5. (Ex. 1005, p. 2, 2:55-56.) Doube teaches: The condenser shell 410 is coupled to surround the plurality of lightemitting elements 440 depicted in Figure 4. (Ex. 1004, FIG. 4.) Doube teaches: Light emitted by LEDs 240 is collected by condenser 230 and is 32

39 Claim/Element of 733 Patent emitting elements and direct it forwardly away from the collective array and ultimately to a compound for curing. 2. The instrument of claim 1 wherein said solid state elements are light emitting dies formed of a semiconductor material. 3. The instrument of claim 1 further comprising a heat sink thermally coupled to the substrate for absorbing heat generated by the array of elements. 4. The instrument of claim 1 further comprising a thermally conductive element which is thermally coupled to the substrate for conductively transferring heat generated by the array of elements away from the substrate. 5. The instrument of claim 1 further comprising a heat exchanger which is thermally coupled to the substrate for dissipating heat generated by the array of elements. 6. The instrument of claim 1 further comprising a first heat sink element thermally coupled to the substrate for absorbing heat generated by the array of elements, and a heat exchange element Combinable Teachings of Doube and Berger concentrated therein and conveyed to proximal end 221 of light conduit 220 whereby it is conveyed to distal end 222 of light conduit 220 and illuminates the dental composition in the tooth. (Ex. 1004, p. 11, ll ) Berger teaches: The LED chips 2 consist of silicon wafers with an edge dimension of about 1 mm. (Ex. 1005, p. 2, ll ) Doube teaches: A conventional finned heatsink 355 is embedded on the face of epoxy resin heatsink 350 remote from circuit board 345 in order to improve the dissipation of heat from assembly 300. (Ex. 1004, p. 12, ll. 6-8, FIG. 3.) Doube teaches: A conventional finned heatsink 355 is embedded on the face of epoxy resin heatsink 350 remote from circuit board 345 in order to improve the dissipation of heat from assembly 300. (Ex. 1004, p. 12, ll. 6-8, FIG. 3.) Doube teaches: A conventional finned heatsink 355 is embedded on the face of epoxy resin heatsink 350 remote from circuit board 345 in order to improve the dissipation of heat from assembly 300. (Ex. 1004, p. 12, ll. 6-8, FIG. 3.) See also Section IV.B.3.d. Doube teaches: A conventional finned heatsink 355 is embedded on the face of epoxy resin heatsink 350 remote from circuit board 345 in order to improve the dissipation of heat from assembly 300. (Ex. 1004, p. 12, ll. 6-8, FIG. 3.) See also Section IV.B.3.d. 33

40 Claim/Element of 733 Patent Combinable Teachings of Doube and Berger thermally coupled to the heat sink for conductively transferring heat generated by the array of elements. 7, 8, 9, 10. Discussion follows this claim chart. 11. The instrument of claim 1 Berger teaches: Figure 5 shows a radiation further comprising a portable device... [that] comprises a housing 7 with a power supply positioned battery compartment 8 and a light source 1... within said housing for connected to the battery compartment 8. (Ex. portable operation of the 1004, p. 3, 1:3-7, FIG. 5.) instrument. See also Figure 6 (Ex. 1004, FIG. 6.) 12. The instrument of claim 1 wherein said array of elements has a density of elements on the substrate operable for collectively emitting a power density of light in the range of 200 to 1400 mw/cm 2. 13[a]. An instrument for curing light-curable dental compounds, the instrument comprising: 13[b]. a light-emitting element having a plurality of generally bare semiconductor junctions positioned together to form multiple light emitting surfaces on a substrate and 13[c]. operable for collectively emitting light having wavelengths within a narrow band of wavelengths suitable for curing dental compounds; Doube teaches: Known resins or composites for dental use contain a photoinitiator which triggers polymerisation when subjected to light with an intensity of mW cm -2. (Ex. 1004, p. 3, ll ) Berger teaches: The invention relates essentially to a hand-guided radiation device for hardening light-curing resins... in the dental field. (Ex. 1005, p. 2, 1:3-6.) Doube teaches: [A]pparatus capable of being used for irradiating a photopolymerisable dental composition with light. (Ex. 1004, p. 3, ll. 5-6.) Berger teaches: As can be seen in Figure 1, a total of five rows of LED chips 2 are arranged on a substrate. (Ex. 1005, p. 2, 2:42-44.) The most advantageous arrangement proved to be when a plurality of light emitting chips was arranged as densely as possible on a substrate. (Ex. 1005, p. 2, 1:56-58.) Berger teaches: LEDs... in the blue wavelength range of, e.g., 435, 450 or 470 nm appear to be especially well suited. (Ex. 1005, p. 2, 1:39-42.) 34

41 Claim/Element of 733 Patent 13[d]. a generally clear protective layer simultaneously covering the plurality of semiconductor junctions for protecting the junctions, the light generated by the light-emitting element passing through the protective layer; 13[e]. an optically reflective element coupled to surround the light-emitting element and protective layer and 13[f]. operable to capture the light generated by the light-emitting element and direct it generally forwardly. 14. The instrument of claim 13 further comprising a light transmitting device being operably coupled to the lightemitting element for transmitting the light emitted by the element toward a curing site. 15. The instrument of claim 13 further comprising a plurality of heat dissipating elements mounted behind the substrate holding the semiconductor junction for conductively transferring Combinable Teachings of Doube and Berger Berger teaches: [A] plurality of light emitting chips was arranged as densely as possible on a substrate... [and] covered by a disc, e.g., made of glass or a sapphire plate. (Ex. 1005, p. 2, 1:57-60.) The LED chips 2 are arranged under a (common) glass body 5. (Ex. 1005, p. 2, 2:55-56.) [T]he LEDs are covered with a disk that is transparent to the emitted light. (Ex. 1005, p. 3, 2:5-7.) Doube teaches: The condenser shell 410 is coupled to surround the plurality of lightemitting elements 440 depicted in Figure 4. (Ex. 1004, FIG. 4.) See also discussion of this claim element that precedes this claim chart. Doube teaches: Light emitted by LEDs 240 is collected by condenser 230 and is concentrated therein and conveyed to proximal end 221 of light conduit 220 whereby it is conveyed to distal end 222 of light conduit 220 and illuminates the dental composition in the tooth. (Ex. 1004, p. 11, ll ) Doube teaches: Light emitted by LEDs 240 is collected by condenser 230 and is concentrated therein and conveyed to proximal end 221 of light conduit 220 whereby it is conveyed to distal end 222 of light conduit 220 and illuminates the dental composition in the tooth. (Ex. 1004, p. 11, ll ) Doube teaches: A conventional finned heatsink 355 is embedded on the face of epoxy resin heatsink 350 remote from circuit board 345 in order to improve the dissipation of heat from assembly 300. (Ex. 1004, p. 12, ll. 6-8, FIG. 3.) 35

42 Claim/Element of 733 Patent heat generated by the junction. Combinable Teachings of Doube and Berger Claim 7: Claim 7 recites: The instrument of claim 1 wherein said housing comprises a barrel portion having a proximal end spaced from a distal end of the barrel portion, the distal end being configured to be placed in the mouth of a patient, the array of light-emitting elements being positioned proximate to said proximal end, a light transmitting device being operably coupled to said array for transmitting the light beam from the array to the housing distal end. The barrel portion of the housing, as recited in this claim, corresponds to Doube s light conduit 220. Therefore, Doube teaches nearly every element of claim 7, as discussed prior to the claim chart, as identified in the claim chart with respect to claim elements 1[g] and 13[f], and as depicted in Figure 2 of Doube. However, Doube does not explicitly teach that the array of light-emitting elements is positioned proximate to the proximal end of the light conduit 220. Berger, however, teaches that [g]ood results were... achieved when the rays of the LEDs were coupled into a bundle of optical fibers. (Ex. 1005, p. 2, 1:48-49.) Therefore, one of ordinary skill in the art would have found it obvious to use Doube s condenser shell 410 to couple the light from Berger s LED chip array into the light conduit 220. Due to the much smaller size of Berger s LED 36

43 chip array (compare Ex. 1004, FIG. 2 with Ex. 1005, FIG. 6), the length of the condenser shell 410 would decrease significantly, which would thereby move the LED chip array to a position proximate to the proximal end of the light conduit 220. One of ordinary skill in the art would have been motivated to make this modification for all of the reasons discussed prior to the claim chart. For example, such a modification would have opened up space within the housing for receiving batteries in a manner such as disclosed in Berger, and which Doube suggested would be desirable (as previously discussed). Furthermore, Doube explicitly teaches modification of the condenser shell 410 to accommodate a differently sized (i.e., smaller) LED chip array, and further, indicates that any such modification is well within the abilities of one of ordinary skill in the art: Generally, the profile of the concentrator is optimised to suit collection of light at one of its ends from an extended, divergent source (such as an array of LEDs) and is tapered so as to deliver the light at an opposite end from an aperture whose diameter matches the intended requirement (for example, the illumination of a single tooth). The precise shape of the condenser means depends on the nature of the element (for example diffractive, reflective, refractive) employed, the material of its construction and the size and shape of the light source. Given the teaching herein, however, the design and 37

44 fabrication of a suitable condenser for any desired apparatus in accordance with the present invention is well within the normal capabilities of a person of ordinary skill in the art. (Ex. 1004, p. 7, ll ) Therefore, in view of the combined teachings of Doube and Berger, it would have been obvious to position Berger s LED chip array proximate to the proximal end of Doube s light conduit, thereby rendering claim 7 obvious. The foregoing conclusions regarding the obviousness of combining Doube and Berger s teachings in the manner discussed are confirmed by the Mills Declaration and the Shealy Declaration. (See Ex. 1014, pp ; Ex. 1015, pp ) Claim 8: Claim 8 requires that the light transmitting device comprises a plurality of fiber optic elements operably coupled together for directing said beam. Doube teaches [t]he light conduit... may be an optical wave-guide generally known in the art and usually consists of a rigid or flexible bundle of optical fibres, thus satisfying every additional limitation recited in claim 8. (Ex. 1004, p. 8, ll ) Claim 9: Claim 9 requires that the light transmitting device has an acceptance angle, said optical focusing device operable for generating a beam of light which does not diverge significantly from said acceptance angle. Doube teaches that [t]ypically from 50% to 99.9%, more typically 60% to 90%, 38

45 still more typically 70% to 80% of the light emitted by the light source is delivered by the condenser means to the proximal end of the light conduit at such an angle that it enters the acceptance zone of the light conduit, thus satisfying every additional limitation in claim 9. (Ex. 1004, p. 6, ll ) Claim 10: Claim 10 requires that said array of light-emitting elements emits light in the range of and said optical focusing device is operable for collimating the light into a beam which does not diverge significantly from said acceptance angle. The latter part of this claim is a feature already discussed above with respect to claim 9. With respect to the requirement that the light-emitting elements emit light in the range of 0-180, Berger teaches that the LED chips are mounted on a planar substrate. (Ex. 1005, p. 2, 2:42-61, p. 3, 1:1-2, 11-16; FIGS. 1-4.) Therefore, the LEDs are constrained to emit light in the range of 0-180, thus satisfying every limitation of claim 10. C. Ground 3: Claims Are Obvious over Doube in View of Berger and Further in View of Breuer Claim 16: Claim 16 resembles claims 1 and 13 in nearly every respect, and each portion of claim 16 that is analogous to a limitation of claim 1 and/or claim 13 is rendered obvious by Doube and Berger for the same reasons discussed above. However, claim 16 recites the following limitation that has no analogue in claims 1 and 13: a second plurality of light-emitting elements, the 39

46 second elements... operating separately from the first plurality of lightemitting elements. Doube discloses that [t]he array of LEDs can be connected electrically... in parallel connections of one or more series of strings of one or more LEDs (for example, in 12 strings of nine LEDs to make an array of 108 LEDs or 10 strings of 10 or 15 strings of 8 or 12 strings of 10 or 8 strings of 12, etc [sic]). (Ex. 1004, p. 6, ll ) The broadest reasonable interpretation of the claim term operating separately is broad enough to encompass Doube s parallel strings of LEDs, given that current flows separately through each string during operation of the device. That is, one of the strings is a first plurality of light-emitting elements, and another string is a second plurality of light-emitting elements that operates separately from the first plurality as separate current flows through each string, as recited in claim 16. However, to the extent the operating separately limitation of claim 16 is interpreted to require that the second plurality of light-emitting elements (e.g., each of Doube s strings of LEDs) operates independently of the first plurality so as to be energized and de-energized independently of the first plurality, then claim 16 would have been obvious to one of ordinary skill in the art in view of Doube, Berger, and Breuer. That is, it would have been obvious to combine Breuer s teachings with those of Doube and Berger because all three references are in the very same field of endeavor. 40

47 Moreover, Doube and Berger each discuss the benefits of operating their devices in a pulsed mode, rather than a continuous mode. (Ex. 1004, p. 10, ll. 1-23; Ex. 1005, p. 2, 1:60-62.) Indeed, Doube discusses pulsing at length. (Ex. 1004, p. 9, l. 35 p. 10, l. 23; p. 11, l , ) Breuer teaches that it is advantageous not only to pulse an LED array, but also to pulse each LED within the array individually and out of phase with the remaining LEDs: When several LEDs are bundled, it is advantageous to pulse each LED individually and out of phase with the others. The pulse frequency may be increased during operation so that stress build-up is avoided in the irradiated material. While the pulse frequency is being increased, or afterwards, the operating current of the LEDs can be increased to the maximum possible value. For the pulsed operation of the LEDs, it is possible to use the customary circuit arrangements which are well-known to the expert in the field. (Ex. 1006, p. 6, ll ) One of ordinary skill in the art would have understood that Doube s LED array, composed of strings of multiple LEDs, is a clear analogue to Breuer s LED array, composed of individual LEDs, and thus would have found it obvious to pulse each of Doube s strings of LEDs in an out-ofphase manner, as taught by Breuer. The skilled artisan would have found this modification of Doube s teachings desirable in view of all of the advantages that Breuer identified for the out-of-phase pulsing approach. Moreover, as noted by 41

48 Breuer, circuits for an out-of-phase pulsing arrangement were customary and well-known at the time. Modifying a device formed from the combination of Doube s and Berger s teachings, as previously discussed, to operate in the pulsed mode disclosed by Breuer would have resulted in a second plurality of light-emitting elements... operating separately from the first plurality of light-emitting elements, as recited in claim 16, and thus would have rendered claim 16 obvious. The foregoing conclusions regarding obviousness are confirmed by the Mills Declaration and the Shealy Declaration. (Ex. 1014, pp ; Ex. 1015, pp ) Claim 17: Claim 17 recites The instrument of claim 16 further comprising a generally clear protective layer covering the semiconductor junctions of both pluralities of light-emitting elements for protecting the junctions, light generated by the plurality of light-emitting elements passing through the protective layer. To the extent the limitations for a generally clear protective layer recited in claim 17 are interpreted to merely modify the generally clear protective layer that was previously recited in claim 16, rather than being interpreted to require a second generally clear protective layer, Doube, Berger, and Breuer render obvious claim 17. In particular, Berger s transparent plate covers all of the LEDs in Berger s LED array, which LEDs 42

49 comprise multiple strands of LEDs (per Doube) that are configured to pulse out of phase with each other (per Breuer). Claim 18: Claim 18 recites The instrument of claim 16 further comprising an optically reflective element coupled to surround both pluralities of light-emitting elements and operable to capture the light generated by the pluralities of light-emitting elements and direct it generally forwardly. To the extent the limitations for an optically reflective element recited in claim 18 are interpreted to merely modify the optically reflective element that was previously recited in claim 16, rather than being interpreted to require a second optically reflective element, Doube, Berger, and Bruer render obvious claim 18. In particular, Doube s condenser shell 410 is coupled to surround all of the LEDs in Berger s LED array, which LEDs comprise multiple strands of LEDs (per Doube) that are configured to pulse out of phase with each other (per Breuer). D. Ground 4: Claims 1-6, 11-13, and 16 Are Obvious over Kennedy II in View of Pimpl One of ordinary skill in the art during the relevant period would have found claims 1-6, 11-13, and 16 obvious in view of the disclosures of Kennedy II and Pimpl. This combination of references contains significant teachings overlooked by the examiner during prosecution of the 733 Patent. Although the examiner did consider Kennedy II relative to the Parent and the 43

50 Grandparent, he did not cite key elements of this reference in this application. Moreover, Pimpl is not even of record in the 733 Patent. 1. Kennedy II s Devices Kennedy II teaches a portable or handheld light-emitting device which has... application to non-thermal dental and industrial photocuring applications. (Ex. 1007, 1:11-14.) Kennedy II s device includes an array of semiconductor light emitting diodes 22 that are mounted on a front of a substrate 24 and a heat sink 26 attached to the back of the substrate 24, as shown in Figure 7. (Ex. 1007, 3:38-47.) The LEDs 22 are arranged on the substrate 24 in a planar array. The array can include LEDs 22 that emit blue light for dental applications, red light for medical applications, or a mix of red and blue LED s [sic] for both applications. (Ex. 1007, 3:40-44, 8:34-39.) Kennedy II further discloses that the output from the LED array 14 can also be directed at the source end by including a reflector 40 for each LED 22 mounted on the substrate 24 as shown in Figure 6. The reflector 40 confines the initially omnidirectional output from the LED 22 into a directed beam. (Ex. 1007, 4:43-47.) Kennedy II indicates that its device was an advancement over prior art light curing systems that utilize quartz halogen light sources and states that an improved device may desirably increase the intensity level... in order to 44

51 provide an [sic] light energy output which is optimum for the curing application. (Ex. 1007, 1:28-38, ) 2. It Would Have Been Obvious to Modify Kennedy II s Devices with Pimpl s Light Source Assemblies It would have been obvious for one of ordinary skill in the art to modify Kennedy II s teachings to include the light source assemblies taught by Pimpl for numerous reasons. To begin with, it would have been obvious to interchange the light source assemblies of Pimpl and Kennedy II in view of the significant structural similarities between such light source assemblies and the advantages described by Pimpl. Pimpl discloses embodiments of a spotlight device that uses as its light source multiple arrays of LEDs in various three-dimensional arrangements. (See, e.g., Ex. 1008, Abstract; p. 3, ll ; p. 4, ll ; FIG. 4; FIGS ) The arrays are situated to permit the LEDs to emit[] their light in at least two different directions. (Ex. 1008, p. 3, ll ) In this way, a significantly higher optical efficiency (lumens/watt), also referred to as luminous efficacy, can be achieved than in... conventional lighting devices. (Ex. 1008, p. 3, ll ) Pimpl states that its assemblies also have a long service life,... low temperature increase compared to the surrounding area, and simple packaging. (Ex. 1008, p. 3, ll ) 45

52 One embodiment of Pimpl s assembly is depicted in Figure 16 (reproduced below) includes a central ceramic block 40, which is a substrate to which multiple small arrays of individual LED chips are mounted, and further teaches a reflector 44 surrounding the ceramic block with the LEDs. (Ex. 1008, p. 7, ll ) In the cross-sectional view, the LED chips are identified as R (red), G (green), and B (blue). Pimpl further teaches that perforated plates 42 having round holes are mounted to the ceramic block 40, thus resulting in a series of depressions, with each set of three LED chips mounted at a bottom of one of the depressions. (Ex. 1008, p. 7, ll ) Pimpl states that [t]he depressions can be potted with a transparent plastic 47 to protect the LEDs and conductors present therein. (Ex. 1008, p. 7, ll ) Figure 16 of Pimpl (repositioned, annotated) In other embodiments that are identical to the embodiment depicted in Figure 16 in many respects, Pimpl discloses that the LEDs can have the same or different wavelengths, and that suitable colors for the LEDs are red and blue. (Ex. 1008, p. 2, ll ; p. 7, ll ) Thus, one of ordinary skill in the art 46

53 would have found it obvious to replace each of the red and green chips with blue LED chips, such that all of the chips in the figure above would be blue ( B ) chips. In addition to Pimpl s express motivation for altering the color the LEDs in this manner, this modification is nothing more than a substitution of known parts that yields predictable results. In view of the foregoing, one skilled in the art would recognize that Pimpl s light source assembly, which contains (1) an array of blue LEDs 3, or blue and red LEDs 3, that (2) are collectively encompassed by a reflector 31 and (3) are mounted to a ceramic substrate 40 could readily be exchanged with Kennedy II s light source assembly, which contains (1) an array of blue LEDs 22, or blue and red LEDs 22, that (2) are each encompassed by a reflector 40 and (3) are mounted to a ceramic substrate 24. Such a replacement of Pimpl s light source assembly for the corresponding portions of Kennedy II s device would have been obvious to one of ordinary skill in the art because it represents a simple substitution of one element, or set of elements, for another to obtain predictable results. KSR, 550 U.S. at 415. Moreover, Pimpl and Kennedy II include numerous motivations for combining their teachings that would have made it obvious to one of ordinary skill in the art to modify Kennedy II s devices with the light source assemblies of Pimpl, thus arriving at the invention recited in the claims of the 733 Patent. 47

54 For example, Pimpl teaches that embodiments of its spotlight devices can be used in battery-operated lights, such as flashlights. (Ex. 1008, p. 7, l. 3.) Kennedy II s device is a battery-operated light one that even resembles flashlights in many respects. (Ex. 1007, 3:21-26.) Thus, Pimpl specifically teaches that its LED spotlights can be used with devices such as Kennedy II s. Moreover, Pimpl teaches that embodiments of its LED assemblies improve on conventional light sources, such as filament lamps, and thus may be used in the place of, for example, a customary halogen spotlight. (See Ex. 1008, p. 2, l. 45; p. 4, ll. 4-5.) Likewise, a major goal of Kennedy II s devices was to overcome various problems associated with devices that used halogen lamps, as discussed above. Thus, a common purpose shared by Pimpl and Kennedy II would have motivated one of skill in the art to combine the teachings of these references. Furthermore, Pimpl teaches that embodiments of its light source assemblies, which include three-dimensional arrays of LEDs, have significant advantages over not only halogen lamps, but also planar arrays of LEDs. (Ex. 1008, p. 2, ll ; p. 3, ll. 1-2.) In fact, Pimpl indicates that its light source assemblies are superior to a specific planar LED configuration in the prior art that is nearly identical to that depicted in Figure 7 of Kennedy II. (Ex. 1008, p. 2, ll ) The prior art configuration is disclosed in German Unexamined 48

55 Patent Application No to Schöberl (Ex. 1021, Schöberl ), which was published in 1974 (more than a quarter century before the 733 Patent s filing date). Schöberl s light source configuration is reproduced below alongside Kennedy II s with like features identified: Lens LED Array Electrical Leads Substrate FIG. 1 of Schöberl (Published in 1974) Heat Sink FIG. 7 of Kennedy II Pimpl states that an object of its light source assembly was to generate light having a higher radiant power than that produced previously, such as by Schöberl s assembly. (Ex. 1008, p. 2, ll ; p. 3, ll. 1-2.) As discussed above, Kennedy II notes that an increase in light intensity, or light energy output, is desirable for its devices. Thus, in view of the close resemblance between Schöberl s and Kennedy II s light source assemblies, it would have been obvious to one of ordinary skill in the art to replace Kennedy II s assembly depicted in Figure 7 with any of those disclosed in Pimpl in order to achieve the same object of Pimpl s disclosure: a desirable increase in radiant power. The Mills Declaration and the Shealy Declaration confirm that one of ordinary skill in the art would have found it obvious to combine the teachings of 49