IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. ULTRADENT PRODUCTS, INC. Petitioner

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 6,692,251 PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,692,251 (CLAIMS AND 30-42) 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)... 2 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. a plurality of solid state, light-emitting die, the die each being or including a semiconductor junction... 6 b. reflective element coupled to surround an outer edge of either the substrate and the array or the array How the Construed Claims Are Unpatentable Supporting Evidence Relied Upon... 8 V. SUMMARY OF THE 251 Patent... 8 A. Disclosure of the 251 Patent... 9 B. Summary of Pertinent Portions of Prosecution History... 9 i

3 VI. 1. Summary of Parent Prosecution Applicant s Arguments Were Flawed Summary of 251 Patent Prosecution 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 25, 39, and 40 Are Anticipated by Kipke I B. Ground 2: Claims 25-28, 36, and Are Anticipated by Boutoussov C. Ground 3: Claims 25-28, 30-32, and 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 25-28, 30-32, and Is Present in the Combined Teachings of Kennedy II and Pimpl D. Ground 4: Claims Are Obvious over Kennedy II in View of Pimpl and Further in View of Phillips E. Ground 5: Claim 36 Is Obvious over Kennedy II in View of Pimpl and Further in View of Doiron F. Ground 6: Claim 37 Is Obvious over Kennedy II in View of Pimpl and Further in View of Doiron and Friedman II G. Ground 7: Claim 38 Is Obvious over Kennedy II in View of Pimpl and Further in View of Friedman II H. Ground 8: Claims 25-28, 30, and Are Obvious over Doube in View of Berger 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. 6,692,251 to Logan et al. ( 251 Patent ) U.S. Patent No. 5,487,662 to Kipke et al. ( Kipke I ) 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.K. Publication No. GB to Phillips U.S. Patent No. 5,689,866 to Doiron et al. U.S. Patent No. 5,371,826 to Friedman ( Friedman II ) 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 U.S. Patent No. 6,439,888 to Boutoussov et al. U.S. Patent No. 6,200,134 to Kovac et al. (the Parent ) Kerr Corporation s Brief in Support of Its Proposed Claim Constructions for Terms in the Asserted Kerr Patents Dentsply s Opening Claim Construction Brief 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. 09/009,205 (Which Issued as U.S. Patent No. 6,200,134) iii

5 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 Exhibit 1034 Exhibit 1035 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) 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) Canadian Patent Application No. 2,190,225 of Breuer et al. U.S. Patent No. 5,316,473 to Hare 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 U.S. Patent No. 4,935,665 to Murata 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. 6,331,111 to Cao U.S. Patent No. 5,702,250 to Kipke ( Kipke II ) U.S. Patent No. 5,290,169 to Friedman et al. ( Friedman I ) U.S. Patent No. 5,530,632 to Shikano et al. U.S. Patent No. 5,418,384 to Yamana et al. iv

6 Exhibit 1036 Exhibit 1037 Exhibit 1038 Exhibit 1039 U.S. Patent No. 6,159,005 to Herold et al. U.S. Patent No. 4,857,801 to Farrell U.S. Patent No. 5,639,158 to Sato U.S. Patent No. 2,218,678 to Hoffman v

7 Petitioner Ultradent Products, Inc., of South Jordan, Utah, ( Petitioner or Ultradent ) petitions for inter partes review ( IPR ) and cancellation of claims and (the IPR Claims ) of U.S. Patent No. 6,692,251 (Ex. 1001, the 251 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 styled (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.), as well as Inter Partes Review No. IPR , which was filed on October 10, 2014, and seeks the cancellation of claims 1, 2, 4-15, and of the 251 Patent. C. Lead and Back-up Counsel Under 37 C.F.R. 42.8(b)(3) Lead Counsel: Daniel C. Higgs, Reg. No. 55,265, dchiggs@stoel.com, Stoel Rives LLP, 201 South Main Street, Suite 1100, Salt Lake City, UT 84111, Tel.: (801) , Fax: (801) Back-up Counsel: Dorothy P. 1

8 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. 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 251 Patent is available for IPR and that Petitioner is not barred or estopped from 2

9 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 and of the 251 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 251 Patent is based. The effective filing date of the 251 Patent is the same as its actual filing date August 4, 2000 due to the presence of new matter in every claim. See Section V.C infra. Prior Art Under 35 U.S.C. 102(b): The following references each published more than one year prior to the effective filing date of the 251 Patent: U.S. Patent No. 5,487,662 to Kipke et al. (Ex. 1002, Kipke I ); U.S. Patent No. 5,634,711 to Kennedy et al. (Ex. 1003, Kennedy II ); German Publication No. DE to Pimpl (Ex. 1004, Pimpl ); U.K. Publication No. GB to Phillips (Ex. 1005, Phillips ); U.S. Patent No. 5,698,866 to 3

10 Doiron et al. (Ex. 1006, Doiron ); U.S. Patent No. 5,371,826 to Friedman (Ex. 1007, Friedman II ); International Publication No. WO 97/36552 to Doube et al. (Ex. 1008, Doube ); and European Publication No. EP to Berger et al. (Ex. 1009, Berger ). Prior Art Under 35 U.S.C. 102(e): U.S. Patent No. 6,439,888 to Boutoussov et al. (Ex. 1010; Boutoussov ) was filed on May 3, 1999, which is more than 15 months prior to the 251 Patent s effective filing date of August 4, 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 25, 39, and 40 are anticipated under 35 U.S.C. 102(b) by Kipke I. Ground 2: Claims 25-28, 36, are anticipated under 35 U.S.C. 102(e) by Boutoussov. Ground 3: Claims 25-28, 30-32, and are obvious under 35 U.S.C. 103(a) over Kennedy II in view of Pimpl. Ground 4: Claims are obvious under 35 U.S.C. 103(a) over Kennedy II in view of Pimpl and further in view of Phillips. 4

11 Ground 5: Claim 36 is obvious under 35 U.S.C. 103(a) over Kennedy II in view of Pimpl and further in view of Doiron. Ground 6: Claim 37 is obvious under 35 U.S.C. 103(a) over Kennedy II in view of Pimpl and further in view of Doiron and Friedman II. Ground 7: Claim 38 is obvious under 35 U.S.C. 103(a) over Kennedy II in view of Pimpl and further in view of Friedman II. Ground 8: Claims 25-28, 30, and are obvious under 35 U.S.C. 103(a) over Doube in view of Berger. 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 251 Patent. 1 1 Claim terms are interpreted under different standards in District Court proceedings. Accordingly, the claim constructions presented in this petition, or 5

12 a. a plurality of solid state, light-emitting die, the die each being or including a semiconductor junction The IPR Claims all include the limitation of a plurality of solid state, light-emitting die, with each die being one that includes a semiconductor junction (claims and 30-38) or with each die being a semiconductor junction (claims 39-42) (the Die Limitation ). The 251 Patent claims priority to and incorporates by reference U.S. Patent No. 6,200,134 to Kovac et al. (Ex. 1010, the Parent ), which uses the term dies synonymously with chips. (See Ex. 1011, 7:63.) Accordingly, the broadest reasonable interpretation of the Die 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 an outer edge of either the substrate and the array or the array The IPR Claims all include the limitation an optically reflective element 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. 6

13 coupled to surround an outer edge of either the substrate and the array of light emitting die (claims 25-28, 30-39, 41, and 42) or the array of light emitting die (claim 40) (the Coupled to Surround 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 outer edge of the substrate and from the die array (claims 25-28, 30-39, 41, and 42) or the outer edge of the array of light emitting die (claim 40). (Ex. 1012, 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. 1013, pp ) Strictly for purposes of this IPR, the Coupled to Surround 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 outer edge of the substrate and from the die array (claims 25-28, 30-39, 41, and 42) or from the outer edge of the array of light emitting die (claim 40). 2 2 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 7

14 4. How the Construed Claims Are Unpatentable An explanation of how the IPR Claims, claims and of the 251 Patent, are unpatentable under Grounds 1-8 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 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 251 Patent 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. 8

15 A. Disclosure of the 251 Patent The claims of the 251 Patent at issue here recite methods of and apparatus for curing light-curable compounds that utilize two components: (1) a plurality of solid state, light-emitting die either individually mounted on a substrate (claims 25-28, 30-39, 41 and 42) or mounted on a substrate without individual packaging (claim 40); and (2) a reflective element coupled to surround either an outer edge of the substrate and the array (claims 25-28, 30-39, 41 and 42) or an outer edge of the array (claim 40). (Ex. 1001, 17:3-18:63, p. 16.) Simply put, each of the IPR Claims recites little more than an array of LED dies mounted on a substrate and a reflective element coupled to surround an outer edge of the substrate and the array. B. Summary of Pertinent Portions of Prosecution History 1. Summary of Parent Prosecution During the prosecution of the Parent, the examiner rejected the original claims over Kennedy II (Ex. 1003). (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 9

16 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 unpackaged semiconductor junctions in an array for a dental curing light. (Ex. 1017, pp ) The examiner stated that 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 determined that 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.) 10

17 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. (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. 11

18 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 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. 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 12

19 type of rigid application of the TSM test that the examiner found persuasive. Thus, the examiner s assessment of patentability 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-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 ) Furthermore, the examiner failed to recognize that prior art specifically in the field of dental light curing devices was, in fact, replete with references that explicitly taught the use of multiple light-emitting dies individually mounted on a substrate. Certain of these references (Kipke I, Boutoussov, and Berger) are discussed at length in Section VI. The Mills Declaration and the Shealy Declaration discuss these and additional references to further demonstrate this point. (Ex. 1014, pp ; Ex. 1015, pp ) 13

20 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 further 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 effective filing date of the 251 Patent) and that he intended for the application for the Kennedy II patent to disclose such arrangements, and he additionally testifies that, as one of ordinary skill in the art, he understood that the application did disclose such arrangements. (Ex. 1016, pp ) 3. Summary of 251 Patent Prosecution During prosecution of the continuation-in-part (CIP) application that gave rise to the 251 Patent (Ex. 1019), nothing on the record indicates that the 14

21 examiner (the same examiner from the Parent) reassessed whether the prior art taught or rendered obvious the use of arrays of individually mounted lightemitting dies with dental curing devices. As issued, the thrust of the claims is essentially either a method or a dental curing light that utilizes such an array of LED chips and an optically reflective element coupled to surround the same. (Ex. 1001, 17:3-18:63, p. 16.) C. Effective Filing Date of the IPR Claims The IPR Claims are not entitled to the filing date of the parent case, as the recitation of an optically reflective element is present in each of these claims. (Ex. 1001, 17:3-18:63.) This feature is new matter that was added to the CIP application, as it finds absolutely no support in the parent case. For a claim in a later-filed application to be entitled to the benefit of the filing date of an earlierfiled 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 effective filing date of the claims of the 251 Patent is the same as this patent 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 15

22 The prior art references relied upon in this petition disclose each limitation recited in the IPR Claims. As detailed in this section, this petition 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. Indeed, each of the elements recited in the IPR Claims is a known prior art element that either was explicitly disclosed in the dental curing light arts or would have been obvious to use therein. In fact, certain of the IPR Claims are anticipated by the prior art, while all of the IPR Claims are merely a combination of prior art elements according to known methods to yield predictable results, and thus these claims are unpatentable. KSR, 550 U.S. at 416. A. Ground 1: Claims 25, 39, and 40 Are Anticipated by Kipke I Kipke I anticipates claims 25, 39, and 40 of the 251 Patent. Kipke I discloses a dental impression tray that includes a self-contained light source for curing photocurable impression material. FIG. 1 of Kipke 16

23 (Ex. 1002, Abstract.) The tray 10 includes a body 12 and a... battery pack 14 that is detachably connected to the body 12, as illustrated in FIG. 1 (reproduced above). (Ex. 1002, 4:16-17.) 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. 1002, 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. 1002, 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. 1002, 4:61-65.) Figure 4 (reproduced at right) is described as follows: [e]ach emitter 18 is bonded... to a conductive bus 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 FIG. 4 of Kipke I 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 17

24 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 generally parallel arcs along substantially the entire length of the curved channel 16. (Ex. 1002, 5:21-36.) 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, Bottom Substrate Bottom Row of Emitters FIG. 3 of Kipke I respectively. The positions of these features are identified in the annotated version of FIG. 3 (above), although the outer edges of the bottom substrate are not delineated. 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. 1002, 5:64-6:5.) Thus, the reflective, upwardly facing surface of the body 12 is coupled to surround an outer edge of at least the bottom substrate and the bottom row of emitters

25 In view of the foregoing teachings, Kipke I anticipates each of claims 25, 39, and 40. A synopsis of these teachings is provided in the following claim chart to confirm that Kipke I teaches every element of claims 25, 39, and 40: Claim Element of 251 Patent 25[a]. A method for curing lightcurable compounds, the method comprising: 25[b]. generating light having wavelengths within a narrow band of wavelengths 25[c]. using a plurality of solid state, light-emitting die which each includes a semiconductor junction individually mounted on a substrate to form an array, operable for emitting the light; 25[d]. capturing the light emitted by the die array with an optically reflective element coupled to surround an outer edge of the substrate and the array of light emitting die 25[e]. for capturing the light emitted collectively from the die array and directing it toward a compound for curing the compound. 39[a]. An instrument for curing light-curable compounds which are curable in the mouth of a patient, the instrument comprising: 39[b]. a plurality of solid state, light-emitting die, the die each being a semiconductor junction individually mounted on a substrate Illustrative Teachings of Kipke I A dental impression tray... includes a self-contained light source for curing photocurable impression material. (Ex. 1002, Abstract.) The light emitting diodes... [emit] light within a... narrow... band of wavelengths. (Ex. 1002, 4:61-65.) The bottom row of emitters 18 mounted on the bottom substrate 22 are used. (Ex. 1002, 5:15-46.) The upwardly facing surface of the body 12 is covered with a reflective material and is coupled to surround an outer edge of the bottom substrate 22 and the bottom row of emitters 18. (Ex. 1002, 5:29-6:5.) The purpose of the reflective material is to facilitate distribution of light into the impression material. (Ex. 1002, 5:66-67.) A dental impression tray... includes a self-contained light source for curing photocurable impression material. (Ex. 1002, Abstract.) The bottom row of emitters 18 mounted on the bottom substrate 22. (Ex. 1002, 5:15-46.) [T]he emitters 18 lack such lenses and 19

26 Claim Element of 251 Patent and free of an integral reflector to form an array 39[c]. operable for emitting light having wavelengths within a narrow band of wavelengths; 39[d]. a non-fiber reflective element coupled to surround an outer edge of the substrate and the array of light emitting die 39[e]. for capturing the light emitted collectively from the die array and directing it toward a compound for curing the compound. 40[a]. An instrument for curing light-curable compounds which are curable in the mouth of a patient, the instrument comprising: 40[b]. a plurality of solid state, light-emitting die forming an array, each of the die being a semiconductor junction mounted on a substrate without individual packaging, 40[c]. the array of die operable for collectively emitting light having wavelengths within a narrow band of wavelengths; 40[d]. an optically reflective element coupled to surround an outer edge of the array of light emitting die Illustrative Teachings of Kipke I leads and include only the relatively small semiconductor chips. (Ex. 1002, 5:16-17.) The light emitting diodes... [emit] light within a... narrow... band of wavelengths. (Ex. 1002, 4:61-65.) The upwardly facing surface of the body 12 is covered with a reflective material and is coupled to surround an outer edge of the bottom substrate 22 and the bottom row of emitters 18. (Ex. 1002, 5:29-6:5.) The purpose of the reflective material is to facilitate distribution of light into the impression material. (Ex. 1002, 5:66-67.) A dental impression tray... includes a self-contained light source for curing photocurable impression material. (Ex. 1002, Abstract.) The bottom row of emitters 18 mounted on the bottom substrate 22. (Ex. 1002, 5:15-46.) [T]he emitters 18 lack such lenses and leads and include only the relatively small semiconductor chips. (Ex. 1002, 5:16-17.) The light emitting diodes... [emit] light within a desired, preferably narrow, band of wavelengths. (Ex. 1002, 4:61-65.) The upwardly facing surface of the body 12 is covered with a reflective material and is coupled to surround an outer edge of the bottom substrate 22 and the bottom row of emitters 18. (Ex. 1002, 5:29-6:5.) 20

27 Claim Element of 251 Patent 40[e]. for capturing the light emitted collectively from the array of die and directing it toward a compound for curing the compound. Illustrative Teachings of Kipke I The purpose of the reflective material is to facilitate distribution of light into the impression material. (Ex. 1002, 5:66-67.) B. Ground 2: Claims 25-28, 36, and Are Anticipated by Boutoussov Boutoussov anticipates claims 25-28, 36, and of the 251 Patent. Boutoussov is directed to an optical device for curing dental composites. (Ex. 1010, Abstract.) The device includes a barrel-shaped housing having a proximal end and a distal end. (Ex. 1010, 4:8-17.) Within the housing is an array of LED dies individually mounted on a substrate, as well as a reflector that surrounds the array and substrate to capture light emitted from the dies. (Ex. 1010, 4:63-5:38.) A lightguide, which receives light from the reflector, is attached at the distal end of the barrel-shaped housing. (Ex. 1010, 4:11-34, 6:31-37.) The lightguide is configured to provide a curved light path suitable for use in an oral cavity (Ex. 1010, 4:28-29). Therefore, it is clear that the distal end of the barrel-shaped housing must be positioned proximate (claim 28) or proximate to (claim 41) the mouth of a patient (claims 28 and 41) in order for the lightguide to provide the curved light path within the oral cavity, as disclosed by Boutoussov. 21

28 The following claim chart identifies illustrative examples of Boutoussov s teachings that plainly satisfy every limitation of the claims. The chart includes specific references to where the teachings are found. Claim/Element of 251 Patent 25[a]. A method for curing light-curable compounds, the method comprising: 25[b]. generating light having wavelengths within a narrow band of wavelengths 25[c]. using a plurality of solid state, light-emitting die which each includes a semiconductor junction individually mounted on a substrate to form an array, operable for emitting the light; 25[d]. capturing the light emitted by the die array with an optically reflective element coupled to surround an outer edge of the substrate and the array of light emitting die 25[e]. for capturing the light emitted collectively from the die array and directing it toward a compound for curing the compound. Illustrative Teachings of Boutoussov Any of these light sources 200, 200, 200 can be advantageously used in the optical device 100 to cure dental composites. (Ex. 1010, 7:58-60.) [T]he diode elements 210 emit blue light at 468 ±10 nm. (Ex. 1010, 4:51-52.) The GaN diode elements... may be placed closely together or separated from each other... [and] are preferably arranged in an array. (Ex. 1010, 4:63-5:1-2). A substrate underlies the LED array 200. (Ex. 1010, 5:27-28.) FIG. 2 (at right, in part) shows the reflector 240 coupled to surround an outer edge of the substrate 250 and the array of diode elements 210. (See also Ex. 1010, 5:27-38.) Elements 25[a] and 25[d] above. The optical lightguide receives the emitted light 150 from the reflector 240 and guides the emitted light to an output end of the lightguide 140. (Ex. 1010, 6:1-4, ) 26. The method of claim 25 The heat sink member 270 is in thermal 22

29 Claim/Element of 251 Patent further comprising thermally coupling a heat sink to the substrate for absorbing heat generated by the die array. 27. The method of claim 25 further comprising coupling to the substrate a thermally conductive element and conductively transferring heat generated by the die away from the substrate. 28. The method of claim 25 further comprising positioning said die proximate a distal end of a barrel portion of a housing and positioning the distal end proximate the mouth of a patient to cure a compound. Illustrative Teachings of Boutoussov contact with the diode light source 200, and conducts heat away from the diode light source 200. (Ex. 1010, 5:40-43.) FIG. 2 (at right, in part) shows the substrate 250 positioned between the diode elements 210 and the heat sink member 270. The heat sink member 270 is in thermal contact with the diode light source 200, and conducts heat away from the diode light source 200. (Ex. 1010, 5:40-43.) FIG. 2 (at right, in part) shows the substrate 250 positioned between the diode elements 210 and the heat sink member 270. [A]n elongate, penlight-shaped housing 110 [has] a proximal handle portion and a distal receptacle portion. A receptacle 125 [is] in the distal portion. (Ex. 1010, 4:8-12.) FIG. 2 depicts the die 210 proximate the distal receptacle portion 125 of the penlight-shaped housing 110: [T]he optical lightguide 140 may be configured to provide a curved light path suitable for use in an oral cavity. (Ex. 1010, 4:27-29.) See also discussion of claim 28 that 23

30 Claim/Element of 251 Patent 36. The method of claim 25 further-comprising intercepting the light emitted by the array of die with a plurality of optically reflective elements. 38. The method of claim 25 further comprising directing light from the die into a light transmitting device having an acceptance angle, and collimating the light with the optically reflective element into a beam which does not diverge significantly from said acceptance angle prior to directing the light into the light transmitting device. 39[a]. An instrument for curing light-curable compounds which are curable in the mouth of a patient, the instrument comprising: 39[b]. a plurality of solid state, light-emitting die, the die each being a semiconductor junction individually mounted on a substrate and free of an integral reflector to form an array Illustrative Teachings of Boutoussov precedes this claim chart. A substrate underlies the LED array A [1] reflecting element 260 in turn underlies the substrate 250 and reflects light 150 emitted from the bottom surfaces of the LEDs 210 back towards the [2] reflector 240. The reflector 240 is contoured to focus light into the optical lightguide 140. (Ex. 1010, 5:27-36, emphases added.) The optical lightguide 140, such as a fiber optic bundle, receives the emitted light 150 from the reflector 240 and guides the emitted light to an output end of the lightguide 140. (Ex. 1010, 6:1-4, ) [T]he optical device 100 may be used... to cure light sensitive material located in tight quarters. (Ex. 1010, 4:1-4.) Any of these light sources 200, 200, 200 can be advantageously used in the optical device 100 to cure dental composites. (Ex. 1010, 7:58-60.) The GaN diode elements... may be placed closely together or separated from each other... [and] are preferably arranged in an array. (Ex. 1010, 4:63-5:1-2). [T]he emission 150 occurs from the bottom surfaces as well as the top and side surfaces of the LEDs. (Ex. 1010, 5:25-26.) A substrate underlies the LED array 200. (Ex. 1010, 5:27-28.) 24

31 Claim/Element of 251 Patent 39[c]. operable for emitting light having wavelengths within a narrow band of wavelengths; 39[d]. a non-fiber reflective element coupled to surround an outer edge of the substrate and the array of light emitting die 39[e]. for capturing the light emitted collectively from the die array and directing it toward a compound for curing the compound. 40[a]. An instrument for curing light-curable compounds which are curable in the mouth of a patient, the instrument comprising: 40[b]. a plurality of solid state, light-emitting die forming an array, each of the die being a semiconductor junction mounted on a substrate without individual packaging, 40[c]. the array of die operable for collectively Illustrative Teachings of Boutoussov [T]he diode elements 210 emit blue light at 468 ±10 nm. (Ex. 1010, 4:51-52.) FIG. 2 (at right, in part) shows the reflector 240 coupled to surround an outer edge of the substrate 250 and the array of diode elements 210. (See also Ex. 1010, 5:27-38.) Elements 39[a] and 39[d] above. The optical lightguide receives the emitted light 150 from the reflector 240 and guides the emitted light to an output end of the lightguide 140. (Ex. 1010, 6:1-4, ) [T]he optical device 100 may be used... to cure light sensitive material located in tight quarters. (Ex. 1010, 4:1-4.) Any of these light sources 200, 200, 200 can be advantageously used in the optical device 100 to cure dental composites. (Ex. 1010, 7:58-60.) The GaN diode elements... may be placed closely together or separated from each other... [and] are preferably arranged in an array. (Ex. 1010, 4:63-5:1-2). [T]he emission 150 occurs from the bottom surfaces as well as the top and side surfaces of the LEDs. (Ex. 1010, 5:25-26.) A substrate underlies the LED array 200. (Ex. 1010, 5:27-28.) [T]he diode elements 210 emit blue light at 468 ±10 nm. (Ex. 1010, 4:51-52.) 25

32 Claim/Element of 251 Patent emitting light having wavelengths within a narrow band of wavelengths; 40[d]. an optically reflective element coupled to surround an outer edge of the array of light emitting die 40[e]. for capturing the light emitted collectively from the array of die and directing it toward a compound for curing the compound. 41[a]. An instrument for curing light-curable compounds which are curable in the mouth of a patient, the instrument comprising: 41[b]. a housing comprising a barrel portion having a proximal end and a distal end, 41[c]. the distal end configured to be positioned proximate to the mouth of a patient; 41[d]. a plurality of solid Illustrative Teachings of Boutoussov FIG. 2 (at right, in part) shows the reflector 240 coupled to surround an outer edge of the array of diode elements 210. (See also Ex. 1010, 5:27-38.) Elements 40[a] and 40[d] above. The optical lightguide receives the emitted light 150 from the reflector 240 and guides the emitted light to an output end of the lightguide 140. (Ex. 1010, 6:1-4, ) [T]he optical device 100 may be used... to cure light sensitive material located in tight quarters. (Ex. 1010, 4:1-4.) Any of these light sources 200, 200, 200 can be advantageously used in the optical device 100 to cure dental composites. (Ex. 1010, 7:58-60.) [A]n elongate, penlight-shaped housing 110 [has] a proximal handle portion and a distal receptacle portion. A receptacle 125 [is] in the distal portion. (Ex. 1010, 4:8-12.) A receptacle 125 in the distal portion has an opening which receives and mates with... an optical lightguide [that] may be configured to provide a curved light path suitable for use in an oral cavity. (Ex. 1010, 4:11-29.) See also discussion of claim 41 that precedes this claim chart. The GaN diode elements... may be placed 26

33 Claim/Element of 251 Patent state, light-emitting die, the die each being a semiconductor junction individually mounted on a substrate to form an array 41[e]. operable for emitting light having wavelengths within a narrow band of wavelengths; 41[f]. an optically reflective element coupled to surround an outer edge of the substrate and the array of light emitting die for capturing the light emitted collectively from the die array; 41[g]. the light-emitting die array and optically reflective device being mounted proximate the distal end of the barrel portion and Illustrative Teachings of Boutoussov closely together or separated from each other... [and] are preferably arranged in an array. (Ex. 1010, 4:63-5:1-2). A substrate underlies the LED array 200. (Ex. 1010, 5:27-28.) [T]he diode elements 210 emit blue light at 468 ±10 nm. (Ex. 1010, 4:51-52.) FIG. 2 (at right, in part) shows the reflector 240 coupled to surround an outer edge of the array of diode elements 210. (See also Ex. 1010, 5:27-38.) FIG. 2 (below) depicts the die 210 and the reflector 240 mounted proximate the distal receptacle portion 125 of the penlight-shaped housing 110: 41[h]. the reflective element operable for directing light out of the distal end and toward a compound for curing the compound. 42[a]. An instrument for curing light-curable Element 41[a] above. The optical lightguide receives the emitted light 150 from the reflector 240 and guides the emitted light to an output end of the lightguide 140. (Ex. 1010, 6:1-4, ) [T]he optical device 100 may be used... to cure light sensitive material located in tight 27

34 Claim/Element of 251 Patent compounds which are curable in the mouth of a patient, the instrument comprising: 42[b]. a plurality of solid state, light-emitting die, the die each being a semiconductor junction individually mounted on a substrate to form an array 42[c]. operable for emitting light having wavelengths within a narrow band of wavelengths; 42[d]. an optically reflective element coupled to surround an outer edge of the substrate and the array of light emitting die for capturing the light emitted collectively from the die array; 42[e]. the optically reflective element being configured to couple with an end of a light directing device which directs the reflected light from the optically reflective element in a beam toward a compound for curing the compound. Illustrative Teachings of Boutoussov quarters. (Ex. 1010, 4:1-4.) Any of these light sources 200, 200, 200 can be advantageously used in the optical device 100 to cure dental composites. (Ex. 1010, 7:58-60.) The GaN diode elements... may be placed closely together or separated from each other... [and] are preferably arranged in an array. (Ex. 1010, 4:63-5:1-2). A substrate underlies the LED array 200. (Ex. 1010, 5:27-28.) [T]he diode elements 210 emit blue light at 468 ±10 nm. (Ex. 1010, 4:51-52.) FIG. 2 (at right, in part) shows the reflector 240 (1) coupled to surround an outer edge of the substrate 250 and the array of diode elements 210, and (2) capturing the light 150. (See also Ex. 1010, 5:27-38.) The optical lightguide 140, such as a fiber optic bundle, receives the emitted light 150 from the reflector 240 and guides the emitted light to an output end of the lightguide 140. (Ex. 1010, 6:31-37.) Any of these light sources 200, 200, 200 can be advantageously used in the optical device 100 to cure dental composites. (Ex. 1010, 7:58-60.) 28

35 C. Ground 3: Claims 25-28, 30-32, and Are Obvious over Kennedy II in View of Pimpl One of ordinary skill in the art during the relevant period would have found claims 25-28, 30-32, and 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 251 Patent. Although the examiner did consider Kennedy II, he missed key elements of this reference. Moreover, Pimpl is not even of record in the 251 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. 1003, 1:11-14.) The light-emitting device can have an enclosure, or housing, that functions as a handpiece for the device... [and] has an ergonomic shape that fits the palm. (Ex. 1003, 3:12-17.) Whereas one embodiment of the device, which is depicted in FIG. 1 (reproduced, in part, below), includes a fiber optic taper 34 and a fiber optic light guide 38 that receives light from an array 14 of light emitting diodes 22, another embodiment, FIG. 1 of Kennedy (in part) 29

36 which is depicted in FIG. 7 (reproduced, in part, below) replaces the fiber optic taper 34 and the light guide 38 with an optical cap 136 (e.g., a lens), that can gather and collimate the light produced by the array 14. (Ex. 1003, 4:21-42.) Electrical cables and tubes for compressed air, which are present in some embodiments, are omitted from the reproductions of FIGS. 1 and 7 because, in other embodiments, the invention can be implemented as a fully independent unit which is battery-powered. (Ex. 1003, 3:21-26.) FIG. 7 of Kennedy (in part) 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. (Ex. 1003, 3:38-47.) As shown in FIG. 1 (above) and FIG. 6 (at right), the LEDs 22 are arranged on the substrate 24 in a planar array. The array can include LEDs 22 that emit FIG. 6 of Kennedy blue light for dental applications, red light for medical applications, or a mix of red and blue LED s [sic] for both applications. (Ex. 1003, 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 FIG. 6. The reflector 40 confines the initially 30

37 omnidirectional output from the LED 22 into a directed beam. (Ex. 1003, 4:43-47.) Kennedy II uses the term LED without expressly stating whether this term is directed to individual LED chips or prepackaged LED assemblies that each include an individual reflector and lens. To the extent Kennedy II does not explicitly teach LED chips individually mounted on a substrate, such an arrangement would have been obvious in view of Kennedy II s teachings. (See Ex. 1014, pp ; Ex. 1015, pp , 47-49; Ex. 1016, pp ) Kennedy II indicates that its device was an advancement over prior art light curing systems that utilize quartz halogen light sources. (Ex. 1003, 1:28-38.) Kennedy II notes that such systems tend to be bulky and produce considerable heat. (Ex. 1003, 1:32-33.) Kennedy II also states that an improved device may desirably increase the intensity level... in order to provide an [sic] light energy output which is optimum for the curing application. (Ex. 1003, 1:56-59.) 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 31

38 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. 1004, 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. 1004, 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. 1004, 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. 1004, p. 3, ll ) One embodiment of Pimpl s assembly is depicted in FIGS. 8, 9, and 14 (reproduced below). Pimpl expressly states that the LEDs 3 of the array can be chips that are individually mounted on a circuit board 20, which can be a ceramic substrate. (Ex. 1004, p.5, l. 16, table 2; p. 6, ll , table 3.) The LEDs 3 are positioned at a front side of the substrate 20, and at a back side of the substrate 20 is positioned a circuit board holder 29, which can be formed of metal. (Ex. 1004, p. 5, l. 16, 37-38, table 2; see also FIG. 9.) Accordingly, the 32

39 circuit board holder 29 can function as a heat sink. Pimpl further discloses that the LEDs can have the same or different wavelengths, and that suitable colors for the LEDs are red and blue. (Ex. 1004, p. 2, ll ; p. 7, ll ) A reflector 31 can surround the substrates 20 and arrays of LEDs 3, as shown in FIG. 14. [T]he reflector 31 directs the light... toward the exit opening, which advantageously has a transparent cover 33 that can be a lens. (Ex. 1004, p. 6, ll ) Fig. 8 of Pimpl Fig. 9 of Pimpl Fig. 14 of Pimpl 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 substrate 20 that is (4) attached to a heat sink 29 33

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 substrate 24 that is (4) attached to a heat sink 26. 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 251 Patent. For example, Pimpl teaches that its spotlight devices can be used in batteryoperated lights, such as flashlights. (Ex. 1004, p. 7, l. 3.) As discussed above, Kennedy II s device is a battery-operated light one that even resembles flashlights in certain respects. Thus, Pimpl specifically teaches that its LED spotlights can be used with devices such as Kennedy II s. 34

41 Moreover, Pimpl teaches that 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. 1004, 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 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. 1004, 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 FIG. 7 of Kennedy II. (Ex. 1004, p. 2, ll ) The prior art configuration is disclosed in German Unexamined Patent Application No to Schöberl (Ex. 1020, Schöberl ), which was published in 1974 (more than a quarter century before the 251 Patent s filing date). Schöberl s light source configuration is reproduced below alongside Kennedy II s with like features identified: 35

42 Lens LED Array Electrical Leads Substrate Heat Sink FIG. 1 of Schöberl (Published in 1974) 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. 1004, 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 FIG. 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 both confirm that one of ordinary skill in the art would have found it obvious to combine the teachings of Kennedy II and Pimpl in the manners described herein. (Ex. 1014, pp ; Ex. 1015, pp ) 36

43 3. Every Element of Claims 25-28, 30-32, and Is Present in the Combined Teachings of Kennedy II and Pimpl As discussed above, it would have been obvious to one of ordinary skill in the art to use any of the light source configurations of Pimpl with the dental curing light devices of Kennedy II. For example, the light source configuration depicted in FIG. 14 of Pimpl could replace or modify either (1) the array 14 of LEDs 22 mounted on the substrate 24 that is attached to the heat sink 26, as depicted in FIG. 1 of Kennedy II or (2) the array 14 of LEDs 22 mounted on the substrate 24 that is attached to the heat sink 26 and, in some instances, the optical cap 136, as depicted in FIG. 7 of Kennedy II. Such modifications render each of claims 25-28, 30-32, and of the 251 Patent obvious, as they satisfy every element of these claims. Note that in the following analysis, italics are used to identify language from the claims of the 251 Patent, wherever it occurs. Claim 25: Claim 25 recites a method for curing light-curable compounds. Kennedy II teaches a portable or handheld light-emitting device which has... non-thermal dental and industrial photocuring applications, and thus teaches or renders obvious photocuring methods that utilize the lightemitting device and its components. (Ex. 1003, 1:10-14) 37

44 Claim 25 further recites generating light having wavelengths within a narrow band of wavelengths. Pimpl states that [t]he LEDs 3 can have the same... wavelengths so as to be a single color, such as blue. (Ex. 1004, p. 2, ll ; p. 5, l. 23.) Claim 25 further recites using a plurality of solid state, light-emitting die which each includes a semiconductor junction individually mounted on a substrate to form an array, operable for emitting the light. Pimpl teaches the use of a plurality of LED chips, such as blue GaN chips (Ex. 1004, p. 2, ll ; p. 5, l. 16; p. 6, ll , table 3), and the chips are depicted in FIG. 8 (reproduced above), in which reference number 20 denotes a circuit board, on which a plurality of LEDs 3 is mounted. (Ex. 1004, p. 5, l. 16.) Pimpl also teaches capturing the light emitted by the die array with an optically reflective element coupled to surround an outer edge of the substrate and the array of light emitting die for capturing the light emitted collectively from the die array, as recited in claim 25. This limitation is clearly met in view of at least Pimpl s FIG. 14, reproduced above. Pimpl also indicates that in other configurations that include only two oppositely facing arrays, such as those illustrated in FIGS. 1-5 and 10, [t]aking into consideration that even... an LED has a finite radiation angle, this simple arrangement already makes it possible to illuminate virtually the entire inner surface of the reflector. (Ex. 1004, p. 5, ll. 4-6.) Thus, Pimpl s reflector is positioned around each LED array 38

45 and the substrate on which each array is mounted such that the reflector redirects light emitted from the outer edge of the substrate and from the die array. See Section IV.B.3.b. Pimpl and Kennedy II teach that the reflector direct[s] the reflected light toward a compound for curing the compound. In particular, Pimpl states that the reflector 31 directs the light... toward the exit opening. (Ex. 1004, p. 6, l. 25.) Thus, where Pimpl s assembly is incorporated into Kennedy II s curing light devices, the light that exits from the reflector 31 is directed toward a compound for curing the compound. Claim 26: As discussed above, Pimpl teaches thermally coupling a heat sink to the substrate for absorbing heat generated by the die array. In particular, the heat sink is the metallic circuit board holder 29 that is provided at the back side of the circuit boards 20 that support multiple LEDs 3 on their front sides. (Ex. 1004, p. 5, l. 16, 37-38, table 2.) Alternatively, Kennedy II teaches the use of a heat sink 26 to dissipate heat from the array LEDs (Ex. 1003, 3:46-55), and thus it would have been obvious to one of ordinary skill in the art to retain the heat sink 26 in a modified version of Kennedy II s device. Claim 27: The combination of Pimpl and Kennedy II teaches coupling to the substrate a thermally conductive element and conductively transferring 39

46 heat generated by the die away from the substrate, as recited in claim 27, for the same reasons just discussed with respect to the heat sink of claim 26. Claim 28: Kennedy II teaches positioning said die proximate a distal end of a barrel portion of a housing and positioning the distal end proximate the mouth of a patient to cure a compound, as recited in claim 28. FIG. 7 of Kennedy II (reproduced above) depicts the barrel portion having a distal end (i.e., the optical cap 136) and the die array (which is composed of LED dies) being positioned proximate to the distal end. Moreover, Kennedy II s written disclosure teaches that the optical cap 136 is mounted to the front of the enclosure (i.e., at the distal end of the barrel portion of the housing) and is used in place of the light guide 38, which can be used to improve accessibility in a dental patient s mouth. (Ex. 1003, 4:21-42.) Therefore, the distal end of Kennedy II s barrel portion is positioned proximate the mouth of a patient to cure a compound when the device is in use. In the modification that utilizes Pimpl s LED array as a substitution for Kennedy II s LED array, the substituted LED array would likewise be supported proximate to the distal end of the barrel portion. Claim 30: Kennedy II discloses that in a dental application, light dosage values in the range of up to 400 mw/cm 2 are typically required. (Ex. 1003, 40

47 1:40-42.) This disclosure renders obvious the limitation of claim 30 that recites emitting a power density of light in the range of 200 to 1400 mw/cm 2. Claim 31: Kennedy II teaches that the optical cap 136 can be the TIR type lens in U.S. Pat. No. 4,337,759. (Ex. 1003, 4:39-42.) The 251 Patent identifies this very same TIR lens as a non-imaging optical focusing device. (Ex. 1001, 13:50-67.) Thus, where Pimpl s assembly is incorporated into Kennedy II s devices, the combination renders obvious positioning a nonimaging optical focusing device with the optically reflective element. It must be presumed that the remaining language of claim 31 ( for further reflecting light from the element and directing it onto a compound for directing light from the array into the optical device ), which is flawed in many ways, is satisfied by the use of the very device disclosed in the 251 Patent. Claim 32: As discussed with respect to claim 31, Kennedy II teaches the very TIR lens disclosed in the 251 Patent, and thus renders obvious the recitation of a collimating total internal reflection (TIR) lens in claim 32. Claim 39: Claim 39 varies only slightly from claim 25 (which is discussed above). Claim 39 is directed to an instrument for curing lightcurable compounds which are curable in the mouth of a patient, rather than a method for curing such compounds as recited in claim 25. Thus, claim 39 recites the components of an instrument, whereas claim 25 recites the use of 41

48 those components, but the components recited in both claims are identical, with only the following exceptions. Claim 39 requires that each die is free of an integral reflector. Pimpl clearly satisfies this limitation, as it teaches that the chips are not encapsulated and, further, depicts the chips in the drawings without integral reflectors. (See, e.g., Ex. 1004, p. 6, table 3, FIGS. 8 and 9.) Claim 39 also requires that the reflective element is a non-fiber reflective element, which is clearly satisfied by Pimpl s reflector 31. (See, e.g., Ex. 1004, FIG. 14.) Claim 40: Claim 40 is identical to claim 39, with only the following significant exceptions. Claim 40 requires that each die is mounted on a substrate without individual packaging. This limitation is clearly met by Pimpl s teachings that the chips are not encapsulated and Pimpl s depictions of the chips in the drawings as not having individual packaging. (See, e.g., Ex. 1004, p. 6, table 3, FIGS. 8 and 9.) Claim 40 further recites that the optically reflective element is coupled to surround an outer edge of the array of light emitting die. This limitation is clearly met in view of at least Pimpl s FIG. 14, reproduced above. Moreover, Pimpl indicates that in other configurations that include only two oppositely facing arrays, such as those illustrated in FIGS. 1-5 and 10, [t]aking into consideration that even... an LED has a finite radiation angle, this simple arrangement already makes it possible to illuminate virtually 42

49 the entire inner surface of the reflector. (Ex. 1004, p. 5, ll. 4-6.) Thus, Pimpl s reflector is positioned around each LED array such that the reflector redirects light emitted from the outer edge of the array of light emitting die. See Section IV.B.3.b.. Claim 41: Claim 41 is a combination of a modified version of claim 39 and a modified version of claim 28. In particular, claim 41 omits from claim 39 the free of an integral reflector limitation relative to the light-emitting die and the non-fiber limitation relative to the optically reflective element, but adds to claim 39 the following limitations, which resemble those recited in claim 28: a housing comprising a barrel portion having a proximal end and a distal end, the distal end configured to be positioned proximate to the mouth of a patient and the light-emitting die array and optically reflective device being mounted proximate the distal end of the barrel portion and the reflective element operable for directing light out of the distal end. The portions of claim 41 that resemble claim 39 are rendered obvious by the same teachings of Kennedy II and Pimpl that render claim 39 obvious (discussed above). With respect to those portions of claim 41 that resemble claim 28, it is again noted that it would have been obvious to one of ordinary skill in the art to incorporate an assembly such as that depicted in FIG. 14 of Pimpl into the device depicted in FIG. 7 of Kennedy II. (See Ex. 1003, FIG. 7; 43

50 Ex. 1004, FIG. 14.) In such a modified device, Pimpl s array of LEDs 3 and reflector 31 would replace the LED array 14 of Kennedy II shown in FIG. 7. Thus, Pimpl s LEDs 3 and reflector 31 would both be mounted proximate the distal end of the barrel portion of Kennedy II s device, and the reflector 31 would be operable for directing light out of the distal end of Kennedy II s device. Furthermore, as discussed above with respect to claim 28, the distal end of the barrel portion of Kennedy II s device is configured to be positioned proximate to the mouth of a patient. Claim 42: Claim 42 is a modified version of claim 39 that further recites a light directing device. In particular, claim 41 omits from claim 39 the free of an integral reflector limitation on the light-emitting die and the non-fiber limitation on the optically reflective element, but adds to claim 39 the following limitation: the optically reflective element being configured to couple with an end of a light directing device which directs the reflected light from the optically reflective element in a beam toward a compound for curing the compound. The portions of claim 42 that resemble claim 39 are rendered obvious by the same teachings of Kennedy II and Pimpl that render claim 39 obvious (discussed above). Moreover, with respect to the light directing device portion of claim 42, Kennedy II teaches: The output from the LED array 14 can also be directed at the source end by including a reflector 40 for each LED 44

51 22 mounted on the substrate 24 as shown in FIG. 6. The reflector 40 confines the initially omnidirectional output from the LED 22 into a directed beam. The fiber optic taper 34 then further condenses the output from the LED s [sic] 22 comprising the array 14. (Ex. 1003, 4:43-49.) Further, the fiber optic light guide is coupled to the output end of the fiber optic taper 34. (Ex. 1003, 4:26-27.) In a modified device that utilizes Pimpl s LED array with its single reflector 31 as a substitution for Kennedy II s LED array with its multiple individual reflectors 40, the substituted reflector 31 (i.e., Pimpl s optically reflective element ) would similarly be configured to couple with the fiber optic light guide 38, which Kennedy II indicates is operative to direct said light energy... to a photo-reaction location disposed adjacent to [the light guide 38]. (Ex. 1003, 2:24-27.) D. Ground 4: Claims Are Obvious over Kennedy II in View of Pimpl and Further in View of Phillips Claims are directed to positioning a removable sleeve with respect to the housing (claim 33), with the sleeve either being made of disposable material (claim 34) or made of an autoclavable material to be sterilized after a use (claim 35). Kennedy II teaches a clear protective sheath 12 that is removable for autoclaving or disposal that meets all of these limitations. (See Ex. 1003, 9:8-16.) However, it is possible that Kennedy II s sheath 12 might 45

52 also be considered the housing 12 of the device, which would thus prevent the sleeve from being positioned with respect to the housing (i.e., positioned with respect to itself). Phillips discloses removable sleeves for use with dental curing lights. (Ex. 1005, pp. 4-5.) Such removable sleeves were thus known in the art. It would have been obvious to one of ordinary skill in the art to merely use Phillip s removable sleeves, in their intended manner, with the dental curing light of Kennedy II, as modified by Pimpl. The Mills Declaration and the Shealy Declaration confirm the foregoing assertions regarding the obviousness of combining the teachings of Kennedy II, Pimpl, and Phillips. (Ex. 1014, pp ; Ex. 1015, pp ) Kennedy II teaches supporting the die in a housing, as recited in claim 33. (See, e.g., Ex. 1003, FIG. 1.) Further, Phillips teaches a removable sleeve for use with the housing of dental light curing devices (claim 33). (Ex. 1005, pp. 4-5.) In one embodiment, the sheath is disposable (claim 34), while in a further embodiment, the sheath may be reusable, and sterilisable prior to use (claim 35). (Ex. 1005, p. 5, 5.) E. Ground 5: Claim 36 Is Obvious over Kennedy II in View of Pimpl and Further in View of Doiron 46

53 As discussed in Section VI.C above with respect to claim 1, it would have been obvious to one of ordinary skill in the art at the time of the alleged invention of the 251 Patent to combine the teachings of Kennedy II and Pimpl. That discussion focused on substituting the light source assembly depicted in Pimpl s FIG. 14 for Kennedy II s light source assembly, but it would have been obvious for the same reasons to instead substitute analogous portions of a different embodiment depicted in Pimpl s FIG. 16 for Kennedy II s light source assembly. Figure 16 of Pimpl (repositioned, annotated) The embodiment in Pimpl s Figure 16 (above) includes a central ceramic block 40 that 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. 1004, p. 7, ll ) In the cross-sectional view, the LED chips are identified as R (red), G (green), and B (blue). One of ordinary skill in the art would have found it obvious to replace each of the red 47

54 and green chips with blue LED chips, such that all of the chips in the figure above would be blue ( B ) chips. Pimpl provides motivation for such a substitution, indicating the LED chips of some embodiments all have the same... wavelengths. (Ex. 1004, p. 5, l. 23.) Moreover, this modification is nothing more than a substitution of known parts that yields predictable results. 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. 1004, p. 7, ll ) Although Pimpl does not explicitly state whether the inner surface of each perforation is reflective, one of ordinary skill in the art would have found it obvious to make it so. Pimpl teaches that each inner surface is shaped as a conical frustum that expands from the substrate to an output end. (Ex. 1004, p. 7, l. 24, FIG. 16.) Pimpl further teaches that light from LED chips can be emitted in many directions, including from the sides of the chips. (Ex. 1004, p. 2, ll , FIG. 18.) Those of skill in the art thus would have recognized that the shape of the perforation walls is suitable for reflecting side-directed light out of the depression, thus increasing the efficiency of Pimpl s light source. Moreover, Doiron teaches a structure that is essentially identical to that of Pimpl. The structure includes a reflector device 111 that has numerous conical 48

55 hole[s] cut therein and is mounted on a substrate 91 for the express purpose of redirecting light from the LED junction in a preferred direction. (Ex. 1006, 7:58-8:4.) Doiron s reflector device 111 is analogous to Pimpl s perforated plate 42 and Doiron s substrate 91 is analogous to Pimpl s substrate 40, as can be seen by comparing Pimpl s Figure 16 to Doiron s Figure 11 (below). Doiron teaches that an inner surface 112 which receives light emanating from the LED is preferably coated with a highly reflective material. (Ex. 1006, 8:2-4.) Substrate 40 Perforated Plate 42 Figure 16 of Pimpl (in part, annotated) Figure 11 of Doiron It would have been obvious to one of ordinary skill in the art to coat the inner surface of Pimpl s perforations in the same manner as disclosed in Doiron to achieve the same advantageous result of increased light output from the LEDs. (See Ex. 1006, 7:31-8:1-20.) Moreover, it would have been obvious to consider Doiron s teachings collectively with those of Kennedy II and Pimpl for at least the reason that Doiron is within the very same field of endeavor as Kennedy II that is, Kennedy II indicates that its devices have dual use in both the dental curing space as well as the photodynamic therapy space, while Doiron is directed to phototherapy devices. (Compare Ex. 1003, 3:60-4:10 with Ex. 49