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`EXHIBIT 2001
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`EXHIBIT 2001
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`
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`Trials@uspto.gov
`Tel: 571-272-7822
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`
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`Paper 18
`Entered: November 15, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`EPISTAR, EVERLIGHT, and LITE-ON
`Petitioners,
`
`v.
`
`TRUSTEES OF BOSTON UNIVERSITY
`Patent Owner.
`_______________
`
`Case IPR2013-00298
`Patent 5,686,738
`_______________
`
`
`Before KEN B. BARRETT, GRACE KARAFFA OBERMANN, and
`JENNIFER S. BISK, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Inter Partes Review
`37 C.F.R. § 42.108
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`Case IPR2013-000298
`Patent 5,686,738
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`I. INTRODUCTION
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`A. Background
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`Epistar, Everlight, and Lite-On (referred to collectively as “Petitioner”) filed
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`a petition (Paper 4, “Pet.”) to institute an inter partes review of claims 1-21 of U.S.
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`Patent No. 5,686,738 (Ex. 1001, “the ’738 patent”). The ’738 patent owner,
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`Trustees of Boston University (“Patent Owner”), filed a Preliminary Response
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`(Paper 13, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314.
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`The standard for instituting an inter partes review is set forth in 35 U.S.C.
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`§ 314(a), which provides:
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`THRESHOLD — The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of
`the claims challenged in the petition.
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`We are not persuaded that the information presented shows that there is a
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`reasonable likelihood that Petitioner would prevail at trial with respect to at least
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`one claim of the ’738 patent. On this record, we deny the petition.
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`B. Related Proceedings
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`Patent Owner has asserted the ’738 patent in numerous district court actions,
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`including three actions against Petitioner: Trustees of Boston University v. Epistar
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`Corp. et al., No. 1:12-cv-12326 (D. Mass.); Trustees of Boston University v.
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`Everlight Elec. Co. et al., No. 1:12-cv-11935 (D. Mass.); and Trustees of Boston
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`University v. Lite-On, Inc. et al., No. 1:12-cv-12330 (D. Mass). Pet. 4-5. In
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`Bridgelux, Inc. v. Cree, Inc. et al., No. 3:06-cv-06495 (N.D. Cal.), a district court
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`construed claim terms of the ’738 patent, prior to dismissing the lawsuit. Id. at 5
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` 2
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`
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`(citing Ex. 1014).
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`C. The ’738 Patent and Gallium Nitride Film Growth
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`The ’738 patent relates to gallium nitride (GaN) semiconductor film, a
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`potentially useful source of solid state blue lasers. See Ex. 1001, col. 1, ll. 20-21;
`
`Ex. 1004, col. 2, ll. 5-16. GaN is grown as a crystalline film for that application.
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`See Ex. 1001, col. 1, ll. 12-28; Ex. 1006, p. 1. GaN p-n junctions form at the
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`interface of two adjacent GaN films having opposite conductivity types (p-type and
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`n-type). See Ex. 1004, col. 2, ll. 38-59. GaN p-n junctions enable current flow that
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`emits blue or violet light. See id. at col. 2, ll. 55-59; Ex. 1008, p. 5.
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`At the time the invention was made, the production of GaN p-n junctions
`
`was hampered by difficulties in growing p-type GaN film. Ex. 1001, col. 1, ll. 26-
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`36; col. 1, l. 61-col. 2, l. 6; see Ex. 1004, col. 3, ll. 31-33 (“because gallium nitride
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`crystals are almost always n-type, high quality p-type material generally has been
`
`unavailable”). The ’738 patent discloses, and other evidence confirms, that prior
`
`art methods for growing GaN impart an inherent n-type characteristic to the film,
`
`attributed to nitrogen vacancies unintentionally formed within the GaN lattice
`
`during growth. Ex. 1001, col. 1, ll. 21-35, 66-67; see Ex. 1004, col. 3, ll. 16-34
`
`(describing the nitrogen vacancy problem and the resultant n-type characteristic of
`
`GaN film). Attempts to grow p-type GaN film, by adding an acceptor impurity to
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`counter the inherent n-type characteristic, produce carrier concentrations “reduced
`
`by compensation, that is, the effect of a donor impurity is ‘neutralized’ by the
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`addition of an acceptor impurity.” Ex. 1001, col. 1, ll. 42-45. The information
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`presented includes the statement that “‘compensated’ p-type material” generally is
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`undesirable for use in GaN light-emitting diodes, because “the high concentration
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`of both p and n carriers results in a very resistive” crystal, “rather than a p-type
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`crystal.” Ex. 1004, col. 3, ll. 33-48.
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`The ’738 patent discloses that “[t]he only reported p-type GaN” is a
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`compensated p-type material. Ex. 1001, col. 1, ll. 61-65 (citing the Amano
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`reference, Ex. 1006, which is applied in two grounds set forth in the petition). At
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`the time the invention was made, efforts to produce p-type films, suitable for use in
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`GaN p-n junctions, generally were unsuccessful. Ex. 1004, col. 3, ll. 18-34;
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`Ex. 1006, p. 1; Ex. 1008, pp. 2, 4; Ex. 2006, p. 1, 6-7. However, one prior art
`
`reference reports the growth of such a p-type GaN film directly on a substrate. See
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`Ex. 1004, col. 7, l. 61-col. 8, l. 2; col. 10, ll. 49-63; col. 11, ll. 12-21.
`
`The ’738 patent discloses a method of growing a GaN film on a buffer layer.
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`Ex. 1001, col. 4, ll. 32-40. The method employs an electron cyclotron resonance
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`microwave plasma assisted molecular beam epitaxy (ECR-assisted MBE) system.
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`Id. at col. 1, ll. 12-15, col. 3, ll. 38-41, Fig. 1. The ECR-assisted MBE system
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`reduces nitrogen vacancies sufficiently to enable growth of near-intrinsic
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`GaN film, which essentially is free of the inherent n-type characteristic. Id. at
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`col. 1, l. 66-col. 2, l. 6; col. 2, ll. 9-14, 30-33, 45-46; col. 3, ll. 1-3; see claim 13
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`(near-intrinsic GaN has “a resistivity of greater than 108 Ω-cm”). Free of the
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`n-type characteristic, the near-intrinsic GaN film may be doped p-type or n-type
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`for use in GaN p-n junctions. Id. at col. 2, ll. 48-49; col. 3, ll. 1-7.
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`The ’738 patent discloses an ECR-assisted MBE system for preparing
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`near-intrinsic GaN film in two steps. Id. at col. 2, ll. 9-22; col. 3, ll. 38-55; col. 4,
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`ll. 11-31. In a low-temperature nucleation step, a buffer layer is grown under
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`conditions that reduce the probability of nitrogen vacancy formation. Id. at col. 4,
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`ll. 11-22, 32-35. In a high-temperature growth step, near-intrinsic, monocrystalline
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`GaN film is grown on the buffer layer. Id. at col. 4, ll. 23-31, 52-56.
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`Each of claims 1-21 is directed to an apparatus, namely, a semiconductor
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`device. Ex. 1001, claims 1-21.
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`The independent claims are 1, 8, 9, 11, 13, 15, 16, and 18-21. Claim 19 is
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`illustrative:
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`19. A semiconductor device comprising:
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`
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`a substrate, said substrate consisting of a material selected from the group
`consisting of (100) silicon, (111) silicon, (0001) sapphire, (11-20) sapphire,
`(1-102) sapphire, (111) gallium aresenide, (100) gallium aresenide,
`magnesium oxide, zinc oxide and silicon carbide;
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` a
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` non-single crystalline buffer layer, comprising a first material grown on
`said substrate, the first material consisting essentially of gallium nitride; and
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` a
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` growth layer grown on the buffer layer, the growth layer comprising
`gallium nitride and a first dopant material.
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`Ex. 1001, claim 19.
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`D. The Asserted Grounds of Unpatentability
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`Petitioner asserts the following grounds of unpatentability of claims 1-21:
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`Reference[s] 1
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`Moustakas WIPO
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`Basis
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`Claims challenged
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`§ 102(b)
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`1-21
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`Manabe and Maebotoke
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`Manabe, Maebotoke, and Carter
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`§ 103
`
`§ 103
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`1-10, 18, 19
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`15, 20
`
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`1 WO 92/16966 (Ex. 1013) (“Moustakas WIPO”); JP H2-81483 (Ex. 1003)
`(“Manabe”); JP S60-173829 (Ex. 1002) (“Maebotoke”); U.S. Patent 5,210,051
`(“Carter”) (Ex. 1004); U.S. Patent 5,122,845 (Ex. 1005) (“Manabe-2”); Hiroshi
`Amano, et al., P-Type Conduction in Mg-Doped GaN Treated with Low- Energy
`Electron Beam Irradiation (LEEBI), 28 Japanese Journal of Applied Physics,
`L2112–L2114 (Ex. 1006) (“Amano”); P.J. Born, et al., The Chemical Preparation
`of Gallium Nitride Layers at Low Temperatures, 15 Journal of Materials Science,
`3003–09 (Ex. 1007) (“Born”).
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`Reference[s] 1
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`Basis
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`Claims challenged
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`Manabe, Maebotoke, and Manabe-2
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`§ 103
`
`Manabe and Carter
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`Manabe, Carter, and Maebotoke
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`Maebotoke and Manabe
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`Maebotoke and Amano
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`Maebotoke and Carter
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`Maebotoke and Manabe-2
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`§ 103
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`§ 103
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`§ 103
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`§ 103
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`§ 103
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`§ 103
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`Maebotoke, Manabe, and Manabe-2
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`§ 103
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`Maebotoke, Amano, and Carter
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`Maebotoke, Manabe, and Carter
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`§ 103
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`§ 103
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`11, 12
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`16, 21
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`17
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`1-8, 13, 14
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`1-10
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`20
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`11
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`12
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`15
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`16, 17, 21
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`Maebotoke
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`Born
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`§ 102(b)
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`18, 19
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`§ 102(b)
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`1, 6, 7, 18, 19
`
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`E. Broadest Reasonable Interpretation of “Non-Single Crystalline”
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`In an inter partes review proceeding, we assign claim terms in unexpired
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`patents their broadest reasonable interpretation in light of the specification of the
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`patent in which they appear. 37 C.F.R. § 42.100(b); Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012). We give claim terms their
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`ordinary and customary meaning, as understood by a person of ordinary skill in the
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`art, in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504
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`F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a term must be set
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`forth in the specification with reasonable clarity, deliberateness, and precision. In
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`re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
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`Each challenged claim specifies a device comprising a “non-single
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`crystalline” buffer layer. Ex. 1001, claims 1-21. A threshold issue is whether that
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`claim term requires a crystalline buffer layer, or more broadly embraces any
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`structure (such as an amorphous film) that is not monocrystalline.
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`Neither party argues that a commonly accepted meaning of “non-single
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`crystalline” was in use at the time the invention was made. Pet. 8; Prelim.
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`Resp. 13-15. However, both parties cite a statement, by the ’738 patent applicant,
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`made during prosecution of a related application, that a skilled artisan would have
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`understood that a “non-single crystalline” buffer layer is polycrystalline,
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`amorphous, or mixed polycrystalline and amorphous. Pet. 8 (quoting Ex. 1015,
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`¶ 5); Prelim. Resp. 14 (quoting Ex. 2002, p. 12). But for that statement, the parties
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`advance no evidence of an accepted definition of “non-single crystalline.” The
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`information presented is insufficient to establish an ordinary and customary
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`meaning of that term. We thus turn to the written description for guidance
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`regarding the meaning intended by the ’738 patent applicant.
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`The ’738 patent describes a two-step method for forming a “near-intrinsic
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`monocrystalline” GaN film as a growth layer. Ex. 1001, col. 2, ll. 9-18, 42-47. In
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`a low-temperature first step, a buffer layer is formed on a substrate such as
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`sapphire or silicon. Id. at col. 4, ll. 7-9, 32-34. In a high-temperature second step,
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`a monocrystalline GaN growth layer is formed on the buffer layer. Id. at col. 4,
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`ll. 35-37. In a preferred embodiment, the buffer layer consists of essentially the
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`same material as the growth layer—that is, GaN. Id. at col. 2, ll. 9-19. The GaN
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`buffer layer is distinguished from the GaN growth layer based on differences in the
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`crystallographic properties of the layers during the course of the two-step process.
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`Id. at col. 2, ll. 37-47; col. 4, ll. 23-51.
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`Specifically, the buffer layer forms as an “amorphous film” at temperatures
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`ranging from 100o to 400o C. Id. at col. 4, ll. 32-34. “As the temperature increases
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`to 600o C., the amorphous film crystallizes.” Id. at col. 4, ll. 35-37. Thereafter,
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`near-intrinsic “GaN monocrystalline film” is grown on the “crystallized” buffer
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`layer. Id. at col. 2, ll. 43-46; col. 4, ll. 26-27. Thus, during the course of the two-
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`step process disclosed in the ’738 patent, the buffer layer transitions from
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`amorphous, to mixed crystalline and amorphous, to crystalline; and the growth
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`layer forms as near-intrinsic, monocrystalline GaN on the crystallized buffer layer.
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`On this record, the term “non-single crystalline” differentiates the buffer
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`layer from the “monocrystalline” GaN growth layer. Id. at col. 4, l. 27. In other
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`words, at minimum, “non-single crystalline” describes a buffer layer that is not
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`monocrystalline, and may be, for example, polycrystalline, or mixed
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`polycrystalline and amorphous.
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`As mentioned above, a question arises whether the term is broad enough to
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`embrace the “amorphous film” that forms during the low-temperature first step of
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`the process disclosed in the ’738 patent. Ex. 1001, col. 4, l. 36. Petitioner argues
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`that “the claimed buffer layer necessarily refers to the ‘crystallized’ state of the
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`buffer layer.” Pet. 11 (emphasis omitted). Standing alone, the term “crystalline”
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`may be interpreted to exclude a buffer layer having essentially no long-term
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`crystallographic order. But taken in the context of the entire disclosure of the ’738
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`patent, the broadest reasonable interpretation of “non-single crystalline” means
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`“not monocrystalline,” which describes the buffer layer at each stage of the two-
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`step process, including the amorphous film that forms during the low-temperature
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`first step. On that point, the claim language, itself, in conjunction with the written
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`description, reflects no clear intent to exclude any structural form, other than
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`monocrystalline. See Ex. 1001, col. 4, ll. 23-51. Based on the information
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`presented, the broadest reasonable interpretation of non-single crystalline includes
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`the “amorphous film” that forms during the low-temperature first step of the two-
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`step process. Id. at col. 4, ll. 32-37.
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`On this record, we conclude that “non-single crystalline” describes a buffer
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`layer that is not monocrystalline, and may be, for example, polycrystalline,
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`amorphous, or mixed polycrystalline and amorphous. Our conclusion is not
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`inconsistent with the construction adopted in related district court litigation.
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`Ex. 1014, p. 8 (“‘Non-single crystalline’ refers to polycrystalline, amorphous, or a
`
`mixture of polycrystalline and amorphous—in short, any form that is not
`
`monocrystalline.”).
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`
`II. ANALYSIS
`
`A. Anticipation of Claims 1-21 by Moustakas WIPO
`
`Petitioner advances a ground that consists of four sentences, asserting that
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`all of the claims of the ’738 patent are anticipated by Moustakas WIPO. Pet. 13-14
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`(including footnote 4). Petitioner does not support this ground with an element-by-
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`element analysis of any claim, or a meaningful analysis of the disclosure of
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`Moustakas WIPO. Id. The information presented is inadequate to support a
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`determination that Moustakas WIPO anticipates any claim of the ’738 patent.
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`Furthermore, this ground rests upon Petitioner’s argument that “[t]he
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`claimed ‘non-single crystalline’ buffer layer would be the ‘crystallized’ buffer
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`layer”—an argument inconsistent with the broadest reasonable interpretation of the
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`term, which includes the amorphous film that forms in the low-temperature first
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`step of the two-step process disclosed in the ’738 patent. Pet. 14 n. 4 (citing
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`Ex. 1001, col. 4, ll. 36-37); see Pet. 11-12 (the specified “non-single crystalline”
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`buffer layer is limited to the “crystallized” buffer layer upon which the
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`monocrystalline GaN layer is grown).
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`We are not persuaded that there is a reasonable likelihood that Petitioner
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`would prevail at trial with respect to at least one claim of the ’738 patent, based on
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`anticipation of claims 1-21 by Moustakas WIPO.
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`B. Obviousness Grounds Based on Substitution of GaN
` For Aluminum Nitride in the Buffer Layer of Manabe
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`Claims 1-12, 15, and 17-20 specify a device that comprises a non-single
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`crystalline buffer layer, consisting essentially of GaN. Ex. 1001,
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`claims 1-12, 15, 17-20. Each of the following grounds is based on the premise that
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`substituting GaN for aluminum nitride (AlN), in Manabe’s method for forming a
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`buffer layer, would have been obvious in view of Maebotoke, and produces a non-
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`single crystalline GaN buffer layer: Claims 1-10, 18, and 19 over Manabe and
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`Maebotoke; claims 15 and 20 over Manabe, Maebotoke, and Carter; claims 11
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`and 12 over Manabe, Maebotoke, and Manabe-2; and claim 17 over Manabe,
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`Carter, and Maebotoke. Pet. 15-16 (presenting argument, regarding a
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`GaN-for-AlN substitution, in the context of claim 1); Pet. 17-33 (incorporating that
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`argument as to claims 2-12, 15, and 17-20).
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`Petitioner acknowledges that Manabe’s buffer layer does not consist
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`essentially of GaN as specified in claims 1-12, 15, and 17-20. Pet. 15. In fact,
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`Manabe’s buffer layer is formed of AlN. Ex. 1003, p. 4-6, Fig. 2.
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`Figure 2 of Manabe is reproduced below:
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`Figure 2 depicts a light-emitting diode 10 fabricated according to the method
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`disclosed in Manabe.
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`Manabe discloses sapphire substrate 2, AlN buffer layer 3, first n-type GaN
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`growth layer 4, second n-type GaN growth layer 8, and insulating, or i-type, GaN
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`growth layer 5. Ex. 1003, p. 4-6, Fig. 2. Maebotoke, by contrast, discloses a
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`buffer layer composed of GaN or AlN. Ex. 1002, p. 2 (disclosing buffer layer
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`composed of “AlxGa1-xN (0 ≤ x ≤ 1)”). The thrust of Petitioner’s argument is that,
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`because Maebotoke discloses a method for growing a buffer layer composed of
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`either GaN or AlN, it would have been obvious to substitute GaN for AlN in
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`Manabe’s buffer layer 3. Pet. 15-16.
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`Manabe discloses a “polycrystalline” AlN buffer layer 3 formed “by heating
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`a sapphire substrate 2 to 500o C by MBE” and evaporating “aluminum . . . in a
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`nitrogen gas plasma” under conditions that are further defined. Ex. 1003, pp. 6-7.
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`Petitioner does not show sufficiently that Manabe’s process conditions produce a
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`similarly “polycrystalline” GaN buffer layer, when gallium is selected over
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`aluminum as a starting material. Pet. 15-16. Specifically, Petitioner identifies no
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`objective evidence—for example, experimental data—tending to establish the
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`structure of a GaN buffer layer grown under Manabe’s process conditions. Id.
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`In any event, the information presented fails to persuade us that a person of
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`ordinary skill in the art would have been led to the proposed substitution. Manabe
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`relates to an MBE method for forming a buffer layer, whereas Maebotoke relates
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`to “a high-frequency sputtering method” for forming a buffer layer. Compare
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`Ex. 1003, p. 6 with Ex. 1002, p. 5. Even if we accept that a skilled artisan would
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`have understood that gallium and aluminum are interchangeable for use in
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`Maebotoke’s sputtering method, Petitioner directs us to no persuasive evidence
`
`that these elements would have been recognized as interchangeable for use in
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`Manabe’s MBE method. Nor does Petitioner establish that substituting gallium for
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`aluminum in Manabe’s MBE method would have been a routine modification, or
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`otherwise within the technical reach of a skilled artisan. Pet. 15-16.
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`We are not persuaded that there is a reasonable likelihood that Petitioner
`
`would prevail at trial with respect to at least one claim of the ’738 patent, based on
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`the alleged obviousness of substituting GaN for AlN in Manabe’s buffer layer.
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`C. Obviousness Grounds Based on an Inherent Disclosure
` of a Non-Single Crystalline GaN Buffer Layer in Maebotoke
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`Claims 1-14 and 20 specify a device that comprises a non-single crystalline
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`buffer layer, consisting essentially of GaN. Ex. 1001, claims 1-14, 20. Each of the
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`following obviousness grounds is based on the premise that Maebotoke inherently
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`discloses a non-single crystalline GaN buffer layer: Claims 1-8 and 13-14 over
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`Maebotoke and Manabe; claims 1-10 over Maebotoke and Amano; claim 20 over
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`Maebotoke and Carter; claim 11 over Maebotoke and Manabe-2; claim 12 over
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`Maebotoke, Manabe, and Manabe-2; and claim 15 over Maebotoke, Amano, and
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`Carter. Pet. 33-53.
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` Petitioner argues that Maebotoke discloses a GaN “buffer layer 2.” Pet. 34
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`(citing Ex. 1002, p. 5). Petitioner admits that Maebotoke does not disclose
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`expressly that buffer layer 2 is non-single crystalline, as specified in claim 1. Id.
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`Petitioner argues that “this would have been an inherent result of” Maebotoke’s
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`process conditions, thus satisfying the “non-single crystalline” buffer layer
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`limitation in claims 1-14 and 20. Id. (citing Ex. 1016, ¶¶ 28-29) (inherency
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`argument in the context of claim 1); Pet. 37-53 (incorporating that argument as to
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`claims 2-14 and 20).
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`To prevail on an inherency theory at trial, Petitioner must show that
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`Maebotoke’s buffer layer 2 and the specified buffer layer are made under
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`substantially identical process conditions and, therefore, share substantially the
`
`same properties—including a non-single crystalline structure. See Perricone v.
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`Medicis Pharm. Corp., 432 F.3d 1368, 1378 (Fed. Cir. 2005) (where prior art
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`reference “discloses the very same methods” as the invention, “then the particular
`
`benefits” of the invention “must naturally flow from those methods even if not
`
`recognized as benefits” in the reference); In re Papesch, 315 F.2d 381, 391
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`(CCPA 1963) (“a compound and … its properties are inseparable”).
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`“To establish inherency, the extrinsic evidence ‘must make clear that the
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`missing descriptive matter is necessarily present in the thing described in the
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`reference.’” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). Inherency is not
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`“established by probabilities or possibilities. The mere fact that a certain thing may
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`result from a given set of circumstances is not sufficient.” Id. (quotation omitted).
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`The information presented is insufficient to establish that Maebotoke’s
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`method necessarily produces a buffer layer having a non-single crystalline
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`structure. Petitioner argues that Maebotoke’s buffer layer “is grown at a low
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`temperature of 300–450o C—a temperature very similar to the temperature range
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`of 100–400o C, which the ’738 patent allegedly teaches as forming a ‘non-single
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`crystalline’ buffer” layer. Pet. 34; see Ex. 1002, p. 5 (buffer layer 2 is formed on a
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`substrate at a temperature of 300–450o C).
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`Maebotoke, in fact, grows buffer layer 2 “to a thickness of 1,000 Å-7,000 Å”
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`via “a high frequency sputtering method” defined by, for example, sputter gas
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`pressure, argon-to-nitrogen ratio, sputter power, and DC bias voltage. Ex. 1002,
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`p. 5. The ’738 patent, by contrast, discloses a method of growing a buffer layer to
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`“a thickness of 200-500 Å” via an ECR-assisted MBE method defined by, for
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`example, microwave power, electromagnet positioning, and cyclotron frequency.
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`Ex. 1001, col. 2, ll. 9-17, 40; col. 3, l. 38-col. 4, l. 26. Petitioner does not address
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`these differences in process conditions. Pet. 34 (citing Ex. 1016, ¶¶ 28-29)
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`(addressing the overlapping temperature ranges but no other process conditions).
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`On this record, we are not persuaded that the conditions disclosed in
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`Maebotoke for forming buffer layer 2 are substantially identical to the conditions
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`disclosed in the ’738 patent for forming the specified buffer layer. Pet. 34-35.
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`Petitioner’s premise that these divergent processes produce buffer layers of similar
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`structure is unsupported by objective evidence—for example, experimental data—
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`tending to establish the crystallographic properties of a buffer layer made under the
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`conditions disclosed in Maebotoke. Id.
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`Petitioner suggests that Maebotoke’s sputtering method necessarily produces
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`a “polycrystalline” buffer layer, because the ’738 patent reports that another
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`sputtering method, attributed to a different researcher, produces a “polycrystalline”
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`GaN film. Pet. 34 (citing Ex. 1001, col. 1, ll. 46-50). Specifically, the ’738 patent
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`cites an article, attributed to “E. Lakshmi, et al.” Ex. 1001, col. 1, l. 50. The ’738
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`patent does not disclose the sputtering conditions under which Lakshmi attains a
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`“polycrystalline” film. Id. at col. 1, ll. 46-50. Petitioner comes forward with no
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`evidence describing Lakshmi’s conditions, much less establishing that Lakshmi’s
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`conditions are substantially identical to Maebotoke’s conditions. Pet. 34.
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`Critically lacking is any information from which we reasonably can conclude that
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`Maebotoke’s sputtering method necessarily produces a buffer layer having a
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`“polycrystalline” structure similar to Lakshmi’s GaN film.
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`Petitioner submits that, “[t]o the extent the [Board] does not find that
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`Maebotoke discloses a ‘non-single crystalline’ buffer layer, this would have at
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`least been obvious” because “Manabe discloses a buffer layer grown to have a
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`polycrystalline structure.” Id. In particular, Petitioner argues that, where Manabe
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`discloses that a polycrystalline buffer layer improves the monocrystallinity of a
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`growth layer formed thereupon, “it would have been obvious to one skilled in the
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`art to control the growth conditions of buffer layer 2 of Maebotoke so that the
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`resulting buffer layer 2 was polycrystalline.” Id. at 34-35.
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`Petitioner directs us to no persuasive evidence that Maebotoke was
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`concerned with “trying to form monocrystalline layers on the buffer.” Id. at 35
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`(citing disclosures in Maebotoke that refer to “crystallinity” but not
`
`monocrystallinity). Specifically, Petitioner identifies no information that links
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`Maebotoke’s references to improved “crystallinity” with an implied desire to grow
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`monocrystalline GaN film. Id. (citing Ex. 1002, pp. 3, 6). But for that desire,
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`Petitioner advances no reason why a skilled artisan would have been led to modify
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`Maebotoke’s conditions to produce a “polycrystalline” buffer layer. Id. at 34-35.
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`In any event, Petitioner does not show sufficiently that it would have been
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`within the level of ordinary skill in the art “to control the growth conditions” in
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`Maebotoke “so that the resulting buffer layer 2 [is] polycrystalline.” Id. at 35.
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`Petitioner identifies no particular process modification that would have permitted
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`control over the crystallographic properties of Maebotoke’s buffer layer 2, much
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`less a modification that would have been routine, or otherwise within the technical
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`reach of a skilled artisan. See id. at 12 (a “highly defective” GaN growth layer is
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`not necessarily “polycrystalline or amorphous; it can also be monocrystalline”).
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`We are not persuaded that there is a reasonable likelihood that Petitioner
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`would prevail at trial with respect to at least one claim of the ’738 patent, based on
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`an inherent disclosure in Maebotoke of the non-single crystalline GaN buffer layer
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`specified in claims 1-14 and 20.
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`D. Anticipation Ground Based On Maebotoke
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`Petitioner asserts that Maebotoke anticipates claims 18 and 19 of the ’738
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`patent. Pet. 57-58. Specifically, Petitioner argues that Maebotoke inherently
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`describes the specified “non-single crystalline” GaN buffer layer. Id. at 57
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`(suggesting that arguments directed to claim 1, which specifies “a non-single
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`crystalline buffer layer of GaN,” apply to claims 18 and 19). Our above inherency
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`analysis applies with equal force to this anticipation ground. For the reasons set
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`forth above, Petitioner does not establish that Maebotoke inherently describes “a
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`non-single crystalline buffer layer of GaN.” Id.
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`We are not persuaded that there is a reasonable likelihood that Petitioner
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`would prevail at trial with respect to at least one claim of the ’738 patent, based on
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`anticipation of claims 18 and 19 by Maebotoke.
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`E. Obviousness Grounds Based on Carter’s Disclosure
` Of a Growth Layer Formed in an MBE Growth Chamber
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`Petitioner advances information that claims 16 and 21 are unpatentable over
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`Manabe and Carter. Pet. 30-32. Petitioner raises similar information in the context
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`of a further assertion that claims 16, 17, and 21 are unpatentable over Maebotoke,
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`Manabe, and Carter. Id. at 53-57.
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`Claims 16, 17, and 21 specify a semiconductor device having a “growth
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`layer grown . . . in a molecular beam epitaxial growth chamber.” Ex. 1001,
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`16
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`claims 16, 17 (depending from claim 16), 21. The crux of Petitioner’s argument is
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`that such a device, having a growth layer grown in this manner, would have been
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`obvious over the combined teachings of the applied art. Pet. 30-32, 53-57.
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`1. Obviousness of Claims 16 and 21 over Manabe and Carter
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`Petitioner acknowledges that Manabe does not disclose a growth layer
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`grown in an MBE growth chamber as specified in claims 16 and 21. Pet. 31.
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`Manabe, in fact, discloses a halide vapor phase (HVP) method for growing a first
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`growth layer (N layer 4), and a metal-organic vapor phase epitaxy (MOVPE)
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`method for growing a second growth layer (N layer 8). Ex. 1003, p. 3, Fig. 2.
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`Carter discloses an MBE method for growing monocrystalline GaN.
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`Ex. 1004, col. 7, l. 15; col. 8, ll. 7-9. Petitioner advances information that it would
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`have been obvious to replace one of Manabe’s growth layers with a
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`monocrystalline GaN layer made according to Carter’s MBE method. Pet. 31
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`(citing Ex. 1004, col. 8, ll. 7-9). That information is unpersuasive because, in
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`Carter’s MBE method, monocrystalline GaN is grown on a silicon carbide or
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`sapphire substrate without any intervening buffer layer. Ex. 1004, col. 7, ll. 13-21;
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`col. 10, ll. 33-35; col. 12, ll. 22-26; col. 13, ll. 19-34, 43-56, Figs. 1-3. Petitioner
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`identifies no persuasive evidence that a skilled artisan would have recognized
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`Carter’s MBE growth method, performed on a substrate, as interchangeable with
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`Manabe’s HVP or MOVPE growth method, performed on a buffer layer. Pet. 31.
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`In this regard, Petitioner argues that “it would have been obvious to one of
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`skill in the art to choose a different growth method,” in place of the growth
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`methods disclosed in Manabe, “after balancing different factors, such as cost, time,
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`and growth results.” Id. (citing Ex. 1016, ¶ 42). For support, Petitioner cites
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`evidence that relates to a “sputtering process” disclosed in Maebotoke—a
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`reference not applied in this ground. Ex. 1016, ¶ 42. Moreover, that evidence is
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`directed to Maebotoke’s sputtering method for forming a buffer layer, not the
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`“organic metal vapor phase growth method” by which Maebotoke forms the
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`growth layer. Ex. 1002, pp. 6-7.
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`On this record, Petitioner fails to articulate a rational reason why the applied
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`art would have prompted a skilled artisan to replace Manabe’s HVP or MOVPE
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`growth method with Carter’s MBE growth method. Pet. 31; see KSR Int’l Co. v.
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`Teleflex Inc., 550 U.S. 398, 418 (2007) (“it can be important to identify a reason
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`that would have prompted a person of ordinary skill in the relevant field to
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`combine elements in the way the claimed new invention does”). In particular,
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`Petitioner directs us to no principle or understanding, within the reach of a skilled
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`artisan, that would have suggested the precise arrangement of elements specified in
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`claims 16 and 21. Pet. 31-32; compare Ex. 1001, col. 4, ll. 41-51, Figs. 2a, 2b
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`(explaining, with experimental data, the benefit of growing monocrystalline GaN
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`“on top of” a buffer layer, so that the film “does not see the underlying substrate”).
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`We are not persuaded that there is a reasonable likelihood that Petitioner
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`would prevail at trial with respect to at least one claim of the ’738 patent, based on
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`obviousness of claims 16 and 17 over Manabe and Carter.
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`2. Obviousness of Claims 16, 17, and 21
` Over Maebotoke, Manabe,
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