IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Tien Yang Wang
`In re Patent of:
`6,936,851 Attorney Docket No.: 43849-0001IP1
`U.S. Patent No.:
`August 30, 2005
`
`Issue Date:
`Appl. Serial No.: 10/394,686
`
`Filing Date:
`March 21, 2003
`
`Title:
`Semiconductor Light-Emitting Device and Method for
`Manufacturing the Same
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 6,936,851 PURSUANT TO 35 U.S.C. §§ 311–319, 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 22313-1450
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`NICHIA EX2015
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`Attorney Docket No. 43849-0001IP1
`IPR of U.S. Patent No. 6,936,851
`TABLE OF CONTENTS
`
`I. 
`
`2. 
`3. 
`4. 
`
`THE PRESENT PETITION SHOULD NOT BE DENIED
`CONSIDERATION BASED ON PRIOR PETITIONS FILED BY OTHERS
` ......................................................................................................................... 2 
`II.  GROUNDS FOR STANDING AND CHALLENGE UNDER 37 C.F.R. §
`42.104 .............................................................................................................. 4 
`A.  Grounds for Standing Under 37 C.F.R. § 42.104(a)................................. 4 
`B.  Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested ............... 4 
`III.  THE ’851 PATENT ......................................................................................... 5 
`A.  Overview ................................................................................................... 5 
`B.  Claim Construction under 37 C.F.R. §§ 42.104(b)(3) .............................. 8 
`1. 
`“whereby said plurality of inclined lower portions are configured
`to guide extended lattice defects away from propagating into the
`active layer” (claims 1 and 15) ........................................................ 9 
`“etched trenches” (claims 1 and 15) .............................................. 12 
`“micro-facets” (claims 1 and 15) .................................................. 13 
`“a sloped etching profile with a smooth rotation of micro-facets”
`(claim 1) ........................................................................................ 13 
`“a sloped etching profile…without a prescribed angle of
`inclination” (claims 1 and 15) ....................................................... 17 
`“lattice-mismatched misfit system” (claims 1 and 15) ................. 17 
`6. 
`C.  Level of Ordinary Skill in the Art as of the Critical Date ...................... 18 
`IV.  MANNER OF APPLYING CITED PRIOR ART TO EVERY CLAIM FOR
`WHICH AN IPR IS REQUESTED, THUS ESTABLISHING A
`REASONABLE LIKELIHOOD THAT AT LEAST ONE CLAIM OF THE
`’851 PATENT IS UNPATENTABLE .......................................................... 19 
`A.  Niki 19 
`1.  Overview ....................................................................................... 19 
`2. 
`[GROUND 1] – Claims 1-3 and 15-18 are obvious over Niki
`under 35 U.S.C. § 103 ................................................................... 20 
`V.  MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ......................... 43 
`A.  Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) .............................. 43 
`B.  Related Matters Under 37 C.F.R. § 42.8(b)(2) ....................................... 43 
`C.  Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) .................... 44 
`D.  Service Information ................................................................................ 44 
`VI.  PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................. 44 
`
`5. 
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`Attorney Docket No. 43849-0001IP1
`IPR of U.S. Patent No. 6,936,851
`VII.  CONCLUSION .............................................................................................. 45 
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`Attorney Docket No. 43849-0001IP1
`IPR of U.S. Patent No. 6,936,851
`
`
`
`EXHIBITS
`
`TCL-1001
`
`U.S. Patent No. 6,936,851 to Wang (“the ’851 patent”)
`
`TCL-1002
`
`Prosecution History of the ’851 Patent (“the Prosecution
`History”)
`
`TCL-1003
`
`Declaration of Dr. W.R. Bottoms
`
`TCL-1004
`
`Curriculum Vitae of Dr. W.R. Bottoms
`
`TCL-1005
`
`(Reserved)
`
`TCL-1006 U.S. Patent No. 5,718,738 (“Kohnke”)
`
`TCL-1007 U.S. Patent No. 5,874,747 (“Redwing”) 
`
`TCL-1008
`
`U.S. Patent No. 6,870,191 (“Niki”)
`
`TCL-1009
`
`TCL-1010
`
`TCL-1011
`
`Lexington Luminance LLC’s Response in Opposition to Feit
`Electric Company’s Motion for Summary Judgment of Non-
`Infringement, filed October 1, 2013 in Lexington v. Feit
`Electric, Case No. No. 1:12-cv-11554-WGY (D. Mass), Paper
`128.
`
`Opening Expert Report of David P. Bour, Ph.D. Concerning
`Infringement of Lexington Luminance’s Patent, filed July 9,
`2013 in Lexington v. Feit Electric, Case No. No. 1:12-cv-
`11554-WGY (D. Mass), Paper 132-3.
`
`Declaration of Dr. David P. Bour, filed October 1, 2013 in
`Lexington v. Feit Electric, Case No. No. 1:12-cv-11554-WGY
`(D. Mass), Paper 131.
`
`TCL-1012
`
`Schubert, Light-Emitting Diodes: Second Edition, pp. 212, 223,
`Cambridge Press (2006) (“Schubert”)
`
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`TCL-1013
`
`TCL-1014
`
`TCL-1015
`
`TCL-1016
`
`TCL-1017
`
`Attorney Docket No. 43849-0001IP1
`IPR of U.S. Patent No. 6,936,851
`Huang et al., High-efficiency InGaN-based LEDs grown on
`patterned sapphire substrates, Optics Express, Vol. 19, No. S4
`(2011) (“Huang”)
`
`Lexington Luminance LLC v. Amazon.com Inc., 601 F. App’x
`963 (Fed. Cir. 2015) (“Federal Circuit Claim Construction
`Order”)
`
`Claim Construction Memorandum and Order, Lexington
`Luminance v. Amazon.com et al., Case No. 12-cv-12216-DJC,
`Paper 196, entered April 4, 2016 (D. Mass) (“Amazon Claim
`Construction Order”)
`
`Claim Construction Memorandum and Order, Lexington
`Luminance v. Google, Case No. 12-12218-RGS, Paper 113,
`entered March 29, 2016 (D. Mass) (“Google Claim
`Construction Order”)
`
`Lexington Luminance LLC’s Claim Construction Reply Brief,
`Lexington Luminance v. Amazon.com et al., Case No. 12-cv-
`12216-DJC, Paper 133, entered September 29, 2015 (D. Mass)
`(“Lexington Claim Construction Brief”)
`
`TCL-1018
`
`Excerpts from File History of Reexamination No. 90/012,964
`
`TCL-1019
`
`TCL-1020
`
`TCL-1021
`
`
`
`LG Innotek v. Lexington Luminence, LLC, IPR2017-00052,
`Paper 7 (Institution Decision) (PTAB March 30, 2017)
`
`Samsung Electronics Co., Ltd. v. Lexington Luminance, LLC,
`IPR2017-00539, Paper 8 (Institution Decision) (PTAB June 20,
`2017)
`
`Samsung Electronics Co., Ltd. v. Lexington Luminance, LLC,
`IPR2017-00540, Paper 8 (Institution Decision) (PTAB June 20,
`2017)
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`Attorney Docket No. 43849-0001IP1
`IPR of U.S. Patent No. 6,936,851
`TCL Corporation, TCL Multimedia Technology Holdings, Ltd., and TTE
`
`Technology, Inc. (collectively “Petitioner”) requests Inter Partes Review (“IPR”)
`
`under 35 U.S.C. §§ 311–319 and 37 C.F.R. § 42 of claims 1-3 and 15-18 (“the
`
`Challenged Claims”) of U.S. Patent No. 6,936,851 (“the ’851 patent”). The
`
`Challenged Claims are unpatentable based on teachings set forth in at least the
`
`references presented in this Petition. An IPR should therefore be instituted, and the
`
`Challenged Claims canceled as unpatentable.
`
`The ’851 patent is directed to a “[s]emiconductor light emitting device”
`
`including a substrate having a number of etched trenches with a sloped etching
`
`profile formed therein. See ’851 patent, Abstract. The device also includes a first
`
`layer disposed on the substrate, and an active layer disposed on the first layer. See
`
`id. The shape of the etched trenches is credited with causing lattice defects
`
`occurring in the first layer to be directed away from the active layer, thereby
`
`reducing the defect density in the active layer. See id. at 1:10-12.
`
`Allowance of the current claims followed allegations that the prior art lacked
`
`sloped etched trenches having a sloped etching profile with a smooth rotation of
`
`microfacets without a prescribed angle of inclination. Ex. 1018, p. 6 (“There is not
`
`taught or suggested in the prior art ‘a plurality of etched trenches having a sloped
`
`etching profile with a smooth rotation of microfacets without a prescribed angle of
`
`inclination’”). However, U.S. Patent No. 6,870,191 to Niki (Ex. 1008, “Niki”)
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`Attorney Docket No. 43849-0001IP1
`IPR of U.S. Patent No. 6,936,851
`clearly demonstrates that this is untrue, as it describes a substrate having the same
`
`structure that the ’851 patent describes as corresponding to this limitation. As
`
`shown by this comparison of figures from the ’851 patent and Niki, with regard to
`
`the purported point of novelty – the sloped etched trenches, the configuration of
`
`the substrate and first layer in the device of Niki is not distinguishable from that of
`
`the ’851 patent:
`
`
`
`
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`Moreover, as described in detail below, the subject matter recited by the
`
`Challenged Claims of the ’851 patent is otherwise fully described in the earlier-
`
`filed Niki patent, revealing the unpatentability of the Challenged Claims.
`
`I.
`
`THE PRESENT PETITION SHOULD NOT BE DENIED
`CONSIDERATION BASED ON PRIOR PETITIONS FILED BY
`OTHERS
`The present Petition presents a single ground of rejection based on the Niki
`
`reference. Although this reference has been previously included within IPR
`
`petitions filed by other petitioners,1 the present Petition presents Niki in a new and
`
`
`1 See, e.g., LG Innotek v. Lexington, IPR2017-00052 (PTAB October 18, 2016)
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`2
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`Attorney Docket No. 43849-0001IP1
`IPR of U.S. Patent No. 6,936,851
`different light, and it includes additional arguments not presented in the previous
`
`proceedings. Moreover, it is unjust for those prior and independent petitions to be
`
`used to deprive this petitioner of its opportunity to be heard (and thus, defend itself
`
`from Lexington’s aggression) on its novel application of the Niki prior art.
`
`Regarding the differences between the previous challenges and the present
`
`one, by way of example, the present Petition reveals very limited written
`
`description relating to a feature of the independent claims (i.e.,“whereby said
`
`plurality of inclined lower portions are configured to guide extended lattice defects
`
`away from propagating into the active layer” that was added by amendment) and it
`
`highlights comprehensive disclosure of that feature within Niki. See [1.6], infra.
`
`Due to restrictions on grounds eligible for consideration in IPR, the Petition avoids
`
`the adequacy of the ’851 patent’s written description. See 35 U.S.C. § 311(b).
`
`Rather, the Petition and supporting evidence focus on the limited written
`
`description provided by the ’851 patent for the whereby clause claim element, and
`
`corresponding and comprehensive disclosure within Niki. In greater detail,
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`written description for the whereby clause is limited to the first layer having lower
`
`inclined portions disposed on the textured district of the substrate. See [1.6], infra.
`
`By disclosing a first layer disposed on the textured district of the substrate, with a
`
`structure indistinguishable from the corresponding structure disclosed in the ’851
`
`patent specification, Niki demonstrates its comprehensive disclosure of the recited
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`Attorney Docket No. 43849-0001IP1
`IPR of U.S. Patent No. 6,936,851
`defect propagation properties attributed to only these portions by the ’851 patent
`
`specification. See [1.1]-[1.4], [1.6], infra.
`
`This argument was not presented in the prior IPR challenges to the ’851
`
`patent.
`
`II. GROUNDS FOR STANDING AND CHALLENGE UNDER 37
`C.F.R. § 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ’851 patent is available for IPR. The present
`
`Petition is being filed within one year of service of a complaint against the
`
`Petitioner of infringement of the ’851 patent. Petitioner is not barred or estopped
`
`from requesting this review challenging the Challenged Claims on the below-
`
`identified grounds.
`
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`Petitioner requests an IPR of the Challenged Claims on the grounds set forth
`
`in the table shown below, and that the Challenged Claims be found unpatentable.
`
`An explanation of how these claims are unpatentable under the statutory grounds is
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`provided below, including claim construction as appropriate and an indication of
`
`where each element can be found in the cited prior art. Additional explanation and
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`support for each ground is set forth in Exhibit TC-1003, the Declaration of Dr.
`
`W.R. Bottoms (“Dec.”), referenced throughout this Petition.
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`’851 Patent Claims
`Ground
`Ground 1 1-3 and 15-18
`
`Attorney Docket No. 43849-0001IP1
`IPR of U.S. Patent No. 6,936,851
`Basis for Rejection
`Obvious over Niki - 35 U.S.C. § 103
`
`The ’851 patent issued from U.S. Application No. 10/394,686, filed March
`
`21, 2003, and does not include a priority claim. Accordingly, the earliest possible
`
`priority date for the ’851 patent is March 21, 2003 (hereinafter the “Critical Date”).
`
`U.S. Patent No. 6,870,191 (Ex. 1008, “Niki”) was filed July 24, 2002, more
`
`than 9 months before the Critical Date, and thus qualifies as prior art at least under
`
`35 U.S.C § 102(e).
`
`III. THE ’851 PATENT
`A. Overview
`The ’851 patent, entitled “Semiconductor Light-Emitting Device and
`
`Method for Manufacturing the Same,” describes its subject matter as “relat[ing]
`
`generally to the fabrication of semiconductor devices such as light-emitting
`
`devices in misfit systems.” ’851 patent, 1:8-10. Such “misfit systems” (or “lattice-
`
`mismatched systems”) involve the deposition of a layer with a particular crystal
`
`structure over a substrate with a different crystal structure. See id. at 1:18-20;
`
`Dec., ¶ 9. The patent describes that, in such systems, “layer disposition over
`
`prescribed surface feature[s] is highly sensitive to the etching defects” in the
`
`surface of the substrate. ’851 patent, 1:67-2:1. These etching defects include
`
`“sharp corners and abrupt changing curvature” in the surface of the substrate. Id.
`
`at 2:5-6. The patent describes that the etching defects can cause lattice defects
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`Attorney Docket No. 43849-0001IP1
`IPR of U.S. Patent No. 6,936,851
`(e.g., dislocations) that can “propagate” from the substrate upwards through the
`
`deposited layer into an “active layer” formed above it, thereby “causing premature
`
`degradation of the device.” Id. at 2:7-8.
`
`The ’851 patent proposes to curb this deficiency by forming a “textured
`
`district” in the substrate including “trenches” having a sloped, smooth etching
`
`profile. See id. at 2:12-26. FIG. 2B shows an example substrate including these
`
`trenches:
`
`
`
`The ’851 patent states that, to form trenches having this etching profile, “the
`
`substrate is patterned using conventional lithographic methods,” and then
`
`processed to “smooth out sharp corners and etching defects.” Id. at 2:28-30. The
`
`patent describes that when a layer having a different crystal structure is formed
`
`over the substrate, the smooth shape of the etched trenches causes lattice defects to
`
`be “inclined away from propagating upwards” through the deposited layer to the
`
`layers above it. Id. at 4:56-58. The patent states that “[t]he smooth surface feature
`
`in the present invention is essential for the deposition of low defect density
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`Attorney Docket No. 43849-0001IP1
`IPR of U.S. Patent No. 6,936,851
`structures suitable for device applications.” Id. at 4:34-37.
`
`The claims of the ’851 patent are similarly directed to a “semiconductor
`
`light-emitting device” including “a substrate” with a “textured district defined on
`
`the surface” that includes “a plurality of etched trenches having a sloped etching
`
`profile.” See id. at claim 1. Independent claim 1 is generally representative, and
`
`recites:
`
`
`
`1.
`
` A semiconductor light-emitting device comprising:
`a substrate;
`a textured district defined on the surface of said
`substrate comprising a plurality of etched trenches having
`a sloped etching profile with a smooth rotation of micro-
`facets without a prescribed angle of inclination;
`a first layer disposed on said textured district,
`comprising a plurality of inclined lower portions, said first
`layer and said substrate form a lattice-mismatched misfit
`system, said substrate having at least one of a group
`consisting of group III-V, group IV, group II-VI elements
`and alloys, ZnO, spinel and sapphire; and
`a light-emitting structure containing an active layer
`disposed on said first layer, whereby said plurality of
`inclined lower portions are configured to guide extended
`lattice defects away from propagating into the active layer.
`
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`Attorney Docket No. 43849-0001IP1
`IPR of U.S. Patent No. 6,936,851
`B. Claim Construction under 37 C.F.R. §§ 42.104(b)(3)
`A claim subject to IPR is given its “broadest reasonable construction in light
`
`of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b). As
`
`such, Petitioner submits that all claim terms, including those discussed below,
`
`should be given their broadest reasonable meaning in this proceeding.
`
`Several terms of the ’851 patent have been previously construed under the
`
`Phillips standard by the Federal Circuit and the Massachusetts District Court. See
`
`Federal Circuit Claim Construction Order (Ex. 1014) at 11; D. Mass Amazon
`
`Claim Construction Order (Ex. 1015) at 11-26; D. Mass Google Claim
`
`Construction Order (Ex. 1016) at 6-18. Under the broadest reasonable
`
`interpretation (BRI) standard, a proper construction “of a claim term may be the
`
`same as or broader than the construction of a term under the Phillips standard,” but
`
`“it cannot be narrower.” Facebook, Inc. v. Pragmatus AV, LLC, 2014 WL
`
`4454956, 4 (Fed. Cir. Sep. 11, 2014) (non-precedential); see also Ariosa Diag. v.
`
`Isis Innov., IPR2012-00022, Paper 166 at (PTAB September 2, 2014) (hereinafter
`
`“Ariosa”) (finding it “incongruous to adopt a narrower construction” under BRI
`
`than adopted in a previous case “in which [the] narrower, Phillips construction
`
`standard applied”). Accordingly, Petitioner submits that the broadest reasonable
`
`interpretation of the terms discussed below is at least as broad as the previous
`
`interpretation under Phillips.
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`1.
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`Attorney Docket No. 43849-0001IP1
`IPR of U.S. Patent No. 6,936,851
`“whereby said plurality of inclined lower portions are
`configured to guide extended lattice defects away
`from propagating into the active layer” (claims 1 and
`15)
`Claims 1 and 15 recite “whereby said plurality of inclined lower portions are
`
`configured to guide extended lattice defects away from propagating into the active
`
`layer.” Whether the Board maintains its previous construction of this whereby
`
`clause as reciting “a structural limitation,” or adopts Patent Owner’s district court
`
`position that this language is “not a limitation of the claim,” the cited Niki
`
`reference nonetheless teaches this claim feature.
`
`The Board’s previous construction
`In its Institution Decision in the prior IPR filed by LG, the Board stated that
`
`(a)
`
`“the capability recited in the whereby clause constitutes a structural limitation.”
`
`Ex. 1019, p. 11. Under this construction, the claim should be interpreted to be met
`
`simply by a first layer disposed on, and thus following the contours of, the claimed
`
`substrate surface features, including the configuration described in Figure 2B of
`
`the ’851 patent, as shown below:
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`Attorney Docket No. 43849-0001IP1
`IPR of U.S. Patent No. 6,936,851
`’851 patent, Detail of FIG. 2B (annotated)
`
`Neither the claim language itself nor the specification of the ’851 patent
`
`describe that this property of the inclined lower portions is the product of anything
`
`more than the first layer being “disposed on” the claimed textured district in the
`
`substrate. The ’851 specification does not describe any particular deposition
`
`technique for the first layer as giving rise to the claimed defect propagation
`
`property. In fact, the ’851 patent describes that it is the mere deposition of the first
`
`layer on the claimed surface features that gives rise to the defect propagation
`
`properties of the inclined lower portions of first layer. See, e.g., ’851 patent, 4:47-
`
`61 (describing the first layer “deposition over the textured substrate surface” giving
`
`rise to the defect propagation property without describing any particular
`
`mechanism for depositing the first layer); Dec., ¶ 34.
`
`To the extent the shape of the lower inclined portions is interpreted to give
`
`rise to the claimed property, the shape of these lower inclined portions of the first
`
`layer is a product, and follows the contours of the shape of the surface features of
`
`the underlying substrate. A layer “disposed on” a substrate, as the first layer is on
`
`the textured district of the claimed substrate, necessarily follows the surface shape
`
`of the substrate. Dec., ¶ 36. The shape of the inclined lower portions of the first
`
`layer is thus dictated by the shape of the textured district upon which the first layer
`
`is formed. See id. Indeed, as shown in FIGS. 2A and 2B, the ’851 patent confirms
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`Attorney Docket No. 43849-0001IP1
`IPR of U.S. Patent No. 6,936,851
`that the shape of the first layer, and thus the inclined lower portions of the first
`
`layer, varies based on, and is thus determined by, the shape of the underlying
`
`substrate surface features:
`
`
`
`The ’851 specification further confirms that the shape of the substrate
`
`surface features gives rise to the defect propagation, stating that “lattice defects are
`
`guided to and contained in designated locations defined by textured
`
`districts on the substrate surface.” ’851 patent, 1:10-12.
`
`
`
`Accordingly, under the Board’s previous construction, the language of the
`
`whereby clause is met by a teaching of a first layer disposed on curved surface
`
`features in a substrate, such as those described in Niki.
`
`(b)
`
`Patent Owner previously argued that this claim
`language is not a limitation
`In its district court briefing, Patent Owner argued that this term “is not a
`
`limitation of the claim” because it “states the result of the shape of the ‘inclined
`
`lower portions[.]’” Ex. 1017, p. 3.
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`Attorney Docket No. 43849-0001IP1
`IPR of U.S. Patent No. 6,936,851
`The Federal Circuit has held that a “’whereby’ clause that merely states the
`
`result of the limitations in the claim adds nothing to the patentability or substance
`
`of the claim,” and thus is entitled to no weight. Texas Instruments v. US Intern.
`
`Trade Com'n, 988 F. 2d 1165, 1172 (Fed. Cir. 1993); see also Hoffer v. Microsoft
`
`Corp., 405 F.3d 1326, 1329 (Fed. Cir. 2005) (a whereby clause “is not given
`
`weight when it simply expresses the intended result” of the claim); Minton v. Nat'l
`
`Ass'n of Securities Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003). The Court
`
`has also noted that a whereby clause “generally states the result of the patented
`
`process,” and thus is not given weight unless it “states a condition that is material
`
`to patentability.” Hoffer, 405 F.3d at 1329.
`
`Based on this line of cases, the Patent Owner took the position in litigation
`
`that “the ‘whereby’ clause that states the result of the shape of the ‘inclined lower
`
`portions’ appearing in claims 1 and 15 is not a limitation of the claim. Ex. 1017, p.
`
`3. Petitioner requests that the Board consider Patent Owner’s previous argument in
`
`construing this claim language under BRI.
`
`2.
`“etched trenches” (claims 1 and 15)
`Claims 1 and 15 recite “a textured district defined on the surface of said
`
`substrate comprising a plurality of etched trenches.” (Emphasis added). Petitioner
`
`submits that the broadest reasonable interpretation of “etched trenches” is broad
`
`enough to encompass “areas in the surface of the substrate from which some
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`Attorney Docket No. 43849-0001IP1
`IPR of U.S. Patent No. 6,936,851
`amount of material is removed in order to create a pattern on the surface of the
`
`substrate.” This interpretation is consistent with the Federal Circuit’s previous
`
`construction of this claim term of the ’851 patent under the Phillips standard. See
`
`Ex. 1014 at 14.
`
`3.
`“micro-facets” (claims 1 and 15)
`Petitioner submits that the broadest reasonable interpretation of “micro-
`
`facets” is broad enough to encompass “very small planar crystal surfaces.” This
`
`interpretation is consistent with the Federal Circuit’s previous construction of this
`
`claim term of the ’851 patent under the Phillips standard. See Ex. 1014 at 15.
`
`4.
`
`“a sloped etching profile with a smooth rotation of
`micro-facets” (claim 1)
`Petitioner submits that the broadest reasonable interpretation of the term “a
`
`sloped etching profile with a smooth rotation of micro-facets” is broad enough to
`
`encompass “sloped etched sides without sharp corners.”
`
`This interpretation is consistent with the specification of the ’851 patent.
`
`For example, the ’851 patent explains that profiles with sharp corners can cause
`
`“adverse micro-faceting and layer deterioration.” ’851 patent, 2:1-6. Similarly, the
`
`’851 patent describes how “sharp corners and etching defects [] may cause
`
`excessive layer distortion during the layer deposition.” Id. at 4:2-4.
`
`This interpretation is also consistent with how a POSITA would have
`
`understood the term “a sloped etching profile with a smooth rotation of micro-
`
`13
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`NICHIA EX2015
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`

`

`Attorney Docket No. 43849-0001IP1
`IPR of U.S. Patent No. 6,936,851
`facets” as of the Critical Date of the ’851 patent. Dec., ¶ 20. A structured surface
`
`formed on a single crystal material, such as sapphire, is made up of a collection of
`
`“very small planar crystal surfaces” or “micro-facets.” Id. In a curved surface
`
`shape formed on such a material, the orientation of the micro-facets changes along
`
`the curved contour in a smooth rotation. Id. As a result, the surface contour lacks
`
`sharp corners. Id.
`
`For example, curved protrusions formed by etching into a sapphire substrate,
`
`such as those shown in the following figure from Niki, include a smooth rotation of
`
`micro-facets:
`
`
`
`This interpretation is also consistent with a previous construction of this
`
`term under the Phillips standard. In Patent Owner’s previous infringement suit
`
`against Amazon involving the ’851 patent, the District of Massachusetts construed
`
`this term, under Phillips, to mean “sloped etched sides without sharp corners.” Ex.
`
`1015 at 26.
`
`Interpreting “a sloped etching profile with a smooth rotation of micro-
`
`facets” to encompass “sloped etched sides without sharp corners” is also consistent
`
`14
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`NICHIA EX2015
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`

`

`Attorney Docket No. 43849-0001IP1
`IPR of U.S. Patent No. 6,936,851
`with the interpretation advanced by Patent Owner (under Phillips) in previous
`
`litigation. Specifically, in its suit against Feit Electric Co. for infringement of the
`
`’851 patent, Patent Owner asserted that curved protrusions in a sapphire substrate
`
`included “a sloped etching profile with a smooth rotation of micro-facets without a
`
`prescribed angle of inclination.” See, generally, Ex. 1009, Ex. 1010, Ex. 1011. In
`
`that case, Patent Owner asserted that this claim term was met by the curved
`
`protrusions in the following image:
`
`
`
`Patent Owner stated that the image above shows a product that “has used the
`
`substrate patterning of Lexington’s invention,” and that the trenches in the image
`
`have “a sloped etching profile with a smooth rotation of micro-facets without a
`
`prescribed angle of inclination.” Ex. 1009, pp. 1, 3-4. Patent Owner argued that
`
`the curved profile of the protrusions alone indicated the presence of the claimed
`
`15
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`NICHIA EX2015
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`

`

`Attorney Docket No. 43849-0001IP1
`IPR of U.S. Patent No. 6,936,851
`sloped etching profile and micro-facet configuration, stating that “surfaces of
`
`crystalline materials, such as the sapphire used as the substrate material in the
`
`LEDs of the accused products are made up of a collection of microfacets.” Id. at
`
`3-4 (emphasis added). Patent Owner’s expert, Dr. David Bour, supported this
`
`interpretation by stating the following:
`
`On an atomic scale, all surfaces exhibit roughness. A
`fundamental property of a structured surface formed on a
`single crystal material, is that it tends to comprise a
`collection of microfacets. These are crystal planes, locally
`smooth, and of submicron dimension. The orientation of
`these microfacets changes along the curved contour, to
`form the much larger-scale surface feature. Thereby,
`curved bumps formed by etching into the sapphire
`substrate of these LEDs, are an aggregate of these
`microfacets.
`
`Ex. 1010 at 32 (emphasis added). The expert also stated that “the angles of
`
`orientation between adjacent micro-facets do not abruptly change along the curve
`
`of a smooth crystal material” such as sapphire. See Ex. 1011 at ¶¶13-15.
`
`Accordingly, for at least the reasons above, the broadest reasonable
`
`interpretation of “a sloped etching profile with a smooth rotation of micro-facets”
`
`is broad enough to encompass “sloped etched sides without sharp corners.”
`
`Further, for at least the reasons discussed above, the term is also sufficiently broad
`
`16
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`NICHIA EX2015
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`

`

`Attorney Docket No. 43849-0001IP1
`IPR of U.S. Patent No. 6,936,851
`to encompass curved protrusions in a sapphire substrate, as taught by Niki. See
`
`Ground 1, [1.2], infra.
`
`5.
`
`“a sloped etching profile…without a prescribed angle
`of inclination” (claims 1 and 15)
`Petitioner submits that the broadest reasonable interpretation of the term “a
`
`sloped etching profile…without a prescribed angle of inclination” is broad enough
`
`to encompass “sloped etched sides without a specified angle of inclination.” This
`
`interpretation is consistent with a previous construction of the term under the
`
`Phillips standard. In Patent Owner’s previous infringement suit against Amazon
`
`involving the ’851 patent, the District of Massachusetts construed this term, under
`
`Phillips, to mean “sloped etched sides without a specified angle of inclination.”
`
`Ex. 1015 at 26. The Board adopted this construction in a prior IPR involving the
`
`’851 patent. See Ex. 1019, pp. 9-10.
`
` Accordingly, the broadest reasonable interpretation of “a sloped etching
`
`profile…without a prescribed angle of inclination” is broad enough to encompass
`
`“sloped etched sides without a specified angle of inclination.” See Ariosa at 24.
`
`6.
`“lattice-mismatched misfit system” (claims 1 and 15)
`Claims 1 and 15 recite that “said first layer and said substrate form a lattice-
`
`mismatched misfit system.” (Emphasis added). Petitioner submits that the
`
`broadest reasonable interpretation of the term “lattice-mismatched misfit system”
`
`is broad enough to encompass “a system in which a crystal layer exhibiting one
`
`17
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`NICHIA EX2015
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`

`

`Attorney Docket No. 43849-0001IP1
`IPR of U.S. Patent No. 6,936,851
`lattice constant is disposed on a substrate that exhibits a different lattice constant.”
`
`This interpretation is consistent with previous constructions of the term under the
`
`Phillips standard. In Patent Owner’s previous infringement suits in the District of
`
`Massachusetts against Amazon and Google involving the ’851 patent, the parties
`
`agreed on the same construction for this term: “a system in which a crystal layer
`
`exhibiting one lattice constant is disposed on a substrate that exhibits a different
`
`lattice constant.” Ex. 1015 at 10; Ex. 1016 at 13. Accordingly, the broadest
`
`reasonable interpretation of this term should be broad enough to encompass this
`
`construction.
`
`C. Level of Ordinary Skill in the Art as of the Critical Date
`A POSITA as of the Critical Date of the ’851 patent would have possessed
`
`at least a master’s degree (or a substantively equivalent degree) in materials
`
`science or physics, (or a substantively related field), in addition to two years of
`
`post-graduate work experience, whether in industry or conducting research, in the
`
`field of semiconductor design or engineering, in particular experience in epitaxial
`
`growth of compound semiconductor materials on a crystalline substrate.
`
`Additional education in a relevant field, such as electrical engineering, or industry
`
`exp