Trials@uspto.gov
`571-272-7822
`
`Paper No. 27
`Entered: September 17, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NICHIA CORPORATION,
`Petitioner,
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00965
`Patent 7,919,787 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, SCOTT C. MOORE, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`

`

`IPR2018-00965
`Patent 7,919,787 B2
`
`I. INTRODUCTION
`
`Nichia Corporation (“Petitioner”)1 filed a Petition for inter partes
`
`review of claims 1–14 of U.S. Patent No. 7,919,787 B2 (Ex. 1001, “the
`
`’787 patent”). Paper 2 (“Pet.”). Document Security Systems, Inc. (“Patent
`
`Owner”) filed a Preliminary Response. Paper 10 (“Prelim. Resp.”). Upon
`
`consideration of the Petition, we instituted an inter partes review, pursuant
`
`to 35 U.S.C. § 314, as to claims 1–14 based on all challenges set forth in the
`
`Petition. Paper 15 (“Decision on Institution” or “Dec.”).2
`
`Subsequent to institution, Patent Owner filed a Patent Owner
`
`Response (Paper 21, “PO Resp.”), and Petitioner filed a Reply to Patent
`
`Owner’s Response (Paper 24, “Reply”). Patent Owner elected not to file a
`
`Sur-Reply to Petitioner’s Reply. Paper 26; Ex. 3001. Neither party filed a
`
`request for oral argument, nor did we hold an oral argument. Paper 26; Ex.
`
`3001.
`
`A. Related Matters
`
`The parties indicate that the ’787 patent is the subject of several court
`
`proceedings. Pet. 1; Paper 3, 2. Application 11/838,301, which issued as
`
`the ’787 patent, was filed August 14, 2007, as a continuation-in-part of
`
`Application 10/608,605 (“the ’605 application”), filed June 27, 2003, which
`
`issued as U.S. Patent No. 7,256,486 B2 (“the ’486 patent”). Ex. 1001, at
`
`
`
`1 Petitioner, Nichia Corporation, identifies Nichia America Corporation as a
`real party-in-interest. Pet. 1.
`
`2 Everlight Electronics Co., Ltd. (“Everlight”) joined as a petitioner to this
`proceeding. IPR2018-01260, Paper 12. Everlight and Document Security
`Systems, however, entered into a settlement agreement, and we terminated
`the proceeding with respect to Everlight. Paper 25.
`
`2
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`

`

`IPR2018-00965
`Patent 7,919,787 B2
`
`codes (10), (21), (22), (63). The ’486 patent is involved in IPR2018-00333,
`
`IPR2018-01166, IPR2018-01205, IPR2018-01220, and IPR2018-01225.
`
`B. The ’787 Patent3
`
`The Specification of the ’787 patent describes a semiconductor device
`
`that includes a light emitting semiconductor die mounted on first and second
`
`electrically conductive bonding pads. Ex. 1001, 2:6–8. Figure 7B,
`
`reproduced below, shows an embodiment of a semiconductor device with a
`
`light emitting diode (LED) die.
`
`Figure 7B, reproduced above, shows a semiconductor device.
`
`
`
`
`
`3 Petitioner contends, with reasoning and supporting evidence, that the
`challenged claims of the ’787 patent are entitled only to the actual filing date
`of the ’787 patent, and not the filing date of the ’605 application. Pet. 4–5
`(citing Ex. 1003 ¶¶ 25–34). Patent Owner does not dispute Petitioner’s
`assertions. See PO Resp. Arguments not made in the Patent Owner
`Response are considered waived. Paper 16, 5. We agree with Petitioner’s
`showing, which we adopt, that the challenged claims of the ’787 patent are
`not entitled to priority to the ’605 application.
`
`3
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`

`

`IPR2018-00965
`Patent 7,919,787 B2
`
`As seen in Figure 7B, semiconductor device 700 includes substrate
`
`710, interconnecting elements 720 and 722, bonding pads 730 and 732,
`
`connecting pads 740 and 742, and LED die 750 with bond pads 760 and 762
`
`on the lower major surface of the LED die. Id. at 12:7–9, 12:35–39.
`
`Bonding pads 730 and 732 are “located on” upper major surface 712 of
`
`substrate 710. Id. at 12:21–22. Connecting pads 740 and 742 are located on
`
`lower major surface 714 of substrate 710. Id. at 12:31–32. Bond pads 760
`
`and 762 are located on the bottom major surface of the LED die and
`
`connected to the anode and cathode of the LED die. Id. at 12:40–42.
`
`C. Illustrative Claim
`
`Petitioner challenges claims 1–14 of the ’787 patent. Claims 1, 7, and
`
`11 are independent claims. Claim 1 is reproduced below.
`
`1. A semiconductor device comprising:
`
`a substantially planar substrate having first and second
`major surfaces, the first and second major surfaces being
`opposed surfaces; and
`
`a light emitting semiconductor die comprising a top major
`light emitting surface and an oppositely-disposed bottom major
`surface, the light emitting semiconductor die having an anode
`and a cathode on the bottom major surface of the light emitting
`semiconductor die, the anode and the cathode of the light
`emitting semiconductor die being electrically connected to first
`and second electrically conductive bonding pads located on the
`first major surface, the semiconductor light emitting die being
`mounted on at least the first electrically conductive bonding pad
`such that one of the anode and the cathode on the bottom major
`surface of the light emitting semiconductor die is electrically
`connected to the first electrically conductive bonding pad;
`
`first and second electrically conductive connecting pads
`located on the second major surface;
`
`4
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`IPR2018-00965
`Patent 7,919,787 B2
`
`a first electrically conductive interconnecting element
`electrically connected to the first electrically conductive bonding
`pad and the first electrically conductive connecting pad; and
`
`a second electrically conductive interconnecting element
`electrically connected to the second electrically conductive
`bonding pad and the second electrically conductive connecting
`pad,
`
`wherein the bottom major surface of the light emitting
`semiconductor die is a bottom surface of a substrate of the die,
`each of the anode and cathode comprises a metallization layer
`formed on the bottom major surface of the light emitting
`semiconductor die.
`
`Id. at 14:7–39.
`
`D. Instituted Grounds of Unpatentability
`
`We instituted trial based on all asserted grounds of unpatentability
`
`under 35 U.S.C. as follows (Dec. 5, 31):
`
`References
`
`Lumbard5 and Weeks6
`Lumbard and Wirth7
`Lumbard and Negley8
`
`Basis4
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`Challenged Claims
`
`1–14
`
`1–14
`
`1–14
`
`
`
`4 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the ’787
`patent has an effective filing date before the effective date of the applicable
`AIA amendments, we refer to the pre-AIA versions of 35 U.S.C. §§ 102 and
`103.
`5 U.S. Patent No. Re. 36,614, issued Mar. 14, 2000 (Ex. 1006, “Lumbard”).
`6 U.S. Patent No. 6,611,002, filed Feb. 23, 2001, issued Aug. 26, 2003
`(Ex. 1007, “Weeks”).
`7 WO 2005/081319, filed Feb. 18, 2005, issued Sept. 1, 2005 (Ex. 1008,
`“Wirth”).
`8 U.S. Patent Application Publication No. 2004/0217360 A1, filed Apr. 6,
`2004, published Nov. 4, 2004 (Ex. 1009, “Negley”).
`
`5
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`

`

`IPR2018-00965
`Patent 7,919,787 B2
`
`References
`
`Ishidu9 and Weeks
`
`Ishidu and Wirth
`
`Ishidu and Negley
`Ogawa10 and Weeks
`
`Ogawa and Wirth
`
`Ogawa and Negley
`
`Basis4
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`Challenged Claims
`
`1 and 5–7
`
`1 and 5–7
`
`1 and 5–7
`
`1–14
`
`1–14
`
`1–14
`
`II. ANALYSIS
`
`A. Principles of Law
`
`To prevail in its challenge to Patent Owner’s claims, Petitioner must
`
`demonstrate by a preponderance of the evidence11 that the claims are
`
`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is
`
`unpatentable under 35 U.S.C. § 103(a) if the differences between the
`
`claimed subject matter and the prior art are such that the subject matter, as a
`
`whole, would have been obvious at the time of the invention to a person
`
`having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
`
`406 (2007). The question of obviousness is resolved on the basis of
`
`underlying factual determinations including (1) the scope and content of the
`
`prior art; (2) any differences between the claimed subject matter and the
`
`
`
`9 U.S. Patent Application Publication No. 2006/0198162 A1, filed Mar. 15,
`2004, published Sept. 7, 2006 (Ex. 1010, “Ishidu”).
`10 U.S. Patent Application Publication No. 2006/0113906 A1, filed Nov. 29,
`2005, published June 1, 2006 (Ex. 1011, “Ogawa”).
`11 The burden of showing something by a preponderance of the evidence
`simply requires the trier of fact to believe that the existence of a fact is more
`probable than its nonexistence before the trier of fact may find in favor of
`the party who carries the burden. Concrete Pipe & Prods. of Cal., Inc. v.
`Constr. Laborers Pension Tr. for S. Cal., 508 U.S. 602, 622 (1993).
`
`6
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`

`IPR2018-00965
`Patent 7,919,787 B2
`
`prior art; (3) the level of ordinary skill in the art; and (4) when in evidence,
`
`objective indicia of nonobviousness. Graham v. John Deere Co., 383 U.S.
`
`1, 17–18 (1966).
`
`B. Level of Ordinary Skill
`
`In determining the level of ordinary skill in the art, various factors
`
`may be considered, including the “type of problems encountered in the art;
`
`prior art solutions to those problems; rapidity with which innovations are
`
`made; sophistication of the technology; and educational level of active
`
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`
`(citation omitted). Petitioner relies on the testimony of Dr. James R. Shealy,
`
`who testifies that a person with ordinary skill in the art “would have had at
`
`least a B.S. in mechanical or electrical engineering or a related field, and
`
`four years’ experience designing LED packages.” Pet. 9 (citing Ex. 1003
`
`¶¶ 22–24). Patent Owner does not propose a definition. PO Resp.
`
`For purposes of this Decision, we adopt Dr. Shealy’s assessment of a
`
`person with ordinary skill in the art. We further note that the prior art of
`
`record in the instant proceeding reflects the appropriate level of ordinary
`
`skill in the art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir.
`
`2001) (holding the Board may omit specific findings as to the level of
`
`ordinary skill in the art “where the prior art itself reflects an appropriate
`
`level and the need for testimony is not shown”).
`
`C. Claim Construction
`
`In an inter partes review filed before November 13, 2018, we
`
`construe claim terms in an unexpired patent according to their broadest
`
`reasonable construction in light of the specification of the patent in which
`
`7
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`

`IPR2018-00965
`Patent 7,919,787 B2
`
`they appear. 37 C.F.R. § 42.100(b) (2017); see Changes to the Claim
`
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
`
`(amending 37 C.F.R. § 42.100(b) effective November 13, 2018). Consistent
`
`with the broadest reasonable construction, claim terms are presumed to have
`
`their ordinary and customary meaning as understood by a person of ordinary
`
`skill in the art in the context of the entire patent disclosure. In re Translogic
`
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`“surface” or “major surface”
`
`Independent claims 1, 7, and 11 recite “a light emitting semiconductor
`
`die12 comprising a top major light emitting surface and an oppositely-
`
`disposed bottom major surface” (emphases added). Claim 1 also recites
`
`“wherein the bottom major surface of the light emitting semiconductor die is
`
`a bottom surface of a substrate of the die” (emphasis added). Petitioner
`
`proposes that the “top major light emitting surface” means “of the two
`
`largest faces of the LED, the face through which light is emitted.” Pet. 11–
`
`12. Petitioner further proposes that “an oppositely-disposed bottom major
`
`surface” means “of the two largest faces of the LED, the face opposite the
`
`light emitting face.” Id. at 12–13. Lastly, Petitioner argues that “wherein
`
`the bottom major surface of the light emitting semiconductor die is a bottom
`
`surface of a substrate of the die” means that “the face of the LED opposite
`
`
`
`12 Petitioner refers to the “light emitting semiconductor die” as an LED. See,
`e.g., Pet. 5 n.2. Patent Owner refers to the claimed “light emitting
`semiconductor die” as an “Led,” “LED die,” or “LED die substrate.” See,
`e.g., PO Resp. 6 n.5, 7, 9. In this Decision, we refer to the claim language
`phrase “light emitting semiconductor die” or LED as a short hand for that
`phrase.
`
`8
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`

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`IPR2018-00965
`Patent 7,919,787 B2
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`the light emitting face is on the substrate side of the LED.” Id. at 13.
`
`Petitioner argues that the ’787 patent and the prosecution history supports
`
`the understanding that the above-recited major surfaces refer to geometric
`
`orientation. Id. at 11–13; Reply 5, 12.
`
`Patent Owner argues that Petitioner incorrectly interprets the major
`
`surfaces of the LED to be synonymous with the largest faces of the LED.
`
`PO Resp. 19–20. Relying on the cross-examination testimony of
`
`Petitioner’s expert, Dr. Shealy, Patent Owner argues that “surface” “requires
`
`the presence of a ‘mathematical plane’ and not simply a ‘face’ as alleged by
`
`Petitioner[].” Id. at 21–22 (citing Ex. 2008, 139:11–21). We understand
`
`Patent Owner to further define “major surface” or “surface” as claimed to
`
`mean a single planar, continuous, and unbroken physical material. Id. at 31
`
`n.11 (arguing that “[t]reating a set of smaller surfaces together to constitute a
`
`‘major surface’ is illogical and fails to give meaning to the claim term,
`
`‘major surface’”), 34 (asserting that it is error to consider “the many
`
`different non-contact and contact surfaces along the optoelectric
`
`component’s backside, despite their geometric arrangements, as a ‘bottom
`
`major surface’”); Reply 4. For the following reasons, we do not adopt
`
`Patent Owner’s proposed construction and otherwise need not construe the
`
`disputed terms.
`
`The claims themselves do not define the “top major light emitting
`
`surface,” or the “oppositely-disposed bottom major surface,” of the LED, or
`
`the “bottom surface of a substrate of the die” to be a mathematical plane (a
`
`single planar, continuous, and unbroken physical material). Patent Owner
`
`does not discuss the Specification of the ’787 patent at all in support of its
`
`narrow claim construction for “surface.” See generally PO Resp. The
`
`9
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`

`IPR2018-00965
`Patent 7,919,787 B2
`
`Specification of the ’787 patent does not define the “top major light emitting
`
`surface,” “oppositely-disposed bottom major surface,” or “bottom surface of
`
`a substrate of the die” as a single planar, continuous, and unbroken physical
`
`material. The Specification of the ’787 patent does describe that “[t]he light
`
`emitting semiconductor die has an anode and a cathode on a bottom major
`
`surface of the light emitting semiconductor die” and that “the anode . . . is
`
`electrically connected to the first electrically conductive bonding pad and the
`
`cathode . . . is electrically connected to the second electrically conductive
`
`bonding pad.” Ex. 1001, 2:58–66. Specific details of the LED, however, or
`
`how the respective anode and cathode are connected, or formed, on the
`
`bottom major surface of the LED are not shown or described. See, e.g., id.
`
`at 5:22–25, 8:35–38,13 12:35–42 (describing an embodiment where a
`
`cathode and an anode are located on the bottom major surface of the LED
`
`die, but not describing the details of how the anode and cathode are
`
`connected, or formed, on the bottom of the LED); Reply 7.
`
`Independent claims 1, 7, and 11 further recite a different element
`
`having a first and second major surface, e.g., “a substantially planar
`
`substrate” that has “first and second major surfaces” (emphasis added). The
`
`Specification of the ’787 patent describes at least one of the major surfaces
`
`of the substantially planar substrate, upon which the LED is mounted, as a
`
`single surface, despite through holes 716 located in that surface. See, e.g.,
`
`Ex. 1001, 9:16–18 (“The substrate is substantially planar, has opposed major
`
`
`
`13 We agree with Petitioner that the only description of a die’s basic
`structural makeup are found in columns 5 and 8, which descriptions are
`directed to embodiments where the cathode and anode are on opposite
`surfaces of the light emitting semiconductor die, which is not claimed. See,
`e.g., Ex. 1001, 5:22–67, 8:35–52; Reply 7 n.2.
`
`10
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`

`IPR2018-00965
`Patent 7,919,787 B2
`
`surfaces, and includes a through hole extending between the major
`
`surfaces”). For example, and with respect to Figure 7B illustrated above, the
`
`Specification of the ’787 patent describes 712 as an upper major surface of
`
`substrate 710 and 714 as a lower major surface of substrate 710. Id. at
`
`12:21–22, 12:31–32. As seen in Figure 7B above, through holes 716 and
`
`718 disrupt the continuity of top and bottom surfaces 712 and 714 of
`
`substrate 710. Nonetheless, the Specification of the ’787 patent consistently
`
`refers to the top and bottom of the substrate as “major surfaces.” Id. at 3:63–
`
`4:18, 12:6–38, Figs. 1B, 2B, 7B; Reply 5–6. We agree with Petitioner that
`
`the ’787 patent’s description of the major surfaces of the substrate would
`
`have been instructive to a person having ordinary skill in the art at the time
`
`of the invention regarding the meaning of the major surfaces of the LED.
`
`Reply 5–7 (citing Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342
`
`(Fed. Cir. 2001) for the proposition that a claim term “should be construed
`
`consistently with its appearance in other places in the same claim or in other
`
`claims of the same patent”).
`
`In arguing against Patent Owner’s proposed narrow construction for
`
`the surfaces of the LED, Petitioner contends that semiconductor die 750
`
`(Figure 7B) appears as a black box, not because it literally has six totally
`
`smooth sides made of unitary material, but because a person having ordinary
`
`skill in the art at the time of the invention would have understood the various
`
`ways in which the die would have been formed. Id. at 7. Petitioner argues
`
`that a person having ordinary skill in the art would have understood that the
`
`claimed die substrate must include a via into the die to work. Id. at 8. In
`
`support of the assertion, Petitioner directs attention to Dr. Shealy’s
`
`11
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`

`IPR2018-00965
`Patent 7,919,787 B2
`
`testimony discussing the Specification of the ’787 patent, reproduced as
`
`follows:
`
` Q. . . . So the anode and cathode would be some part of 750
`that’s in contact with 760 or 762 – is that right?
`. . . .
`A. [Dr. Shealy] What’s not shown here is one of those –
`depending on the kind of die it is, one of those – either 760 or
`762 has to have a connection to – depending upon the
`orientation of the die, the top N or P type layer. So there has to
`be a via in here to make this function. But this patent is silent
`on the details of the die. But as it’s drawn here, you know, the
`die is just a black box. They’re not showing any detail on how
`to actually achieve getting electrodes on the bottom major
`surface. But, of course, in defense of the patent, the inventors
`did say this was a well-known art, so that’s a – why I guess they
`didn’t focus at all on it.
`
`Ex. 2008, 170:20–171:20; see also id. at 172:11–22. Dr. Shealy’s testimony
`
`stands unrebutted14 and is reasonable and consistent with the prior art of
`
`record. See, e.g., Exs. 1007–1009. We give the above testimony substantial
`
`weight that a person having ordinary skill in the art at the time of the
`
`invention would have understood that the LED described in the
`
`Specification of the ’787 patent would have had a via into the die to work.
`
`Lastly, Patent Owner fails to direct us to anything in the prosecution
`
`history of the ’787 patent in support of its construction, and we find none.
`
`Rather, the statements made by the then applicant confirm that it was not
`
`necessary to show the details of the black box 750, for example, because a
`
`
`
`14 Although given the opportunity, Patent Owner choose not to (1) cross-
`examine Dr. Shealy on the above testimony; (2) provide its own declarant to
`aver otherwise; or (3) file a Patent Owner Sur-Reply. Paper 16, 4, 6; Paper
`26, 2.
`
`12
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`Patent 7,919,787 B2
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`person having ordinary skill in the art would have “known . . . [how] to
`
`construct a light emitting semiconductor die with an anode and cathode on
`
`one surface of the semiconductor die and a light emitting surface on the
`
`opposite surface of the semiconductor die” and that it was “well within the
`
`knowledge of one of ordinary skill in the art to construct a light emitting
`
`semiconductor die as claimed.” Ex. 1002, 146.
`
` Patent Owner has not directed attention to where in either the
`
`Specification of the ’787 patent or the file history of the ’787 patent, there is
`
`support for such a narrow construction of the term “major surface” of the
`
`LED. Patent Owner relies solely on the testimony of Petitioner’s expert, Dr.
`
`Shealy, in support of its argument that “surface” must be a mathematical
`
`plane. PO Resp. 21–22. The passage that Patent Owner relies on in support
`
`of its proposed construction is as follows:
`
`Q: -- for the record. So how would a person of ordinary
`skill in the art on August 14, 2007, have understood the
`term “surface”?
`
`MR. COLSHER: Objection to form.
`
`[Dr. Shealy]: Well, in the context -- if I can add a
`slight restriction, the context that’s used here, the surface
`would be a plane.
`
`BY MR. JACKSON: Q: Okay.
`A: A mathematical plane.
`
`Ex. 2008, 139:11–21.
`
`
`
`We do not find that the above statement outweighs all of the other
`
`evidence before us against Patent Owner’s narrow construction. In
`
`particular, Dr. Shealy also testified that a surface can be a face, referring to
`
`the geometric orientation of a surface. Ex. 2008, 139:22–145:21, 169:2–
`
`13
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`IPR2018-00965
`Patent 7,919,787 B2
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`177:7; Ex. 1003 ¶¶ 48–54. He testified that “‘[f]ace’ seems to fit the way
`
`‘surface’ is used in this patent pretty well. That’s why it was done.”
`
`Ex. 2008, 145:19–21. Dr. Shealy’s statement, quoted above, does not
`
`outweigh all of the other evidence already discussed: (1) the Specification
`
`of the ’787 patent and the usage of the term “major surface”; (2) the
`
`prosecution history statements made by then applicant; and (3) the totality of
`
`Dr. Shealy’s unrebutted testimony explaining that the term “surface” as used
`
`in the claims (e.g., “top major light emitting surface” and “oppositely-
`
`disposed bottom major surface”) means a geometric orientation. Ex. 1003
`
`¶¶ 48–54. When we evaluate all record evidence before us, we disagree
`
`with Patent Owner that “surface” means a continuous, smooth, unbroken
`
`mathematical plane. For purposes of this Decision, we need not further
`
`construe the phrases “top major light emitting surface,” “an oppositely-
`
`disposed bottom major surface,” or “wherein the bottom major surface of the
`
`light emitting semiconductor die is a bottom surface of a substrate of the
`
`die.”
`
`“formed on”
`
`Independent claims 1, 7, and 11 include “wherein the bottom major
`
`surface of the light emitting semiconductor die is a bottom surface of a
`
`substrate of the die, each of the anode and cathode comprises a metallization
`
`layer formed on the bottom major surface of the light emitting
`
`semiconductor die” (emphasis added). We preliminarily construed the term
`
`“formed on” to mean directly or indirectly formed on. Dec. 6–7. Patent
`
`Owner disagrees with our interpretation, while Petitioner agrees with it. See,
`
`e.g., PO Resp. 23, 28, 31–32; Reply 13–16.
`
`14
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`Patent 7,919,787 B2
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`In essence, Patent Owner argues that the term “formed on” means
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`directly formed on. See, e.g., PO Resp. 28, 31, 34. Patent Owner, however,
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`fails to direct attention to record evidence in support of its proposed
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`construction. Petitioner argues that “formed on” includes both direct and
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`indirect formation and provides evidence in support of its proposed
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`construction. Reply 16 (citing Ex. 1001, 5:30–35, 7:4–12, 9:19–21, 10:11–
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`37, 11:11–21; Ex. 1007, 4:11–15; Ex. 1009 ¶ 20; Ex. 2008, 169:2–177:7).
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`Patent Owner provides us no reason, supported by record evidence, to
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`interpret “formed on” to mean directly formed on. For purposes of this
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`Decision, we agree with and adopt Petitioner’s showing, supported by record
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`evidence, that “formed on” is not limited to directly formed on. For
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`example, the Specification of the ’787 patent describes various elements
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`being “formed on” another element in the context of how the element is
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`“formed,” but does not otherwise specify that the element be directly formed
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`on another element. See, e.g., Ex. 1001, 10:24–37. Further, we give
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`substantial weight to Dr. Shealy’s testimony that “formed on” must include
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`indirectly formed on for the claimed device to work. Ex. 2008, 169:2–
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`177:7. Lastly, the prior art of record supports the interpretation of “formed
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`on” to include both direct and indirect formation. Ex. 1007, 4:11–15; Ex.
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`1009 ¶ 20. Accordingly, we agree with Petitioner that “formed on” includes
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`both direct and indirect formation.
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`For purposes of this Decision, we need not expressly construe any
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`other claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
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`795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed
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`that are in controversy, and only to the extent necessary to resolve the
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`controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean
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`15
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`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the
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`context of an inter partes review).
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`D. Discussion of Patent Owner’s Arguments Regarding SAS
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`Patent Owner argues that Petitioner failed to establish a “reasonable
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`likelihood” of showing unpatentability of any challenged claim based on the
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`grounds relying on Negley, and that in order for the Board to be in
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`compliance with statutory authority, as interpreted by SAS Institute Inc. v.
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`Iancu, 138 S. Ct. 1348 (2018), and the Board’s regulations, the proceeding
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`should be dismissed without a final written decision. PO Resp. 8–10. In
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`essence, Patent Owner repeats its arguments made in its Preliminary
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`Response. Prelim. Resp. 18–19. We still are not persuaded by such
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`arguments and reiterate our reasoning provided in the Decision on
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`Institution. Dec. 8–9.
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`On April 24, 2018, the Supreme Court held that a decision to institute
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`under 35 U.S.C. § 314 may not institute on fewer than all claims challenged
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`in the petition. SAS, 138 S. Ct. 1348. SAS requires the Board, when
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`instituting, to institute review of all claims in a petition after determining
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`there is a reasonable likelihood that at least one of the claims challenged is
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`unpatentable. Id. at 1356. In SAS, the Supreme Court, interpreting 35
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`U.S.C. § 314, held that a petitioner “is entitled to a final written decision
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`addressing all of the claims it has challenged.” Id. at 1359–60.
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`Title 35, section 314(a), directs, in relevant part, that “[t]he Director
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`may not authorize an inter partes review to be instituted unless the Director
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`determines that the information presented in the petition . . . and any
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`response . . . shows that there is a reasonable likelihood that the petitioner
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`would prevail with respect to at least 1 of the claims challenged in the
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`16
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`petition.” The Supreme Court determined that “Section 314(a) does not
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`require the Director to evaluate every claim individually. Instead, it simply
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`requires a decision whether the petitioner is likely to succeed on ‘at least 1’
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`claim.” SAS, 138 S. Ct. at 1356. The Court explained: “[o]nce that single
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`claim threshold is satisfied, it doesn’t matter whether the petitioner is likely
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`to prevail on any additional claims; the Director need not even consider any
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`other claim before instituting review.” Id. (emphasis in original). Further,
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`the Court emphasized: “Rather than contemplate claim-by-claim institution
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`. . . the language [of section 314(a)] anticipates a regime where a reasonable
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`prospect of success on a single claim justifies review of all.” Id. The
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`Supreme Court’s interpretation of the law in SAS controls the Decision on
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`Institution. Patent Owner does not address the Supreme Court’s instructions
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`in SAS concerning institution decisions and why we should dismiss the inter
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`partes review without a final written decision. See PO Resp. 9. In
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`particular, Patent Owner has not provided any persuasive justification for
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`why we should interpret rule 42.108(c) in a manner that would be
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`inconsistent with SAS.
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`E. Asserted Obviousness of Claims 1–14 over Lumbard and Wirth
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`Petitioner contends claims 1–14 are unpatentable under 35 U.S.C.
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`§ 103(a) as obvious over Lumbard in view of Wirth. Pet. 16–56.15 In
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`
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`15 It is clear that this is a separate challenge. In other words, Petitioner is not
`relying on the combined teachings of Lumbard, Weeks, Wirth, and Negley.
`See, e.g., Pet. 3–4, 16 (“Grounds 1–3: Lumbard, in view of Weeks, Wirth,
`or Negley, renders obvious claims 1–14” (some emphasis omitted)). For
`purposes of this Decision we focus on the second challenge: Lumbard in
`view of Wirth. See, e.g., Pet. 3 (Ground 2).
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`17
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`support of its showing, Petitioner relies upon the Declaration of Dr. James R.
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`Shealy. Id. (citing Ex. 1003).
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`1. Lumbard
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`Lumbard describes a method of manufacturing electro-optical
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`components. Ex. 1006, 1:9–11. Figure 1 of Lumbard is reproduced below.
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`Figure 1 of Lumbard shows a modular compact component including
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`an LED.
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`As seen in Lumbard’s Figure 1, a conductive pattern including a land
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`area 13 and a connection pad 14 is deposited on upper side 11 of flat,
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`electrically insulated substrate 12. Id. at 2:66–3:4. LED 15 is mounted on
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`land area 13 so that its terminal on the underneath is electrically connected
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`to land area 13. Id. at 3:4–7. Upper side of LED 15 includes a terminal 16
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`that is electrically conductive and connected with the connection pad 14 via
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`bonding wire 17. Id. at 3:7–10. Deposited onto backside 18 of substrate 12
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`is a second conductive pattern with first terminal pad 19 and second terminal
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`18
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`pad 20. Id. at 3:13–15. Each terminal pad 19 and 20 is coated with a layer
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`of solder 21 to make modular component 10 suitable for surface mount
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`soldering. Id. at 3:11–18.
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`2. Wirth
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`Wirth describes optoelectronic components. Ex. 1008, 147.16
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`Figure 1, annotated by Petitioner, is reproduced below. Pet. 23.
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`Figure 1 of Wirth, annotated by Petitioner, shows an optoelectronic
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`component 1.
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`As seen in Wirth’s Figure 1, optoelectronic component 1 has a
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`semiconductor function region 2 disposed on carrier 3. Id. at 187.
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`Semiconductor function region 2 comprises active zone 400 provided to
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`generate or receive radiation. Id. Carrier 3 contains a material suitable for
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`use as a growth substrate for epitaxially producing the semiconductor
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`function region, or the carrier is preferably formed of a suitable growth
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`substrate for producing the semiconductor function region. Id. Active zone
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`16 Citations are to the page numbers in the lower right corner of the English
`translation of Wirth (Ex. 1008).
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`19
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`400 comprises a plurality of semiconductor layers. Id. Semiconductor
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`function region 2 is surrounded by envelope 4, which is translucent to
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`radiation. Id. at 188. Current spreading layer 5 is disposed on
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`semiconductor function region 2 facing away from carrier 3 and includes a
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`radiation-translucent conductive oxide, for example, a transparent
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`conducting oxide (TCO). Id. at 188–189. Connecting conductor mat