Paper No. 15
`Trials@uspto.gov
`571-272-7822 Entered: October 29, 2018
`
`
`
`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.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314(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.”).
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . and any response . . . 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.” 35 U.S.C. § 314(a).
`Upon consideration of the Petition and Preliminary Response, we conclude
`the information presented shows that there is a reasonable likelihood that
`Petitioner would prevail in establishing the unpatentability of claims 1–14 of
`the ’787 patent.
`
`A. Related Matters
`The parties indicate that the ’787 patent is the subject of several court
`proceedings. Pet. 1; Paper 3, 2. The ’787 patent also is the subject of Board
`proceeding IPR2018-01260. Application 11/838,301 was filed August 14,
`2007, and issued as the ’787 patent, but claims to be 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”). The ’486
`patent is involved in IPR2018-00333, IPR2018-01166, IPR2018-01205,
`IPR2018-01220, and IPR2018-01225.
`
`
`
`1 Petitioner, Nichia Corporation, identifies Nichia America Corporation as a
`real party-in-interest. Pet. 1.
`
`2
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`

`IPR2018-00965
`Patent 7,919,787 B2
`
`B. The ’787 Patent2
`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.
`As seen from the above, semiconductor device 700 includes substrate
`710, interconnecting elements 720 and 722, bonding pads 730 and 732,
`connecting pads 740 and 742, and an 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
`
`
`2 Petitioner contends, with reasoning and supporting evidence, that the ’787
`patent is entitled only to the benefit of its actual filing date, and not the filing
`date of the ’605 application. Pet. 4–5 (citing Ex. 1003 ¶¶ 25–34). Patent
`Owner does not, at this time, dispute Petitioner’s assertions. See Prelim.
`Response.
`
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`IPR2018-00965
`Patent 7,919,787 B2
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`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 Claims
`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;
`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,
`
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`IPR2018-00965
`Patent 7,919,787 B2
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`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. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1–14 are unpatentable based on the
`following grounds (Pet. 4):
`References
`Lumbard3 and Weeks4
`Lumbard and Wirth5
`Lumbard and Negley6
`Ishidu7 and Weeks
`Ishidu and Wirth
`Ishidu and Negley
`Ogawa8 and Weeks
`Ogawa and Wirth
`Ogawa and Negley
`
`Challenged Claims
`1–14
`1–14
`1–14
`1 and 5–7
`1 and 5–7
`1 and 5–7
`1–14
`1–14
`1–14
`
`Basis
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`
`3 U.S. Patent No. Re. 36,614, issued Mar. 14, 2000 (Ex. 1006, “Lumbard”).
`4 U.S. Patent No. 6,611,002, filed Feb. 23, 2001, issued Aug. 26, 2003
`(Ex. 1007, “Weeks”).
`5 WO 2005/081319, filed Feb. 18, 2005, issued Sept. 1, 2005 (Ex. 1008,
`“Wirth”).
`6 U.S. Patent Application Publication No. 2004/0217360 A1, filed Apr. 6,
`2004, published Nov. 4, 2004 (Ex. 1009, “Negley”).
`7 U.S. Patent Application Publication No. 2006/0198162 A1, filed Mar. 15,
`2004, published Sept. 7, 2006 (Ex. 1010, “Ishidu”).
`8 U.S. Patent Application Publication No. 2006/0113906 A1, filed Nov. 29,
`2005, published June 1, 2006 (Ex. 1011, “Ogawa”).
`5
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`IPR2018-00965
`Patent 7,919,787 B2
`
`II. DISCUSSION
`
`A. Claim Construction
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b)
`(2016). 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).
`
`Petitioner proposes constructions for the following claim terms found
`in the challenged claims: “top major light emitting surface” (claims 1, 7,
`and 11); “an oppositely-disposed bottom major surface” (claims 1, 7, and
`11); and “the bottom major surface . . . is a bottom surface of a substrate
`die.” Pet. 11–13. Patent Owner presents arguments as to why we should not
`adopt Petitioner’s proposed constructions, but does not provide alternative
`constructions for these claim terms. See generally Prelim. Resp.
`We only need to construe, for purposes of this Decision, “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.” Although neither party provides an explicit construction for the term,
`Patent Owner implicitly argues that the term “formed on” means directly
`formed on. See, e.g., Prelim. Resp. 23. Patent Owner, however, fails to
`provide evidence in support of its proposed construction. At this juncture of
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`IPR2018-00965
`Patent 7,919,787 B2
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`the proceeding, we see no reason to interpret “formed on” to mean directly
`formed on. Indeed, the specification of the ’787 patent describes various
`elements being “formed on” another element in the context of how the
`element is “formed,” but does not otherwise specify that the element be
`directly formed on another element. See, e.g., Ex. 1001, 10:24–37. For
`purposes of this decision, we conclude “formed on” should be construed
`according to its plain and ordinary meaning, which we determine is not
`limited to directly formed on. Indeed, Weeks supports this construction, as
`it uses the term “formed on” to mean directly or indirectly formed on. See,
`e.g., Ex. 1007, 4:11–15.
`For purposes of this decision, we need not expressly construe any
`other claim term at this time. See Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need
`be construed that are in controversy, and only to the extent necessary to
`resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid
`Techs. in the context of an inter partes review).
`
`B. Principles of Law
`A patent 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 the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. 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 prior art;
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`(3) the level of ordinary skill in the art;9 and (4) when in evidence, objective
`evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
`C. Discussion of Patent Owner’s Arguments Regarding SAS
`
`We begin our discussion with Patent Owner’s argument that if we
`“find any challenge to any claim deficient, the sole permissible outcome,
`consistent with both the binary decision required under SAS and the Board’s
`governing regulations, is for the Board to deny institution.” Prelim. Resp.
`19.
`
`On April 24, 2018, the Supreme Court held that a decision to institute
`under 35 U.S.C. § 314 may not institute on fewer than all claims challenged
`in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018). SAS
`requires the Board, when instituting, to institute review of all claims in a
`petition after determining there is a reasonable likelihood that at least one of
`the claims challenged is unpatentable. Id. at 1356. In SAS, the Supreme
`Court, interpreting 35 U.S.C. § 314, held that a petitioner “is entitled to a
`final written decision addressing all of the claims it has challenged . . . .” Id.
`at 1359–60.
`
`
`9 Relying on the testimony of Dr. James R. Shealy, Petitioner offers an
`assessment as to the level of skill in the art as of the earliest effective filing
`date on the face of the ’787 patent. Pet. 9–10 (citing Ex. 1003 ¶¶ 22–24).
`At this time, Patent Owner does not propose an alternative assessment. To
`the extent necessary, and for purposes of this Decision, we accept the
`assessment offered by Petitioner as it is consistent with the ’787 patent and
`the asserted prior art.
`
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`IPR2018-00965
`Patent 7,919,787 B2
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`Title 35, section 314(a), directs, in relevant part, that “[t]he Director
`may not authorize an inter partes review to be instituted unless the Director
`determines that the information presented in the petition . . . and any
`response . . . 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.” The Supreme Court determined that “Section 314(a) does not
`require the Director to evaluate every claim individually. Instead, it simply
`requires a decision whether the petitioner is likely to succeed on ‘at least 1’
`claim.” SAS, 138 S. Ct. at 1356. The Court explained: “[o]nce that single
`claim threshold is satisfied, it doesn’t matter whether the petitioner is likely
`to prevail on any additional claims; the Director need not even consider any
`other claim before instituting review.” Id. (emphasis original). Further, the
`Court emphasized: “Rather than contemplate claim-by-claim institution . . .
`the language [of section 314(a)] anticipates a regime where a reasonable
`prospect of success on a single claim justifies review of all.” Id. The
`Supreme Court’s interpretation of the law in SAS controls the institution
`decision. Patent Owner does not address the Supreme Court’s instructions
`in SAS concerning institution decisions. See Prelim. Resp. 19. In particular,
`Patent Owner has not provided any persuasive justification for why we
`should interpret rule 42.108(c) in a manner that would be inconsistent with
`SAS.
`
`D. Asserted Obviousness of Claims 1–14 over Lumbard
`
`Petitioner contends claims 1–14 are unpatentable under 35 U.S.C.
`§ 103(a) as obvious over (1) Lumbard in view of Weeks; (2) Lumbard in
`view of Wirth; and (3) Lumbard in view of Negley. Pet. 16–56. In support
`
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`IPR2018-00965
`Patent 7,919,787 B2
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`of its showing, Petitioner relies upon the declaration of Dr. James R. Shealy.
`Id. (citing Ex. 1003).
`
`1. Lumbard
`Lumbard describes a method of manufacturing electro-optical
`components. Ex. 1006, 1:9–11. Figure 1 of Lumbard is reproduced below.
`
`
`
`
`Figure 1 of Lumbard shows a modular compact component including
`a light emitting diode.
`As seen from the above, conductive pattern including a land area 13
`and a connection pad 14 is deposited on upper side 11 of flat, electrically
`insulated substrate 12. Id. at 2:66–3:4. LED 15 is mounted on land area 13
`so that its terminal on the underneath is electrically connected to land area
`13. Id. at 3:4–7. Upper side of LED 15 includes a terminal 16 that is
`electrically conductive and connected with the connection pad 14 via
`bonding wire 17. Id. at 3:7–10. Deposited onto backside 18 of substrate 12
`is a second conductive pattern with first terminal pad 19 and second terminal
`
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`Patent 7,919,787 B2
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`pad 20. Each terminal pad 19 and 20 is coated with a layer of solder 21 to
`make modular component 10 suitable for surface mount soldering. Id. at
`3:11–18.
`
`2. Weeks
`Weeks describes a semiconductor structure that includes a substrate
`having at least one via, “which extends from the backside of the device
`through the non-conducting layer(s) to enable electrical conduction between
`an electrical contact deposited within the via and, for example, an electrical
`contact on the topside of the device.” Ex. 1007, 2:2–14. Figure 8 is
`reproduced below.
`
`
`
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`IPR2018-00965
`Patent 7,919,787 B2
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`Figure 8 of Weeks shows an LED including multiple backside vias.
`As seen from the above, LED 70 includes backside vias 24a and 24b.
`Id. at 10:34–35. N-type backside contact 20a is formed within via 24a and
`p-type backside contact 20b is formed within via 24b. Id. at 10:49–50.
`Dielectric layer 31 isolates portions of p-type backside contact 20b to
`prevent shorting. Id. at 10:51–52. Non-conducting layer 15 is formed on
`silicon substrate 12. Id. at 10:37–39. Suitable diameters for substrate 12
`include 2 inches (50 mm), 4 inches (100 mm), 6 inches (150 mm), and 8
`inches (200 mm) and can be as thin as less than 100 microns to facilitate
`formation of via(s) 24 therethrough. Id. at 4:40–50. Gallium nitride
`material device region 14 generally has a thickness of greater than 0.1
`micron. Id. at 7:55–57. The exact dimensions and shape of via 24 depend
`upon the application. A typical cross-sectional area of via 24 is about 100
`microns by about 100 microns at backside 22. Id. at 5:65–67.
`3. Wirth
`Wirth describes optoelectronic components. Ex. 1008, 147.10
`Figure 1, annotated by Petitioner, is reproduced below. Pet. 23.
`
`
`
`10 Citations are to the page numbers in the lower right corner of the English
`translation of Wirth (Ex. 1008).
`
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`Patent 7,919,787 B2
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`
`Figure 1 of Wirth, annotated by Petitioner, shows an optoelectronic
`component 1.
`As seen from the above, optoelectronic component 1 has a
`semiconductor function region 2 disposed on carrier 3. Semiconductor
`function region 2 comprises active zone 400 provided to generate or receive
`radiation. Id. at 187. Carrier 3 contains a material suitable for use as a
`growth substrate for epitaxially producing the semiconductor function
`region, or the carrier is preferably formed of a suitable growth substrate for
`producing the semiconductor function region. Id. Active zone 400
`comprises a plurality of semiconductor layers. Id. Semiconductor function
`region 2 is surrounded by envelope 4, which is translucent to radiation. Id.
`at 188. Current spreading layer 5 is disposed on semiconductor function
`region 2 facing away from carrier 3 and includes a radiation-translucent
`conductive oxide, for example a transparent conducting oxide (TCO). Id. at
`188–189. Connecting conductor material 8 is electrically conductively
`connected to first connection 11. Id. at 191. A further insulation material
`10a is disposed between first connection 11 and carrier 3. Id. Connection
`12 is conductively connected to carrier 3. Id.
`
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`Patent 7,919,787 B2
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`Wirth figure 4e, reproduced below, shows a top view of the structure
`from figure 4d. Id. at 211. The semiconductor function regions 3 are
`covered by current spreading layers 5 and are designed to be substantially
`square, separated from one another by a contiguous network of spaces 20.
`Id. The cut-outs 9 in the semiconductor function region are substantially
`circular in this exemplary embodiment and are provided in the regions of the
`corners of the respective semiconductor function regions. Id.
`
`
`
`
`Wirth figure 4e shows a top view of the structure from figure 4d.
`4. Negley
`Negley describes light-emitting devices and fabrication methods of
`such. Ex. 1009 ¶ 2. Figure 2K from Negley is reproduced below.
`
`
`
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`Patent 7,919,787 B2
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`Figure 2K of Negley shows a cross sectional diagram of a light-
`emitting device.
`As seen from the above, first electrical contact 255 is formed adjacent
`to second surface 210b such that contact plug 250 couples first electrical
`contact 255 to p-type gallium nitride layer 230 via ohmic contact layer 235.
`Id. ¶ 31. One or more electrical contact(s) 260 are formed on the second
`surface of 210b of substrate 205. Id. ¶ 32.
`5. Discussion
`Claim 1 recites a “semiconductor device comprising.” The present
`record supports the contention that Lumbard’s described surface mounted
`semiconductor package meets the claimed “semiconductor device.” Pet. 16
`(citing Ex. 1006, 5:66–67). Claim 1 further recites “a substantially planar
`substrate having a first and second major surfaces, the first and second major
`surfaces being opposed surfaces.” The present record supports the
`contention that Lumbard, with reference to figure 1, describes a flat substrate
`12 with an upper side 11 (“first major surface”) and a backside 18 (“second
`major surface”). Pet. 17 (citing Ex. 1006, 2:64–3:13). Claim 1 further
`recites “first and second electrically conductive bonding pads located on the
`first major surface” and “first and second electrically conductive connecting
`pads located on the second major surface.” The present record supports the
`contention that Lumbard describes a first electrically conductive bonding
`pad (connection pad 14 and connective strip 24), second electrically
`conductive bonding pad (land area 13 and connective strip 22), first
`electrically conductive connecting pad (second terminal pad 20), and second
`electrically conductive connecting pad (first terminal pad 19). Pet. 32–35
`(citing Ex. 1006, 3:11–34, Fig. 1; Ex. 1003 ¶¶ 125–129).
`
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`Claim 1 further recites “a first electrically conductive interconnecting
`element” and “a second electrically conductive interconnecting element.”
`The present record supports the contention that Lumbard describes “a first
`electrically conductive interconnecting element” (plated through grove 25)
`and “a second electrically conductive interconnecting element” (plated
`through grove 23). Pet. 35–36 (citing Ex. 1006, Fig. 1; Ex. 1003 ¶ 130).
`Claim 1 further recites “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.” 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, each of the
`anode and cathode comprises a metallization layer formed on the bottom
`major surface of the light emitting semiconductor die.”
`Petitioner contends that although Lumbard discloses LED 15 mounted
`on land area 13, Lumbard does not expressly describe that LED 15 is
`configured such that its top is a light emitting surface. Pet. 19. Petitioner
`also contends that Lumbard does not describe an anode and cathode on the
`bottom surface of Lumbard’s LED.11 Id. Petitioner argues that during
`prosecution of the application that matured into the ’787 patent, “applicants
`
`11 Patent Owner’s argument, spanning pages 20–22 of its brief, that Lumbard
`does not disclose the claimed light emitting semiconductor die is not
`persuasive, because such argument addresses Lumbard individually.
`Petitioner, however, does not rely on Lumbard alone to meet the recited
`features of the light emitting semiconductor die. See In re Keller, 642 F.2d
`413, 426 (CCPA 1981) (“[O]ne cannot show non-obviousness by attacking
`references individually where, as here, the rejections are based on
`combinations of references.”).
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`admitted that ‘it was known as of the filing date of the [’787 patent
`application] 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 “[t]hree
`such LEDs—Weeks, Wirth, and Negley—are discussed” as meeting the
`claimed LED. Pet. 19 (citing Ex. 1002, 146; Ex. 1003 ¶ 95). In particular,
`Petitioner relies on Weeks’, Wirth’s, or Negley’s respective LED as
`including a top major light emitting surface and an anode and cathode on a
`bottom major surface of the respective LED, where the bottom surface is a
`bottom surface of the LED. Pet. 19. Petitioner provides reasons for
`substituting Lumbard’s LED with Weeks’, Wirth’s, or Negley’s LED. Id. at
`26–31.
`The current record supports the contention that Weeks describes an
`opto-electronic device having a backside contact that can direct emitted light
`out of the topside and sides of the device (“a top major light emitting
`surface”) that is applicable to all embodiments that include device 10, a
`backside contact 20, substrate 12, and topside 18. Pet. 20 (citing Ex. 1007,
`6:53–57; Ex. 1003 ¶ 98). The present record also supports the contention
`that Weeks describes a cathode (n-type backside metal contact 20a) and
`anode (p-type backside metal contact 20b) on backside 22 (bottom major
`surface) wherein the bottom major surface is a bottom surface of substrate
`12. Pet 20–21, 36–37 (citing Ex. 1007, 6:7–21, 10:34–54, Fig. 8; Ex. 1003
`¶¶ 98–100, 133–134).
`Patent Owner argues that Weeks’ anode 20b is not formed on the
`bottom major surface of substrate 12, but rather is formed on dielectric layer
`31, which is on the surface of substrate 12. Prelim. Resp. 23–24. As
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`explained above in the claim construction section, Patent Owner argues for a
`narrow construction of “formed on” to mean directly formed on, without any
`intervening element in between. For reasons provided above, and at this
`juncture of the proceeding, we decline to construe the term so narrowly.
`Weeks shows a cathode 20a directly formed on substrate 12 and also an
`anode 20b indirectly formed on substrate 12. There is nothing in the claim
`language that requires the cathode and anode be formed directly on the
`substrate bottom surface. Indirect placement is within the scope of the
`claims. For these same reasons, we are not persuaded by Patent Owner’s
`implicit argument that the claim requires the cathode and anode to either be
`directly on the same surface or indirectly on the same surface. Id. at 24. We
`are not persuaded at this juncture of the proceeding of such a reading of
`claim 1. Claim 1 is broad enough to cover (1) both the cathode and anode
`directly formed on a substrate, (2) both the cathode and anode indirectly
`formed on a substrate, (3) a cathode directly formed on a substrate and an
`anode indirectly formed on the substrate, and (4) a cathode indirectly formed
`on a substrate and an anode directly formed on the substrate.
`Patent Owner also argues that Petitioner looks to the entire backside
`22 of Weeks’ LED 70 as meeting the claimed “bottom major surface”
`without identifying a major surface that meets all of the claimed features.
`Id. at 23. But besides explaining that Weeks’ cathode is not directly formed
`on substrate 12, Patent Owner fails to explain why Weeks’ backside 22, and
`hence substrate 12, fails to meet the claim language. Weeks describes
`substrate 12 as having a diameter of up to 8 inches (200 mm), a thickness as
`thin as less than 100 microns, gallium nitride material device region 14
`generally having a thickness of greater than 0.1 micron, and a via(s) 24 that
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`is about 100 microns by about 100 microns at backside 22. Ex. 1007, 4:40–
`50, 5:65–67, 7:55–57. Based on the record before us, Weeks’ backside,
`corresponding to the bottom of substrate 12, meets the limitation of a
`“bottom major surface.”
`The current record also supports the contention that Wirth describes
`an LED device having an active zone 400 provided to generate radiation and
`a current spreading layer 5 that is highly transparent disposed on the active
`region (“a top major light emitting surface”). Pet. 22 (citing Ex. 1008, 187–
`188; Ex. 1003 ¶ 104). Petitioner further contends that Wirth discloses a
`cathode (first connection 11 which contains a metallization layer) and anode
`(second connection 12 which contains a metallization layer) that are exposed
`on the bottom major surface of die (carrier 3, which is a substrate). Pet. 22,
`38–40 (citing Ex. 1008, 187–191, Fig. 1; Ex. 1003 ¶ 104).
`Patent Owner argues that Wirth’s first connection 11 is not formed on
`the bottom major surface of carrier 3, but rather is formed on insulation
`material 10a and insulation material 10, which are on the surface of carrier 3.
`Prelim. Resp. 26–27. For similar reasons provided above with respect to the
`Weeks reference, we are not persuaded, at this juncture of the proceeding,
`that claim 1 requires the cathode and anode be formed directly on the
`substrate bottom surface. Indirect placement is within the scope of the
`claims for either the cathode or anode.
`Patent Owner also argues that Petitioner looks to the entire backside
`of Wirth’s optoelectronic component 1 as meeting the claimed “bottom
`major surface” without identifying a major surface that meets all of the
`claimed features. Id. at 26. But besides arguing that Wirth’s first
`connection 11 is not directly formed on carrier 3, Patent Owner fails to
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`IPR2018-00965
`Patent 7,919,787 B2
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`explain why the bottom of Wirth’s optoelectronic component 1 and hence
`carrier 3 fails to meet the claim language. Like Weeks, the disclosure of
`Wirth discussed above tends to support, at this juncture of the proceeding,
`Petitioner’s assertions that Wirth meets the claimed “bottom major surface.”
`Petitioner contends that Negley’s LED also meets the claim 1
`limitations directed to the claimed LED. Pet. 24–26, 38, 40. Petitioner
`asserts that Negley describes an LED device having a diode region
`comprising n-type layer 225 and p-type layer 230 and ohmic contact layer
`235, which is at least partially transparent to optical radiation. Pet. 24
`(citing Ex. 1009 ¶¶ 26–27; Ex. 1003 ¶ 109). Petitioner further contends that
`Negley discloses an anode (first electrical contact 255) and cathode (second
`electrical contact 260) “on the bottom major surface of the substrate of its
`LED (i.e., on second surface 210b of the substrate of its LED).” Pet. 24
`(citing Ex. 1009 ¶¶ 25–27, 29, 31–32; Ex. 1003 ¶ 109). We agree with
`Patent Owner, however, that Petitioner has not shown that the anode (first
`electrical contact 255) is formed on the bottom major surface of the substrate
`as claimed. Prelim. Resp. 29. Rather, Negley describes that first electrical
`contact 255 is formed adjacent to the second surface 210b (e.g., substrate),
`not on surface 210b. Based on the record before us, Petitioner does not
`explain how contact 255 that is formed adjacent to substrate 210b is also
`formed on substrate 210b.
`Patent Owner also argues that Petitioner looks to the entire backside
`of Negley’s LED as meeting the claimed “bottom major surface” without
`identifying a major surface that meets all of the claimed features. Id. at 29–
`30. But besides explaining that Negley’s electrical contact 255 is formed
`adjacent to the second surface 210b, not on surface 210b, Patent Owner fails
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`IPR2018-00965
`Patent 7,919,787 B2
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`to explain why the bottom of Negley’s LED fails to meet the claim
`language. Like Weeks and Wirth, the disclosure of Negley discussed above
`tends to support, at this juncture of the proceeding, Petitioner’s assertions
`that Negley meets the claimed “bottom major surface.”
`Lastly, Petitioner provides reasons for combining Lumbard with
`Weeks, Wirth, or Negley. Pet. 26–31. For example, Petitioner contends,
`with supporting evidence, that a person having ordinary skill in the art would
`have been motivated to substitute Lumbard’s LED with Weeks’, Wirth’s, or
`Negley’s LED because doing so would have eliminated the need for an
`electrical contact that requires the use of a bonding wire, simplifying the
`LED. Pet. 26 (citing Ex. 1008, 145). Petitioner contends that mounting
`Weeks’, Wirth’s, or Negley’s LED on Lumbard’s substrate packaging
`assembly would have been obvious to a person having ordinary skill in the
`art as a simple substitution of one known element for another to obtain
`predictable results, and that such a substitution would have had a reasonable
`expectation of success. Pet. 27 (citing Ex. 1003 ¶ 116; Ex. 1002, 148 (where
`applicants admitted that “the semiconductor arts are a well-established and
`predictable field” and “light-emitting semiconductor dies and their behavior
`are well established and predictable.”)). We have reviewed all of
`Petitioner’s contentions for combining Lumbard with Weeks, Wirth, or
`Negley, and are persuaded at this juncture of the proceeding by such
`contentions.
`Claim 2 depends from claim 1 and recites “wherein at least one of the
`first and second electrically conductive interconnecting elements is on at
`least one sidewall of the substantially planar substrate and electrically
`inte