throbber
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`G. R. Mohan Rao
`In re Patent of:
`9,647,070 Attorney Docket No.: 39843-0071IP1/IP2
`U.S. Patent No.:
`May 9, 2017
`
`Issue Date:
`Appl. Serial No.: 14/931,636
`
`Filing Date:
`November 3, 2015
`
`Title:
`SEMICONDUCTOR DEVICES WITH GRADED DOPANT RE-
`GIONS
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`PETITIONER’S NOTICE RANKING PETITIONS
`AND EXPLAINING MATERIAL DIFFERENCES BETWEEN
`PETITIONS FOR U.S. PATENT NO. 9,647,070
`
`
`
`

`

`Attorney Docket No. 39843-0071IP1/IP2
`IPR of U.S. Patent No. 9,647,070
`Petitioner is filing two concurrent petitions challenging the validity of claims
`
`of U.S. Patent No. 9,647,070 (“the ’070 patent”). Pursuant to the Board’s July
`
`2019 Trial Practice Guide Update, Petitioner submits this paper to “identify: (1) a
`
`ranking of the Petitions in the order in which it wishes the Board to consider the
`
`merits…, and (2) a succinct explanation of the differences between the Petitions,
`
`why the issues addressed by the differences are material, and why the Board
`
`should exercise its discretion to institute additional petitions.”
`
`I.
`
`Ordering of Petitions
`
`Petitioner believes that both petitions are meritorious and justified, espe-
`
`cially because (as explained further below), both petitions are necessary to address
`
`all of the claims that Patent Owner asserted against Petitioner in ongoing district
`
`court litigation. Nonetheless, to the extent required by the Trial Practice Guide, Pe-
`
`titioner requests that the Board consider the petitions in the following order:
`
`Rank
`
`PTAB Case No.
`
`Primary References
`
`IPR2020-00291
`
`Hattori, Kondo
`
`Challenged
`Claims
`1-4
`
`1
`
`2
`
`IPR2020-00292
`
`Khanna, Takahashi
`
`1-4
`
`
`
`II. Material Differences that Compel Permitting Multiple Petitions
`
`Petitioner submits that institution of both petitions against the ’070 Patent is
`
`warranted. While both petitions challenge all of the claims, they advance different
`
`1
`
`

`

`Attorney Docket No. 39843-0071IP1/IP2
`IPR of U.S. Patent No. 9,647,070
`grounds that highlight the existence of particular claimed features within the prior
`
`art. As such, each of these petitions has particular, non-overlapping strengths.
`
`For example, the Hattori and Kondo grounds in IPR2020-00291 are presented to
`
`illustrate with exceptional clarity the existence of prior art that explicitly shows a
`
`region “defined with a graded dopant concentration, to aid carrier movement from
`
`an emitter in the active region to a collector in the substrate, the graded dopant
`
`concentration greater proximate the first surface of the substrate,” as recited in in-
`
`dependent claim 1 of the ’070 Patent. Though all grounds in IPR2020-00291 and
`
`IPR2020-00292 disclose this feature, the Hattori and Kondo grounds in IPR2020-
`
`00291 illustrate using annotated FIG. 4 of Hattori, which is reproduced in page 46
`
`of the petition filed in IPR2020-00291.
`
`
`
`2
`
`

`

`Attorney Docket No. 39843-0071IP1/IP2
`IPR of U.S. Patent No. 9,647,070
`
`Hattori, FIG. 4
`
`
`
`In another example, the Khanna and Takahashi grounds in IPR2020-00292
`
`are presented to illustrate with exceptional clarity the existence of prior art that ex-
`
`plicitly shows “a substrate of a first doping type at a first doping level having first
`
`and second surfaces,” as recited in independent claim 1 of the ’070 Patent. Though
`
`all grounds in IPR2020-00291 and IPR2020-00292 disclose this feature, the
`
`Khanna and Takahashi grounds in IPR2020-00292 illustrate using annotated FIG.
`
`2.3(b) of Khanna a layer with the label “P+ Substrate (5x1019 cm-3).”
`
`3
`
`

`

`Attorney Docket No. 39843-0071IP1/IP2
`IPR of U.S. Patent No. 9,647,070
`
`
`
`Petitioner submits that no extraordinary additional burden would be imposed
`
`on the Board and the parties by institution of both petitions. Both petitions rely
`
`upon the same expert, Dr. Bruce Smith. There are only four claims being ad-
`
`dressed across the two petitions. Further, Patent Owner is already required to ana-
`
`lyze the prior art cited in the table above, as these references were recently submit-
`
`ted in co-pending litigation as part of invalidity contentions.
`
`
`
`
`
`4
`
`

`

`Attorney Docket No. 39843-0071IP1/IP2
`IPR of U.S. Patent No. 9,647,070
`For each of these reasons, Petitioner respectfully requests institution of both
`
`of its concurrently filed IPR petitions against the ’070 patent.
`
`
`
`
`Dated December 24, 2019
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/W. Karl Renner/
`
`W. Karl Renner, Reg. No. 41,265
`David Holt, Reg. No. 65,161
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
`
`Attorneys for Petitioner
`
`5
`
`

`

`Attorney Docket No. 39843-0071IP1/IP2
`IPR of U.S. Patent No. 9,647,070
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
`
`certifies that on December 24, 2019, a complete and entire copy of this “Peti-
`
`tioner’s Notice Ranking Petitions and Explaining Material Differences Between
`
`Petitions For U.S. Patent No. 9,647,070” was provided via Express Mail, to the Pa-
`
`tent Owner by serving the correspondence address of record as follows:
`
`
`
`
`
`
`
`
`
`
`
`
`MUNCK WILSON MANDALA L.L.P
`P.O. Drawer 800889
`DALLAS TX 75380
`
`
`
`
`
`
`
`/Diana Bradley/
`
`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket