Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 51
`Entered: March 28, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`HAMAMATSU CORPORATION
`Petitioner,
`
`v.
`
`SIONYX, LLC
`Patent Owner.
`_______________
`
`Case IPR2016-01910
`Patent 8,680,591 B2
`_______________
`
`
`
`
`Before GEORGIANNA W. BRADEN, MATTHEW R. CLEMENTS, and
`MONICA S. ULLAGADDI, Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge ULLAGADDI.
`
`Opinion Concurring filed by Administrative Patent Judge CLEMENTS.
`
`ULLAGADDI, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`IPR2016-01910
`Patent 8,680,591 B2
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`I. INTRODUCTION
`
`A. Background
`
`Hamamatsu Corporation (“Petitioner”) filed a Petition (Paper 2, “Pet.”) for
`inter partes review of claims 1–26 (the “challenged claims”) of U.S. Patent No.
`8,680,591 B2 (Ex. 1001, “the ’591 patent”) supported by Dr. Souri’s Declaration
`(Ex. 1010). SiOnyx, LLC (“Patent Owner”) timely filed a Preliminary Response
`(Paper 21, “Prelim. Resp.”) supported by Mr. Guidash’s Declaration (Ex. 2001).
`We instituted trial on claims 1, 2, 4–18, 21, and 23–26 of the ’591 patent on certain
`grounds of unpatentability alleged in the Petition, but declined to institute trial on
`claims 3, 19, 20, and 22. Paper 22 (“Institution Decision” or “Inst. Dec.”).
`After institution of trial, Patent Owner filed a Request for Rehearing. Paper
`24 (“Rehearing Request” or “Reh’g. Req.”). In our Decision Granting-in-Part
`Patent Owner’s Request for Rehearing under 37 C.F.R. § 42.71 (Paper 28,
`“Decision on Rehearing” or “Reh’g. Dec.”), we granted-in-part Patent Owner’s
`request as to claims 9, 24, and 25 and modified our Institution Decision to deny
`institution of claims 9, 24, and 25 for anticipation under 35 U.S.C. § 102 by
`Nakashiba. Reh’g. Dec. 7. We also modified the analysis in our Institution
`Decision to reflect the same. Id.
`Patent Owner responded to Petitioner’s challenges by filing a Patent Owner
`Response, along with Mr. Guidash’s Second Declaration (Ex. 2003). Paper 29
`(“PO Resp.”). Petitioner timely filed a Reply, along with Dr. Souri’s Second
`Declaration (Ex. 1014). Paper 32 (“Reply”).
`A hearing for IPR2016-01910 was held on October 4, 2017. The transcript
`of the hearing has been entered into the record. Paper 50 (“Tr.”).
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`We have jurisdiction under 35 U.S.C. § 6. This final written decision is
`issued pursuant to 35 U.S.C. § 318(a).
`Based on the complete record now before us, we conclude Petitioner has
`shown, by a preponderance of the evidence, that claims 1, 2, 4–11, 13–18, 21, and
`23–25 of the ’591 patent are unpatentable. We further conclude that Petitioner has
`failed to show, by a preponderance of the evidence, that claims 12 and 26 are
`unpatentable.
`
`B. Related Proceedings
`
`The parties inform us that the ’591 patent is at issue in the following
`proceeding: SiOnyx LLC, et al. v. Hamamatsu Photonics K.K., et al., 1:2015-cv-
`13488 (D. Mass.), which was originally filed on October 1, 2015. Pet. 1; Paper 20,
`1.
`
`C. The ’591 Patent
`
`The ’591 patent is entitled “Photosensitive Imaging Devices and Associated
`Methods” and discloses a photosensitive pixel device including a semiconductor
`substrate with a textured region coupled thereto. Ex. 1001, [54], [57]. The
`textured region interacts with electromagnetic radiation by “increasing the
`semiconductor substrate’s effective absorption wavelength as compared to a
`semiconductor substrate lacking a textured region.” Id. at [57]. In Figure 10,
`reproduced below, textured region 90 is depicted as being adjacent to
`semiconductor substrate 72. See id. at 16:26–41.
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`Figure 10 of the ’591 patent is a schematic
`view of a photosensitive pixel device.
`As shown in Figure 10, additional carrier support substrate 100 is coupled to the
`photosensitive pixel device on an opposing side from carrier support substrate 88.
`Id. at 16:26–28. Reflective layer 102 is disposed between textured region 90 and
`additional carrier support substrate 100. See id. at 16:32–33. The ’591 patent
`discloses that “the configuration of the textured region can function to direct or
`focus electromagnetic radiation” into or away from the semiconductor substrate.
`Id. at 15:11–16. The ’591 patent further discloses that the “location of the textured
`region can be used to provide enhancement and/or filtering of the incoming
`electromagnetic radiation.” Id. at 14:41–43.
`
`The photosensitive pixel device further includes metal regions 78, at least
`one via 80, passivation layer 82, trench isolation 84, and electrical transfer element
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`86. Id. at 15:55–57. The ’591 patent discloses that “[t]rench isolation elements
`can maintain pixel to pixel uniformity by reducing optical and electrical crosstalk.”
`Id. at 15:57–59.
`
`D. Illustrative Claims
`
`As noted above, Petitioner challenges claims 1–26 of the ’591 patent, of
`which claims 1, 13, and 23 are independent. Independent claims 1 and 23 are
`reproduced below.
`1. A photosensitive imager device, comprising:
`a semiconductor substrate having a substantially planar surface and
`multiple doped regions forming a least one junction;
`a textured region coupled to the semiconductor substrate on a surface
`opposite the substantially planar surface and positioned to interact
`with electromagnetic radiation;
`integrated circuitry formed at the substantially planar surface; and
`an electrical transfer element coupled to the semiconductor substrate
`and operable to transfer an electrical signal from the at least one
`junction.
`Ex. 1001, 18:33–45.
`23. A photosensitive imager device, comprising:
`a semiconductor substrate having a substantially planar surface and
`multiple doped regions forming a least one junction;
`a textured region coupled to the semiconductor substrate on a surface
`opposite the substantially planar surface and positioned to interact
`with electromagnetic radiation; and
`at least 4 transistors formed at the substantially planar surface with at
`least one of the transistors electrically coupled to the at least one
`junction.
`Id. at 20:24–34.
`
`E. The Instituted Grounds of Unpatentability
`
`We instituted trial based on the following grounds and evidence of record:
`
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`IPR2016-01910
`Patent 8,680,591 B2
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`
`Reference(s)
`Nakashiba1
`Mabuchi2 and Mazur3
`
`Claim(s) Challenged
`Basis
`§ 102 1, 4, 5, 7, 8, and 13
`§ 103 1, 2, 4, 5, 7–11, 13–18, 21,
`and 23–26
`§ 103 6
`Mabuchi, Mazur, and Uematsu4
`Mabuchi, Mazur, and Furukawa5 § 103 12
`
`Petitioner supports its challenges with the First and Second Declarations of
`Dr. Shukri J. Souri (Exs. 1010, 1014).
`Patent Owner supports its Patent Owner Response with the Second
`Declaration of Mr. Michael Guidash (Ex. 2003).
`
`II. DISCUSSION
`
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are interpreted
`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); Cuozzo Speed Techs., LLC
`v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable construction standard). Under that standard, and absent any special
`definitions, we generally give claim terms their ordinary and customary meaning,
`as would have been understood by one of ordinary skill in the art at the time of the
`invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An
`
`
`1 Ex. 1003, U.S. Patent Pub. No. 2007/0237504 A1 (Oct. 11, 2007) (“Nakashiba”).
`2 Ex. 1006, U.S. Patent Pub. No. 2003/0214595 A1 (Nov. 20, 2003) (“Mabuchi”).
`3 Ex. 1005, U.S. Patent Pub. No. 2003/0029495 A1 (Feb. 13, 2003) (“Mazur”).
`4 Ex. 1009, English Translation of JP 06-94-244444 (Sept. 2, 1994) (“Uematsu”).
`The original publication in Japanese is Exhibit 1008.
`5 Ex. 1007, U.S. Patent Pub. No. 2006/0086956 A1 (Apr. 27, 2006) (“Furukawa”).
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`inventor, however, may provide a meaning for a term that is different from its
`ordinary meaning by defining the term in the specification with “reasonable clarity,
`deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Limitations, however, are not to be read from the specification into the claims. In
`re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). In addition, the Board may
`not “construe claims during [an inter partes review] so broadly that its
`constructions are unreasonable under general claim construction principles.”
`Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). Claim
`terms need only be interpreted to the extent necessary to resolve the controversy.
`See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999).
`
`1. “positioned to interact with electromagnetic radiation” (claims 1, 13, and 23)
`
`Claims 1 and 23 recite that the textured region is “positioned to interact with
`electromagnetic radiation.” Claim 13 similarly recites that the textured region is
`“formed in a position to interact with electromagnetic radiation.” In its
`Preliminary Response, Patent Owner argued that these limitations require the
`claimed “textured region” to be “located to provide enhanced response to and/or
`filtering of electromagnetic radiation.” Prelim. Resp. 11–12. In our Decision to
`Institute, we rejected that argument and determined instead that these limitations
`“encompass any positioning of the textured region in which the textured region can
`interact, in any way, with electromagnetic radiation.” Inst. Dec. 9. Patent Owner
`requested rehearing, arguing that again the term should be construed to require “an
`enhanced response to and/or filtering of electromagnetic radiation.” Paper 24, 5–9.
`In our Decision on Rehearing, we again rejected this argument because we were
`not persuaded that “interact with” required “provide enhanced response to and/or
`filtering of.” Paper 28, 3–5.
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`In its Patent Owner Response, Patent Owner contends again that, under the
`broadest reasonable interpretation standard, these “position” limitations require the
`claimed “textured region” to be “located to provide enhanced response to and/or
`filtering of electromagnetic radiation.” PO Resp. 8 (citing Ex. 2003 ¶ 34).
`Specifically, Patent Owner contends that the
`’591 Patent addresses the ineffectiveness of known silicon-based
`imagers in interacting with particular wavelengths of incident radiation
`by particularly and purposefully providing a silicon-based sensor (and
`photosensitive imager devices incorporating the same) that provides an
`enhanced response to and/or filtering of the radiation incident through
`the interaction of the textured surface with EMR [Electromagnetic
`Radiation].
`PO Resp. 10 (citing Ex. 2003 ¶ 39). Patent Owner cites numerous portions of the
`’591 patent in support of this position. See id. at 11 (citing Ex. 1001, 1:42–48,
`10:27–30, 10:38–39, 12:1–3; Ex. 2001 ¶¶ 35–37). Patent Owner argues that the
`disclosure of “facilitating the generation of an electrical signal” in the ’591 patent
`“would have been understood by a person skilled in the art as enhancing the
`response to and/or filtering of radiation in a manner that addresses shortcomings of
`traditional silicon-based photodetecting imagers.” Id. at 11–12 (citing Ex. 1001,
`12:1–3; Ex. 2003 ¶¶ 30, 37).
`Petitioner counters that the term “‘[i]nteract’ is also not used consistently in
`the ‘591 patent specification to refer to ‘enhanced response’ or ‘filtering,’” and that
`“[t]he sections on which PO relies for support are merely narrowed example
`aspects separate from the more general aspect in which no restriction on the type or
`effect of interaction [is] found.” Reply 2, 4.
`We agree with Petitioner. The relevant case law does not support a
`conclusion in Patent Owner’s favor. In Liebel-Flarsheim Co. v. Medrad, Inc., 358
`F.3d 898, 905–906 (Fed. Cir. 2004), Medrad argued that “because all the
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`embodiments described in the common specification of the . . . patents[-in-suit]
`feature pressure jackets, the claims of those patents must be construed as limited to
`devices that use pressure jackets.” Like Patent Owner in the present proceeding,
`Medrad cited portions of the common specification describing an embodiment
`using a pressure jacket. Id. at 908. The Court found that, even though pressure
`jackets featured in all of the embodiments of the common specification, “the
`written description does not contain a clear disavowal of embodiments lacking a
`pressure jacket” and that the passages cited by Medrad fail to “expressly or by
`clear implication restrict the scope of the invention to injectors using a pressure
`jacket.” Id.
`Similarly, even if all of the embodiments disclosed in the ’591 patent feature
`a textured region interacting with electromagnetic radiation in a manner that results
`in an enhanced response and/or filtering of the radiation, the embodiments do not
`require the textured region to provide this enhanced response and/or filtering and
`further, do not define the term “interaction” as an enhanced response or filtering.
`See Liebel-Flarsheim, 358 F.3d at 908 (“[T]he specification does not describe the
`invention as limited to embodiments having pressure jackets, and none of the other
`reasons that have been invoked for giving claims a narrow reading are present.”).
`The claim language “interact with” is plainly broader than Patent Owner’s
`proffered construction, and the “position” limitations can be read to encompass
`features not described in the written description. See Liebel-Flarsheim, 358 F.3d at
`908 (“The fact that a patent asserts that an invention achieves several objectives
`does not require that each of the claims be construed as limited to structures that
`are capable of achieving all of the objectives.”)
`Moreover, the abstract of the ’591 patent discloses that “[i]n one aspect, the
`textured region is operable to facilitate generation of an electrical signal from the
`
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`detection of infrared electromagnetic radiation,” suggesting that at least in one
`aspect, “interact[ing] with” electromagnetic radiation includes merely generating
`electrons from photons. See Liebel-Flarsheim, 358 F.3d at 908 (noting that
`language from the abstract “can reasonably be understood as constituting a general
`description of the invention,” and “does not suggest that a pressure jacket is an
`essential component of the invention,” and further finding an absence of “language
`in that passage, or elsewhere in the specification, that disclaims the use of the
`invention in the absence of a pressure jacket”).
`In the Markman Memorandum and Order (Paper 44) from the co-pending
`district court litigation, the court found that
`[T]he specification provides examples where the textured region
`“interacts” with electromagnetic radiation in a number of different
`ways, including by “redirecting,” “diffusing,” “absorbing,” and
`“filtering.” The specification provides those forms of interaction as
`examples, and does not describe them as exhaustive. Therefore, even
`if the Court assumed that redirecting, diffusing, and absorbing radiation
`constituted “providing enhanced response,” as plaintiffs suggest, the
`specification does not require that the claim is limited to those forms of
`interaction.
`Paper 44, 31–32. Though not dispositive in reaching our conclusion here, the
`district court found “relevant and persuasive” our reasoning that “at least in one
`aspect, ‘interact[ing] with’ electromagnetic radiation includes merely generating
`electrons from photons, which is not an ‘enhanced response’ and/or ‘filtering.’”
`Id. at 32 (quoting our Decision Denying-in-Part and Granting-in-Part Patent
`Owner’s Request for Rehearing (Paper 28, 5)). The court further found that “[t]he
`specification does not use the term ‘interact’ to refer exclusively to ‘enhanced
`response’ or ‘filtering’ and therefore does not narrow the ordinary meaning of
`‘interact’ to those functions.” Id. Based on these findings, the district court
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`construed the “position” limitations to mean “located to receive and act upon
`electromagnetic radiation.” Id. at 33.
`Patent Owner also contends that our initial interpretation of the “position”
`limitations “would also encompass cases in which the textured region would have
`no effect on the photoelectric response of the photosensitive imager to the incident
`radiation, contrary to the purpose of the ’591 Patent.” PO Resp. 14-15. Patent
`Owner contends that “[t]his is so because the ordinary meaning of the term
`‘interact’ is to ‘[] act in such a way to have an effect on another.’” Id. (citing Ex.
`2011, 877; Ex. 2003 ¶ 40); see id. at 16. Patent Owner argues that
`In the absence of the textured region affecting the incident
`light in some way, a person skilled in the art would not
`conclude that the textured region has “interacted with” the
`incident light. In other words, a difference in the effect on
`the radiation with and without the textured region must be
`discernable in order to conclude that the textured region
`has interacted with incident light.
`Id. at 15 (citing Ex. 2003 ¶ 40). Patent Owner urges us to construe the “position”
`limitations “to require that the textured region have an effect on electromagnetic
`radiation that would differ from that observed without such a textured region.” Id.
`at 16 (citing Ex. 2003 ¶ 40).
`We disagree that our construction encompasses cases in which the textured
`region is positioned to have no effect on electromagnetic radiation. Our
`construction requires the textured region to be positioned “to interact” and, as
`Patent Owner concedes, the ordinary meaning of “interact” is “to have an effect on
`another.” PO Resp. 15. Although we have declined to limit that interaction to
`“enhanced response to and/or filtering” and have instead construed it to encompass
`interacting “in any way,” we do not construe the limitation to encompass non-
`interaction. In any event, it is not necessary to make a final conclusion as to
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`whether these limitations encompass non-interaction because each of Nakashiba,
`Mabuchi, and Mazur discloses an interaction with electromagnetic radiation. See
`Vivid Techs., 200 F.3d at 803.
`Based on our review of the complete record and having considered the
`arguments and evidence adduced at trial, we maintain our determination that the
`“position” limitations encompass any positioning of the textured region in which
`the textured region can interact, in any way, with electromagnetic radiation.
`
`2. “trench isolation” (claim 12)
`
`Claim 12 recites “at least one trench isolation positioned between the at least
`two photosensitive imager device.” In our Decision on Institution, we construed
`this term to mean “a channel that is formed by removing material from a
`semiconductor.” Inst. Dec. 10.
`Patent Owner does not dispute our construction and “applies the Board’s
`initial construction of ‘trench isolation’ without prejudice.” PO Resp. 16.
`Petitioner does not dispute our construction. See generally Pet. Reply passim.
`Based on our review of the complete record and having considered the
`arguments and evidence adduced at trial, we maintain our initial decision and
`conclude “trench isolation” should be construed as “a channel that is formed by
`removing material from a semiconductor.” See Inst. Dec. 10.
`
`3. Limitations recited in claims 9, 24, and 25
`
`In our Institution Decision, we determined that “claims 9, 24, and 25 recite
`product-by-process limitations that are not entitled to patentable weight” and thus,
`“for patentability purposes, it would not matter how, when, or by whom the
`composition was made.” Inst. Dec. 12 (citing In re Thorpe, 777 F.2d 695, 697
`(Fed. Cir. 1985)). We made this determination at the institution stage because
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`Petitioner’s challenge based on anticipation by Nakashiba required a determination
`as to whether claims 9, 24, and 25 recited product-by-process limitations.
`In our Decision on Rehearing, we granted-in-part Patent Owner’s request to
`reconsider our Decision to Institute with respect to claims 9, 24, and 25. Reh’g.
`Dec. 7. We modified our Institution Decision to deny institution of trial with
`respect to claims 9, 24, and 25 for anticipation by Nakashiba. Id.
`The only instituted challenge to claims 9, 24, and 25 that remains is based on
`obviousness over the combination of Mabuchi and Mazur. Id. at 8. As Petitioner’s
`obviousness challenge relies on explicit disclosures in the references for teaching
`the claimed processes, it is not necessary to make a final conclusion as to whether
`claims 9, 24, and 25 recite product-by-process limitations to resolve the
`controversy before us. See Vivid Techs., 200 F.3d at 803.
`
`4. Preamble – “photosensitive imager device”
`
`Although Patent Owner did not, in its Patent Owner Response, identify the
`preamble as requiring construction, Patent Owner argued during the hearing that
`the preamble is limiting—specifically that the claims “require an imager.” See Tr.
`26:25–27:19; 26:2–10. We consider whether the preamble is limiting because
`Patent Owner presents arguments premised on the claims requiring more than a
`single pixel device. See generally PO Resp. (presenting arguments regarding
`interactions and crosstalk between pixels in an imaging device). If the “imager”
`recited in the preamble of claims 1, 13, and 23 is considered limiting, then,
`according to Patent Owner, these claims would require a plurality of pixel devices
`because an imager must have more than a single pixel device to be capable of
`producing an image, which is constituted of more than a single pixel. In such case,
`Patent Owner’s arguments would be commensurate in scope with the claims. If
`the “imager” recited in the preamble of claims 1, 13, and 23 is not considered
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`limiting, certain arguments presented by Patent Owner would not be commensurate
`in scope with the claims because the recitation of “at least one junction” in the
`body of independent claims 1, 13, and 23 encompasses a single junction, i.e., a
`single pixel device.
`The district court found that “[t]he only way to give effect to every word in
`the claim term is to construe ‘photosensitive imager device’ to include that the
`device convert incident radiation into an image.” Paper 44, 28. Although we are
`“not generally bound by a prior judicial construction of claim term,” we
`acknowledge the district court’s construction and “assess whether it is consistent
`with the broadest reasonable construction of the term.” Power Integrations, Inc. v.
`Lee, 797 F.3d 1318, 1326 (Fed. Cir. 2015). For the reasons discussed below, we
`do not agree that the preamble should have a limiting effect.
`The preamble may be construed as limiting “if it recites essential structure or
`steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.”
`Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir.
`2002) (quoting Pitney Bowes, Inc. v. Hewlett–Packard Co., 182 F.3d 1298, 1305
`(Fed. Cir. 1999)). “A preamble is not regarded as limiting, however, ‘when the
`claim body describes a structurally complete invention such that deletion of the
`preamble phrase does not affect the structure or steps of the claimed invention.’”
`American Medical Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358–59 (Fed. Cir.
`2010) (quoting Catalina, 289 F.3d at 809). The Federal Circuit has “held that the
`preamble has no separate limiting effect if, for example, ‘the preamble merely
`gives a descriptive name to the set of limitations in the body of the claim that
`completely set forth the invention.’” Id. at 1359 (quoting IMS Tech., Inc. v. Haas
`Automation, Inc., 206 F.3d 1422, 1434–35 (Fed. Cir. 2000)).
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`In this case, the term “photosensitive” is descriptive of the “semiconductor
`substrate” recited in claims 1, 13, and 23. None of claims 1, 13, and 23 recite an
`image or generating an image. Accordingly, the preamble “[a] photosensitive
`imager device” recited in claims 1 and 23 does not affect the structure of the
`invention recited in the body of claims 1 and 23, respectively. Similarly, the
`preamble “[a] method of making a photosensitive imager device” recited in claim
`13 does not affect the steps of the invention recited in claim 13.
`Figures 1–6 of the ’591 patent illustrate “photosensitive devices” according
`to aspects of the invention, Figures 7–13, 15, and 16 illustrate “photosensitive pixel
`devices” according to aspects of the invention, Figure 14 illustrates a
`“photosensitive imager device,” and Figure 17 illustrates a “method of making a
`photosensitive imager device.” Thus, the ’591 patent specification discloses
`aspects in which an imager can, not must, be part of the invention, and that the
`“semiconductor substrate,” “textured region,” “integrated circuitry,” and “at least
`one transfer element” need not be incorporated in a “photosensitive imager
`device.” Furthermore, the prosecution history indicates that the preambles formed
`the basis of the originally submitted independent claims–the preambles recited in
`claims 1, 13, and 23 were not added to distinguish the claimed inventions from the
`prior art. See generally Ex. 1002.
`For the reasons discussed above, we conclude the preambles of independent
`claims 1, 13, and 23 are not entitled to patentable weight.
`
`B. Principles of Law
`
`“A claim is anticipated only if each and every element as set forth in the
`claim is found, either expressly or inherently described, in a single prior art
`reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814 F.2d 628,
`631 (Fed. Cir. 1987).
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`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between
`the subject matter sought to be patented 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; (3) the level of skill in the art; and (4) objective evidence of
`nonobviousness, i.e., secondary considerations. See Graham v. John Deere Co.,
`383 U.S. 1, 17–18 (1966).
`“In an [inter partes review], the petitioner has the burden from the onset to
`show with particularity why the patent it challenges is unpatentable.” Harmonic
`Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C.
`§ 312(a)(3) (requiring inter partes review petitions to identify “with particularity
`. . . the evidence that supports the grounds for the challenge to each claim”)). This
`burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l
`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp.
`v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden
`of proof in inter partes review). Furthermore, Petitioner cannot satisfy its burden
`of proving obviousness by employing “mere conclusory statements.” In re
`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`Thus, to prevail in an inter partes review, Petitioner must explain how the
`prior art anticipates the challenged claims and how the proposed combinations of
`prior art would have rendered the challenged claims unpatentable. We analyze the
`challenges presented in the Petition in accordance with the above-stated principles.
`
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`
`C. Level of Ordinary Skill in the Art
`
`In determining whether an invention would have been obvious at the time it
`was made, we consider the level of ordinary skill in the pertinent art at the time of
`the invention. Graham, 383 U.S. at 17. “The importance of resolving the level of
`ordinary skill in the art lies in the necessity of maintaining objectivity in the
`obviousness inquiry.” Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir.
`1991).
`Petitioner’s declarant, Dr. Souri, testifies that a person of ordinary skill in
`the art relevant to the ’591 patent “would hold a bachelor’s degree in physics,
`electrical engineering, or a related discipline, and have at least one year of
`experience working in the field of semiconductor processing or optoelectronic
`device design.” Ex. 1010 ¶ 32; Pet. 8. Patent Owner applies Petitioner’s proposed
`level of ordinary skill in the art for purposes of this proceeding. PO Resp. 7 n.2.
`Based on our review of the ’591 patent, the types of problems and solutions
`described in the ’591 patent and cited prior art, the testimony of Petitioner’s and
`Patent Owner’s declarants, and the arguments and evidence adduced at trial, we
`agree with and apply Petitioner’s definition of a person of ordinary skill in the art
`at the time of the claimed invention. See Inst. Dec. 14–15.
`
`D. Asserted Challenge Based on Nakashiba
`
`Petitioner contends claims 1, 4, 5, 7, 8, and 13, are anticipated under 35
`U.S.C. § 102 by Nakashiba. Pet. 18–25. Patent Owner disputes Petitioner’s
`contentions. PO Resp. 17–25. The burden, however, remains on Petitioner to
`demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378. For the
`reasons that follow, we find Petitioner has demonstrated by a preponderance of the
`evidence that claims 1, 7, 8, and 13 are anticipated by Nakashiba. We find,
`
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`however, Petitioner has failed to demonstrate by a preponderance of the evidence
`that claims 4 and 5 are anticipated by Nakashiba.
`
`1. Overview of Nakashiba
`
`Nakashiba is entitled “Solid State Imaging Device” and discloses a
`semiconductor substrate having a rough contact surface as its back surface. Ex.
`1003, [54], [57]. Figure 3, reproduced below, illustrates solid-state image device
`1, which images fingerprint 92, and includes contact surface S1. Id. ¶ 28.
`
`
`
`Figure 3 of Nakashiba is a cross-sectional view of
`solid-state imaging device 1, finger 90, and fingerprint 92.
`In Figure 3, solid-state imaging device 1 is shown as including semiconductor
`substrate 10, light receiving portions 20, interconnect layer 30 including
`interconnect 32, and MOSFET [Metal Oxide Semiconductor Field Effect
`Transistor] 40 including N-type impurity diffusion layer 42 and gate electrode 44.
`Id. ¶¶ 19, 22, 23. Semiconductor substrate 10 is a P-type silicon substrate and
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`includes contact surface S1, which has “undergone a roughening process such as a
`non-glass processing or mat finishing . . . executed by a surface treatment process
`such as mechanical polishing.” Id. ¶¶ 19, 20.
`When finger 90 is brought into contact with contact surface S1 and light L1
`from a light source is incident upon finger 90, transmitted light L2 is
`photoelectrically converted in semiconductor substrate 10. Id. ¶ 28. Nakashiba
`discloses that “light receiving portions 20 receive the signal charge generated by
`the photoelectric conversion, to thereby acquire an image of the fingerprint 92.”
`Id. Nakashiba further discloses that “light L1 may be visible light, near-infrared
`light or infrared light.” Id.
`In Nakashiba, because contact surface S1 is roughened, “after the finger,
`which is the object to be imaged, is brought into direct contact with the contact
`surface S1, the residual fingerprint barely remains on the contact surface S1, unlike
`in the case where the contact surface S1 is smooth.” Id. ¶ 30.
`
`2. Analysis
`
`a.
`
`Independent Claim 1
`
`imager device, comprising: a
`(1) “[a] photosensitive
`semi