Trials@uspto.gov
`571-272-7822
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` Paper No. 22
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`Entered: March 30, 2017
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`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.
`
`ULLAGADDI, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
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`

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`IPR2016-01910
`Patent 8,680,591 B2
`
`
`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”). SiOnyx, LLC (“Patent Owner”)
`timely filed a Preliminary Response (Paper 21, “Prelim. Resp.”).
`Pursuant to 35 U.S.C. § 314(a), inter partes review may not be instituted
`“unless . . . there is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.” See also 37 C.F.R
`§ 42.4(a) (delegating authority to the Board).
`Upon consideration of the Petition, the Petition’s supporting evidence, as
`well as Patent Owner’s Preliminary Response and supporting evidence, and for the
`purposes of this Decision, we are persuaded Petitioner has established a reasonable
`likelihood it would prevail with respect to at least one of the challenged claims.
`Accordingly, for the reasons that follow, we institute an inter partes review of the
`’591 patent as to claims 1, 2, 4–18, 21, and 23–26, but not as to claims 3, 19, 20,
`and 22.
`
`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.
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`Patent 8,680,591 B2
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`
`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.
`
`
`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.
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`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
`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:
`
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`Patent 8,680,591 B2
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`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 Evidence of Record
`
`Date
`Oct. 11, 2007
`
`Exhibit
`1003
`
`Petitioner relies upon the following references, as well as the Declaration of
`Dr. Shukri J. Souri (Ex. 1010):
`Reference
` U.S. Patent Pub. No. 2007/0237504 A1
`(“Nakashiba”)
`U.S. Patent No. 6,204,506 B1 (“Akahori”) Mar. 20, 2001
`U.S. Patent Pub. No. 2003/0029495 A1
`Feb. 13, 2003
`(“Mazur”)
`U.S. Patent Pub. No. 2003/0214595 A1
`(“Mabuchi”)
`U.S. Patent Pub. No. 2006/0086956 A1
`(“Furukawa”)
`English Translation of JP 06-94-244444
`(“Uematsu”)1
`Patent Owner relies upon the Declaration of R. Michael Guidash (Ex. 2001).
`
`1004
`1005
`
`1006
`
`1007
`
`1009
`
`Nov. 20, 2003
`
`Apr. 27, 2006
`
`Sept. 2, 1994
`
`F. The Asserted Grounds of Unpatentability
`
`Petitioner asserts unpatentability of the challenged claims of the ’591 patent
`based on the following grounds:
`
`
`1 The original publication in Japanese is Exhibit 1008.
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`
`Reference(s)
`Nakashiba
`Akahori and Mazur
`
`Mabuchi and Mazur
`
`Mabuchi, Mazur, and Uematsu
`Mabuchi, Mazur, and
`Furukawa
`
`Basis
`§ 102
`§ 103
`
`§ 103
`
`§ 103
`§ 103
`
`Claim(s) Challenged
`1, 4, 5, 7–9, 13, 24, and 25
`1–5, 7–9, 11, 13–22, and
`24–26
`1, 2, 4, 5, 7–11, 13–21, and
`23–26
`6
`12
`
`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).
`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.” Patent Owner
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`contends 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.”
`Prelim. Resp. 11–12 (citing Ex. 2001 ¶ 35). Patent Owner argues that the
`’591 Patent consistently specifies that the location of the textured
`region particularly and purposefully configures the silicon-based sensor
`(and photosensitive imager devices incorporating the same) to provide
`an enhanced response to and/or filtering of the radiation incident on the
`textured surface in an effort to address the ineffectiveness of known
`CCDs and CMOS imagers in interacting with particular wavelengths of
`incident radiation.
`
`Id. at 12 (citing Ex. 2001 ¶ 39). Patent Owner cites numerous portions of the ’591
`patent in support of this position. See id. at 13 (citing Ex. 1001, 1:44–48, 10:27–
`61, 14:41–15:2; Ex. 2001 ¶¶ 30, 32, 36–38). Petitioner does not proffer a
`definition for the “position” limitations. See generally Pet.
`We are charged with interpreting claim terms 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). Additionally, when construing claim terms, we
`“should also consult the patent’s prosecution history in proceedings in which the
`patent has been brought back to the [U.S. Patent and Trademark Office] for a
`second review.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed.
`Cir. 2015). Yet, we must be careful not to improperly import limitations into the
`claims or to read a particular embodiment appearing in the written description into
`the claim, if the claim language is broader than the embodiment. In re Van Geuns,
`988 F.2d 1181, 1184 (Fed. Cir. 1993). In SuperGuide Corp. v. DirecTV
`Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004), the Federal Circuit held:
`Though understanding the claim language may be aided by the
`explanations contained in the written description, it is important not to
`import into a claim limitations that are not a part of the claim. For
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`example, a particular embodiment appearing in the written description
`may not be read into a claim when the claim language is broader than
`the embodiment.
`
`We note that neither the limitation “positioned to interact with electromagnetic
`radiation” recited in claims 1 and 23, nor the similar limitation recited in claim 13,
`is defined in the ’591 patent. See In re Paulsen, 30 F.3d 1475, 1480
`(Fed. Cir. 1994) (“Although an inventor is indeed free to define the specific terms
`used to describe his or her invention, this must be done with reasonable clarity,
`deliberateness, and precision,” and when a term is given an uncommon meaning,
`the uncommon definition must be set out within the patent disclosure.). Moreover,
`although the embodiments disclosed in the ’591 patent are instructive, the claims
`recite language broader than that of the disclosure cited by Patent Owner. See Van
`Geuns, 988 F.2d at 1184.
`
`Patent Owner’s proposed construction is overly narrow because it
`impermissibly imports limitations from the specification. See id. Specifically, we
`are not persuaded that the recited “interact[ion]” is limited to “provid[ing] an
`enhanced response to and/or filtering of” electromagnetic radiation. Although the
`’591 patent discloses that the “location of the textured region can be used to
`provide enhancement and/or filtering of the incoming electromagnetic radiation”
`(Ex. 1001, 14:41–43 (emphasis added)), it does not disclose that the location of the
`textured region must be used to provide enhancement and/or filtering. Moreover,
`the ’591 patent elsewhere describes ways of “interact[ing]” other than “provid[ing]
`an enhanced response to and/or filtering.” For example, the ’591 patent discloses
`that “the textured region can function to diffuse electromagnetic radiation, to
`redirect electromagnetic radiation, and to absorb electromagnetic radiation, thus
`increasing the quantum efficiency of the device.” Id. at 10:27–30 (emphasis
`added).
`
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`Because the ’591 patent does not define explicitly the “position” limitations
`as recited in claims 1, 13, and 23, we apply the ordinary and customary meaning,
`as would have been understood by one of ordinary skill in the art in the context of
`the entire disclosure. See Translogic Tech., Inc., 504 F.3d at 1257. The
`“positioned to interact with electromagnetic radiation” limitation recited in claims
`1 and 23 and the similar limitation recited in claim 13 do not require that the
`claimed “textured region” actually interact with electromagnetic radiation. See
`Prelim. Resp. 21 (arguing that “even if the Board does not adopt Patent Owner’s
`proposed construction . . . Petitioner has failed to offer . . . evidence demonstrating
`any effect of Nakashiba’s roughened contact surface (S1) on the light that passes
`through it”).
`Accordingly, on this record and for the purposes of this Decision, we
`determine 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)
`
`According to Patent Owner, the claim term “trench isolation” should be
`construed to require a “structure that is formed by removing material from a
`semiconductor substrate to reduce optical and/or electrical crosstalk.” Prelim.
`Resp. 15 (citing Ex. 2001 ¶ 42). Patent Owner argues that this definition is
`“consistent with the ordinary and customary meaning of the term to a person of
`ordinary skill in the art and is confirmed by the teachings of the ’591 Patent.” Id.
`(citing Ex. 2001 ¶¶ 40–42). Specifically, Patent Owner cites column 15 of the ’591
`patent, which discloses that “[t]rench isolation elements can maintain pixel to pixel
`uniformity by reducing optical and electrical crosstalk.” Ex. 1001, 15:57–59.
`Petitioner does not proffer any definition for this term. See generally Pet.
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`Here again, Patent Owner’s construction is overly narrow because the
`construction impermissibly imports limitations from the specification. See Van
`Geuns, 988 F.2d at 1184. The claim term “trench isolation” is not defined in the
`specification of the ’591 patent with the requisite deliberateness, clarity, and
`precision. See Paulsen, 30 F.3d at 1480. Although the ’591 patent discloses that
`trench isolation elements “can maintain pixel to pixel uniformity by reducing
`optical and electrical crosstalk” (Ex. 1001, 15:57–59), it does not disclose that a
`structure is a trench isolation element only if the purpose of removing material is to
`reduce optical and electrical crosstalk. Indeed, Patent Owner’s declarant testifies
`that “the term ‘trench isolation’ should be interpreted in the context of the ’591
`Patent as a region formed in a semiconductor by removing material, e.g., via
`etching, from a portion of the semiconductor to generate a channel.” Ex. 2001
`¶ 40. Notably absent is any requirement that the channel be generated “to reduce
`optical and/or electrical crosstalk,” as Patent Owner’s proposed construction
`requires. To the contrary, Patent Owner’s declarant testifies that reducing optical
`and/or electrical crosstalk is merely something that “can” be achieved if the
`channel is “filled with a different material, such as a dielectric material, a reflective
`material, or a conductive material.” Id. At best, this testimony suggests a “trench
`isolation” can reduce optical and/or electrical crosstalk. Accordingly, we are not
`persuaded that a structure is a “trench isolation” only if the purpose in forming it is
`“to reduce optical and/or electrical crosstalk.”
`On this record and for the purposes of this Decision, we construe “trench
`isolation” to mean “a channel that is formed by removing material from a
`semiconductor.”
`
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`
`3. Limitations Recited in Claims 9, 24, and 25
`
`Claim 9 recites that the textured region is “formed by a process selected
`from the group consisting of lasing, chemical etching, and combinations thereof.”
`Claim 24 recites that the textured region is “formed by lasing.” Claim 25 recites
`that the textured region is “formed by lasing with short duration laser pulses.”
`According to Petitioner, “[e]ach of claims 9, 24, and 25 contain only limitations
`that further define the photosensitive device by the process used to manufacture it”
`and therefore, these claims “constitute ‘product-by-process’ claims.” Pet. 9.
`Petitioner contends that, as such, “the limitations recited therein should be given no
`patentable weight when considering a prior art reference that teaches or discloses
`the same structure that is formed by a different process.” Id. (citing Amgen Inc. v.
`F. Hoffman-La Roche Ltd., 580 F.3d. 1340, 1369–70 (Fed. Cir. 2009).
`In its Preliminary Response, Patent Owner attempts to analogize its claims
`to those at issue in Amgen by arguing
`The Federal Circuit in Amgen upheld the district court’s determination
`that a claim directed to a pharmaceutical composition containing
`erythropoietin (EPO) was not anticipated by a prior art reference based
`on the product-by-process limitation that the “EPO is purified from
`mammalian cells grown in culture.” Though the prior art reference
`disclosed the use of EPO in the treatment of anemia, the district court
`found that the claim was not anticipated because “EPO extracted from
`urine [as in the prior art] and synthetically engineered EPO [as in the
`claim] differ in glycosylation patterns, specific activity, stability in the
`human body, and ability to be mass produced.” Id. at 1364. The
`Federal Circuit observed that though “[t]hose structural and functional
`differences are not explicitly part of the claim,” they are nonetheless
`“relevant as evidence of no anticipation because of the source
`limitation.” Id. at 1370.
`
`Prelim. Resp. 23–24; see also id. at 24–25 (quoting Greenliant Sys., Inc. v. Xicor
`LLC, 692 F.3d 1261, 1265, 1268 (Fed. Cir. 2012)).
`
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`“[T]he process limitation in product-by-process claims . . . cannot be used to
`
`distinguish prior art unless the process imparts structural differences to the
`product.” Greenliant, 692 F.3d at 1265 (emphasis added). In the present
`proceeding, Patent Owner has not identified, nor are we able to ascertain, any
`structural (or functional) differences resulting from forming the textured region by
`“lasing,” as recited in claim 24, “lasing with short duration laser pulses,” as recited
`in claim 25, or “lasing, chemical etching, and combinations thereof,” as recited in
`claim 9. Indeed, we note that the ’591 patent specifically discloses that “[t]he
`textured region can be formed by various techniques, including lasing, chemical
`etching (e.g., anisotropic etching, isotropic etching), nanoimprinting, additional
`material deposition, and the like.” Ex. 1001, 10:62–65.
`On this record and for the purposes of this Decision, we determine that
`claims 9, 24, and 25 recite product-by-process limitations that are not entitled to
`patentable weight. In such case, for patentability purposes, it would not matter
`how, when, or by whom the composition was made. See In re Thorpe, 777 F.2d
`695, 697 (Fed. Cir. 1985) (“The patentability of a product does not depend on its
`method of production.”). As such, a prior art reference that discloses the claimed
`“textured region” need not also disclose the processes recited in claims 9, 24, and
`25 in order to meet the limitations recited therein.
`
`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).
`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
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`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 discloses anticipates the challenged claims and how the proposed
`combinations of prior art would have rendered the challenged claims unpatentable.
`At this preliminary stage, we determine whether the information presented in the
`Petition shows there is a reasonable likelihood that Petitioner would prevail in
`establishing that one of the challenged claims is anticipated by the asserted prior
`art or would have been obvious over the proposed combinations of prior art.
`
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`We analyze the challenges presented in the Petition in accordance with the
`above-stated principles.
`
`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 disputes Petitioner’s use of
`“or” and argues that “problems encountered in the design of [photosensitive
`imager] devices is more specific and/or distinct from those encountered in the
`general field of semiconductor processing” so a person of ordinary skill in the art
`relevant to the ’591 patent would have had “at least one year of work experience in
`semiconductor processing and optoelectronic device design.” Prelim. Resp. 10
`(citing Ex. 2001 ¶¶ 24–26).
`The parties’ definitions of the level of ordinary skill in the art are
`substantially similar, and neither party states how any difference in the parties’
`articulated levels of skill impacts the proceeding. For purposes of this Decision
`and based on the current record, based on our review of the ’591 patent, the types
`of problems and solutions described in the ’591 patent and cited prior art, and the
`testimony of Petitioner’s and Patent Owner’s declarants, we agree with and apply
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`Petitioner’s broader definition of a person of ordinary skill in the art at the time of
`the claimed invention. We also note that the applied prior art reflects the
`appropriate level of skill at the time of the claimed invention. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`
`D. Asserted Challenge Based on Nakashiba
`
`Petitioner contends claims 1, 4, 5, 7–9, 13, 24, and 25 are anticipated under
`35 U.S.C. § 102 by Nakashiba. Pet. 18–25. Patent Owner disputes Petitioner’s
`contentions. Prelim. Resp. 19–30. For the reasons that follow, we determine
`Petitioner has demonstrated a reasonable likelihood of prevailing in showing
`claims 1, 4, 5, 7–9, 13, 24, and 25 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.
`
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`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
`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
`
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`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
`(1) “[a] photosensitive imager device, comprising: a
`semiconductor substrate having a substantially planar
`surface and multiple doped regions forming a least one
`junction”
`According to Petitioner, “Nakashiba’s solid-state imaging device 1 is a
`photosensitive imager device comprising a semiconductor substrate 10 with a
`substantially planar surface (the surface opposite to contact surface S1).” Pet. 18.
`Petitioner further contends “[t]he plurality of N-type impurity light receiving
`portions 20 form at least one junction with the p-type profile of the silicon
`substrate 10.” Id. at 18–19 (citing Ex. 1003, Fig. 1, ¶¶ 19, 21; Ex. 1010 ¶¶ 89–90).
`Reproduced below is an annotated version of Nakashiba’s Figure 1, with an arrow
`added by Petitioner to designate the claimed “substantially planar surface.”
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`Petitioner’s annotated version of Figure 1 of Nakashiba.
`On this record and for the purposes of this Decision, we are satisfied that
`Petitioner demonstrates sufficiently that Nakashiba discloses the “photosensitive
`imager device,” “semiconductor substrate,” and “multiple doped regions,” as
`recited in claim 1.
`(2) “a textured region coupled to the semiconductor
`substrate on a surface opposite the substantially planar
`surface and positioned to interact with electromagnetic
`radiation”
`According to Petitioner, “[w]hile provided for a different purpose than
`enhancing light absorption, Nakashiba also includes a roughened (textured) contact
`surface S1 coupled to the silicon substrate 10 that interacts with electromagnetic
`radiation in the form of light L2 transmitted by the object to be imaged.” Id. at 20.
`Petitioner further contends “[t]he roughening exhibits a morphology that is
`operable to direct the light L2 into the substrate 10, since it is provided at the light
`receiving contact surface S1.” Id.
`According to Patent Owner,
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`Not only is [Nakashiba’s] objective wholly unrelated to the purpose
`and effect of the textured regions disclosed by the ’591 Patent, but a
`person of ordinary skill in the art would further appreciate that
`Nakashiba’s roughened contact surface (S1) would not necessarily
`provide any enhanced response to or filtering of the source light (L1).
`
`Prelim. Resp. 20 (citing Ex. 2001 ¶ 48). Patent Owner’s argument is not
`persuasive because it is based on a proposed claim construction that we declined to
`adopt. As discussed above in Section II.A.1, we construed “positioned to interact
`with electromagnetic radiation” as “any positioning of the textured region in which
`the textured region can interact, in any way, with electromagnetic radiation.”
`Patent Owner also argues that, even if we do not adopt its proposed
`construction of the “position” limitations, Petitioner still fails to demonstrate
`sufficiently “any effect of Nakashiba’s roughened contact surface (S1) on the light
`that passes through it.” Prelim. Resp. 21. The claims, however, do not require that
`the textured region have any “effect” on the electromagnetic radiation. They
`require only that the textured region be “positioned to interact” (claims 1 and 23)
`or “formed in a position to interact” (claim 13) with electromagnetic radiation.
`Because Nakashiba discloses that light L1 passes through contact surface S1
`(which Petitioner alleges discloses the recited “textured region”), Petitioner has
`shown sufficiently that surface S1 is “positioned to interact with” electromagnetic
`radiation in the form of light L1.
`On this record and for the purposes of this Decision, we are satisfied
`Petitioner demonstrates sufficiently that Nakashiba discloses the “textured region”
`recited in claim 1.
`(3) “integrated circuitry formed at the substantially planar
`surface”
`According to Petitioner, “Nakashiba’s solid-state imaging device 1 further
`comprises integrated circuitry in the form of, for example, the MOSFET 40 formed
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`at the substrate’s 10 planar surface.” Id. at 19 (citing Ex. 1003 ¶ 22, Fig. 1; Ex.
`1010 ¶ 96).
`On this record and for the purposes of this Decision, we are satisfied
`Petitioner demonstrates sufficiently that Nakashiba discloses the “integrated
`circuitry” recited in claim 1.
`the
`to
`transfer element coupled
`(4) “an electrical
`semiconductor substrate and operable to transfer an
`electrical signal from the at least one junction”
`According to Petitioner, “[w]hile Nakashiba does not explicitly teach an
`electrical transfer element coupled to the substrate and operable to transfer an
`electrical signal from the junction, one of ordinary skill in the art would recognize
`that this element is necessarily present.” Pet. 19.
`If a prior art reference does not expressly set forth a particular element of the
`claim, the reference still may anticipate only if that element is “inherent” in its
`disclosure. Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1295 (Fed.
`Cir. 2002). The Federal Circuit has held that
`To establish inherency, the extrinsic evidence must make clear that the
`missing descriptive matter is necessarily present in the thing described
`in the reference, and that it would be so recognized by persons of
`ordinary skill. Inherency, however, may not be established by
`probabilities or possibilities. The mere fact that a certain thing may
`result from a given set of circumstances is not sufficient.
`
`In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal
`quotations omitted) (emphasis added).
`With regard to inherent disclosure, Pet