Paper No. 28
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` Entered: May 26, 2017
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`HAMAMATSU CORPORATION
`Petitioner,
`
`v.
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`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.
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`ULLAGADDI, Administrative Patent Judge.
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`DECISION
`Denying-in-part and Granting-in-part
`Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
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`

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`IPR2016-01910
`Patent 8,680,591 B2
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`I. INTRODUCTION
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`A. Background
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`Hamamatsu Corporation (“Petitioner”) filed a Petition (Paper 2, “Pet.”) for
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`inter partes review of claims 1–26 (the “challenged claims”) of U.S. Patent No.
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`8,680,591 B2 (Ex. 1001, “the ’591 patent”). SiOnyx, LLC (“Patent Owner”)
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`timely filed a Preliminary Response (Paper 21, “Prelim. Resp.”). We instituted
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`review of claims 1, 2, 4–18, 21, and 23–26, but not as to claims 3, 19, 20, and 22.
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`Paper 22 (“Institution Decision” or “Inst. Dec.”). Relevant to the analysis below,
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`we instituted review of claims 1, 4, 5, 7–9, 13, 24, and 25 of the ’591 patent under
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`35 U.S.C. § 102 as anticipated by Nakashiba. Inst. Dec. 42.
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`Patent Owner filed a request for rehearing (Paper 24, “Reh’g Req.”) of our
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`Institution Decision. Patent Owner requests that we reconsider our decision to
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`institute inter partes review with respect to claims 1, 4, 5, 7–9, 13, 24, and 25 of
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`the ’591 patent as anticipated by Nakashiba (Ex. 1003). For the reasons set forth
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`below, the request is granted-in-part with respect to claims 9, 24, and 25 and
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`denied-in-part with respect to clams 1, 4, 5, 7, 8, and 13.
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`II. STANDARD OF REVIEW
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`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a
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`panel will review the decision for an abuse of discretion.” An abuse of discretion
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`occurs when a “decision was based on an erroneous conclusion of law or clearly
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`erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v.
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`Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations
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`omitted). The burdens and requirements of a request for rehearing are stated in
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`37 C.F.R. § 42.71(d):
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`2
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`IPR2016-01910
`Patent 8,680,591 B2
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`(d) Rehearing. . . . The burden of showing a decision should be
`modified lies with the party challenging the decision. The request must
`specifically identify all matters the party believes the Board
`misapprehended or overlooked, and the place where each matter was
`previously addressed in a motion, an opposition, or a reply.
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`III. ANALYSIS
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`A. Whether We Improperly Construed the “Positioned to Interact with
`Electromagnetic Radiation” Limitation
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`In its Preliminary Response, Patent Owner argued that the “positioned to
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`interact with electromagnetic radiation” limitation should be construed as “located
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`to provide enhanced response to and/or filtering of electromagnetic radiation.”
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`Prelim. Resp. 11–12. In our Institution Decision, we construed “positioned to
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`interact with electromagnetic radiation,” as recited in claims 1 and 23, and “formed
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`in a position to interact with electromagnetic radiation,” as recited in claim 13 (the
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`“position” limitations), as “any positioning of the textured region in which the
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`textured region can interact, in any way, with electromagnetic radiation.” Inst.
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`Dec. 9. We determined that the ’591 patent describes “ways of ‘interact[ing]’
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`other than ‘provid[ing]’ an enhanced response to and/or filtering,’” contrary to
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`Patent Owner’s argument. Id. at 8. Specifically, we noted the ’591 patent
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`discloses that “the textured region can function to diffuse electromagnetic
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`radiation, to redirect electromagnetic radiation, and to absorb electromagnetic
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`radiation, thus increasing the quantum efficiency of the device.” Id. (citing Ex.
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`1001, 10:27–30).
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`In its Rehearing Request, Patent Owner contends “the requirement that the
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`textured region ‘enhance’ or ‘filter’ is not limited to the function of the textured
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`region in a particular embodiment” because “it is the purpose that the specification
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`ascribes to the ‘textured region’ for achieving the object of the invention and
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`IPR2016-01910
`Patent 8,680,591 B2
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`therefore, should be considered as a definition of that term.” Reh’g. Req. 6. Patent
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`Owner argues “all embodiments presented in the specification of the ’591 Patent
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`teach that the ‘textured region’ can ‘provide an enhanced response to and/or
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`filtering of electromagnetic radiation.’” Id. at 8. Patent Owner further contends
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`that “[i]ncreasing quantum efficiency is an ‘enhanced response,’ consistent with
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`Patent Owner’s proposed construction.” Id. at 7–8. More particularly, Patent
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`Owner argues that diffusing, redirecting, and absorbing electromagnetic radiation,
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`as described in the ’591 patent, increases quantum efficiency, and that increasing
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`quantum efficiency is equivalent to an enhanced response. Id.; see Ex. 1001,
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`10:27–30.
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`The relevant inquiry is not whether the Specification has support for an
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`“enhanced response,” but whether the Specification supports construing the claim
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`term “interact with” to mean an “enhanced response and/or filtering.” Even
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`assuming, without deciding, for the purposes of this decision, that diffusing,
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`redirecting, and absorbing electromagnetic radiation results in an increased
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`quantum efficiency that could be considered to provide an enhanced response to
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`electromagnetic radiation, Patent Owner fails to demonstrate persuasively that one
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`of ordinary skill in the art would understand from the description in the ’591 patent
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`Specification that the claim term “interacting with” is defined as “providing an
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`enhanced response and/or filtering.” Furthermore, we are unable to discern a
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`portion of the Specification of the ’591 patent that discloses such an equivalency.
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`Not only does the ’591 patent not define “interact with,” the Abstract of the
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`’591 patent discloses that “[i]n one aspect, the textured region is operable to facilitate
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`generation of an electrical signal from the detection of infrared electromagnetic
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`radiation” and “[i]n another aspect, interacting with electromagnetic radiation further
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`includes increasing the semiconductor substrate’s effective absorption wavelength as
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`IPR2016-01910
`Patent 8,680,591 B2
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`compared to a semiconductor substrate lacking a textured region.” Ex. 1001, Abstract
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`(emphasis added). This passage suggests that, at least in one aspect, “interact[ing]
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`with” electromagnetic radiation includes merely generating electrons from photons,
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`which is not an “enhanced response” and/or “filtering,” as required by Patent
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`Owner’s proffered claim construction.
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`B. Whether We Erred in Determining Petitioner
`has Shown a Reasonable Likelihood of Prevailing on
`the Ground that Nakashiba Anticipates Claims 9, 24, and 25
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`In our Institution Decision, we construed “formed by a process selected from
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`the group consisting of lasing, chemical etching, and combinations thereof” recited
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`in claim 9, “formed by lasing” recited in claim 24, and “formed by lasing with
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`short duration laser pulses,” recited in claim 25 as product-by-process claims that
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`recite limitations that are not entitled to patentable weight. Inst. Dec. 11–12. In its
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`Rehearing Request, Patent Owner contends that our “determination impermissibly
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`shifts the burden to Patent Owner to show that mechanical polishing does not result
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`in structurally or functionally the same type of surface as laser processing or
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`chemical etching.” Reh’g. Req. 3, 11–15.
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`We have reviewed the record and our Institution Decision in light of Patent
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`Owner’s Rehearing Request and modify our determinations as follows. In its
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`Petition, Petitioner argued that claims 9, 24, and 25 are product-by-process claims
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`and further argued, with respect to anticipation by Nakashiba, that:
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`Nakashiba does not disclose that the roughened surface S1 is formed
`by either lasing (in particular using short duration laser pulses) or
`chemical etching, as recited in claims 9, 24, and 25 of the ‘591 Patent.
`However, these are product-by-process limitations, and as explained
`above, the validity of a product-by-process claim focuses “on the
`product and not on the process of making it,” such that the claim “can
`be anticipated by a prior art product that does not adhere to the claim’s
`process limitation.” Amgen, 580 F.3d at 1369-70. Moreover, there is no
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`IPR2016-01910
`Patent 8,680,591 B2
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`evidence of record that either the lasing or the chemical etching
`procedures produce a structure different than the roughened surface
`taught by Nakashiba. Since Nakashiba anticipates the entire structure
`recited in claim 1, claims 9, 24, and 25 are also anticipated.
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`Pet. 20–21 (emphasis added); see id. at 8–9.
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`Upon review of the record, we determine Petitioner did not support its
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`position with sufficient evidence that demonstrates that the processes recited in
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`claims 9, 24, and 25 do not impart structural and functional differences to the
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`product. Moreover, Petitioner does not point to citations in the ’591 patent,
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`testimonial evidence, or any other record evidence to support its position that the
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`structure or functionality of the textured region resulting from the chemical etching
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`or lasing processes recited in claims 9, 24, and 25 would be the same as the
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`structure or functionality of a roughened surface produced by a mechanical
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`polishing process as disclosed in Nakashiba. Rather, Petitioner provides only
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`conclusory statements regarding its position.
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`Given that Petitioner has not demonstrated sufficiently that the limitations
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`recited in claims 9, 24, and 25 are not entitled to patentable weight, and in light of
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`Petitioner’s concession that “Nakashiba does not disclose that the roughened
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`surface S1 is formed by either lasing (in particular using short duration laser
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`pulses) or chemical etching, as recited in claims 9, 24, and 25 of the ‘591 Patent,”
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`we determine Petitioner has not met its burden of demonstrating a reasonable
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`likelihood of prevailing with respect to showing that claims 9, 24, and 25 are
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`anticipated under 35 U.S.C. § 102 by Nakashiba.
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`C. Whether Nakashiba Anticipates Claims 1, 4, 5, 7, 8, and 13
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`Based on our construction of the position limitations, we maintain our
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`determination that Petitioner has met its burden of demonstrating a reasonable
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`likelihood of prevailing with respect to its challenge that Nakashiba anticipates
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`IPR2016-01910
`Patent 8,680,591 B2
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`each of claims 1, 4, 5, 7, 8, and 13. Even Patent Owner’s construction does not
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`require that the claimed “textured region” actually provide enhanced response to
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`and/or filtering of electromagnetic radiation, merely that it be located to provide
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`such response. Similarly, we noted in our Institution Decision that “[t]he claims,
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`however, do not require that the textured region have any ‘effect’ on the
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`electromagnetic radiation,” rather “[t]hey require only that the textured region be
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`‘positioned to interact’ (claims 1 and 23) or ‘formed in a position to interact’
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`(claim 13) with electromagnetic radiation.” Inst. Dec. 19. Moreover, we
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`determined that “[b]ecause Nakashiba discloses that light L1 passes through
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`contact surface S1 (which Petitioner alleges discloses the recited ‘textured region’),
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`Petitioner has shown sufficiently that surface S1 is ‘positioned to interact with’
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`electromagnetic radiation in the form of light L1.” Id. For these reasons, we
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`decline to modify our determination with respect to claims 1, 4, 5, 7, 8, and 13.
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`IV. ORDER
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`In consideration of the foregoing, it is hereby:
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`ORDERED that Patent Owner’s request for rehearing is denied-in-part as to
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`claims 1, 4, 5, 7, 8, and 13;
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`FURTHER ORDERED that Patent Owner’s request for rehearing is
`granted-in-part as to claims 9, 24, and 25;
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`FURTHER ORDERED that the Decision on Institution (Paper 22) is
`modified to include the analysis set forth in Section III.B herein and to deny
`institution of claims 9, 24, and 25 of the ’591 for anticipation under
`35 U.S.C. § 102 by Nakashiba; and
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`FURTHER ORDERED that an inter partes review shall continue as to the
`remaining grounds on which the Board instituted trial, namely,
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`7
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`IPR2016-01910
`Patent 8,680,591 B2
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`Claims 1, 4, 5, 7, 8, and 13 of the ’591 patent under 35 U.S.C. § 102
`as anticipated by Nakashiba;
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`Claims 1, 2, 4, 5, 7–11, 13–18, 21, and 23–26 of the ’591 patent under
`35 U.S.C. § 103 as unpatentable as obvious over Mabuchi and Mazur;
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`Claim 6 of the ’591 patent under 35 U.S.C. § 103 as unpatentable as
`obvious over Mabuchi, Mazur, and Uematsu; and
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`Claim 12 of the ’591 patent under 35 U.S.C. § 103 as unpatentable as
`obvious over Mabuchi, Mazur, and Furukawa.
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`FOR PETITIONER:
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`John D. Simmons
`Stephen E. Murray
`Keith A. Jones
`Schwarze Belisario & Nadel LLP
`jsimmons@panitchlaw.com
`smurray@panitchlaw.com
`kjones@panitchlaw.com
`uspto@panitchlaw.com
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`FOR PATENT OWNER:
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`Thomas J. Engellenner
`Reza Mollaaghababa
`Pepper Hamilton LLP
`engellennert@pepperlaw.com
`mollaaghababar@pepperlaw.com
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