`
`
`
`CASE IPR2017-00540
`Patent No. 6,936,851
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`SAMSUNG ELECTRONICS CO., LTD.
`Petitioner,
`
`v.
`
`LEXINGTON LUMINANCE LLC
`Patent Owner.
`
`
`
`IPR2017-00540
`Patent No. 6,936,851
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`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
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`
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`
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`CASE IPR2017-00540
`Patent No. 6,936,851
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`
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`
`TABLE OF CONTENTS
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`
`
`I.
`
`INTRODUCTION .............................................................................................. 1
`
`II. TECHNOLOGY BACKGROUND ................................................................... 1
`
`A. Overview of p-n junction semiconductor light-emitting devices ................ 1
`
`B. History of GaN LEDs .................................................................................. 3
`
`C. The ’851 patent ............................................................................................ 4
`
`III. LEXINGTON LUMINANCE’S CLAIM CONSTRUCTIONS ........................ 5
`
`A. The “textured district” Claim Limitation ..................................................... 6
`
`B. “etched trenches” (claims 1 and 15) ............................................................ 8
`
`C. “micro-facets” (claims 1 and 15) ................................................................. 8
`
`D. “a sloped etching profile with a smooth rotation of micro-facets” (claim 1)
` 10
`
`E. “a sloped etching profile… without a prescribed angle of inclination”
`(claims 1 and 15) ........................................................................................11
`
`F. “disposed on” (claims 1 and 15) ................................................................15
`
`G. “lattice-mismatched misfit system” (claims 1 and 15) ..............................15
`
`H. “whereby said plurality of inclined lower portions are configured to guide
`extended lattice defects away from propagating into the active layer”
`(claims 1 and 15) ........................................................................................16
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART ............................................. 16
`
`V. THERE IS NO REASONABLE LIKELIHOOD OF PETITIONERS
`PREVAILING AS TO A CHALLENGED CLAIM OF THE ’851 PATENT ....... 17
`
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`Patent No. 6,936,851
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`A. All of the Asserted Prior Art Was Before the Patent Office During
`Reexamination ...........................................................................................20
`
`VI. SUMMARY OF THE ASSERTED PRIOR ART ........................................... 21
`
`A. Kawahara ...................................................................................................21
`
`B. Nagasawa ...................................................................................................21
`
`C. Tadatomo ...................................................................................................24
`
`VII. NO CHALLENGED CLAIMS ARE OBVIOUS IN LIGHT OF Kawahara
`and TADATOMO under 35 U.S.C. §103(a) ........................................................... 28
`
`A. A PHOSITA Would Not Combine the References ...................................28
`
`B. Petitioner’s Translation is Biased and Redundant .....................................30
`
`C. Claims 1 & 15: Kawahara and Tadatomo Do Not Disclose or Suggest “a
`textured district defined on the surface of said substrate comprising a
`plurality of etched trenches having a sloped etching profile with a smooth
`rotation of micro-facets without a prescribed angle of inclination” ..........33
`
`1. Kawahara does not teach or suggest the use of “etched trenches” that
`have “a sloped etching profile with a smooth rotation of micro-
`facets” .................................................................................................33
`
`2. Kawahara does not teach or suggest the use of “etched trenches” that
`have “a sloped etching profile without a prescribed angle of
`inclination” .........................................................................................45
`
`D. Claims 1 & 15: Kawahara Does Not Suggest the Use of a System
`Wherein “first layer and substrate form a lattice-mismatched misfit
`system”. ......................................................................................................52
`
`E. Claims 1 & 15: Kawahara in Combination with Tadatomo Does Not
`Disclose or Suggest Any Structure “whereby said plurality of inclined
`lower portions are configured to guide extended lattice defects away from
`propagating into the active layer” ..............................................................54
`
`F. Claim 15: Kawahara Does Not Disclose or Suggest “a textured district
`defined on the surface of said substrate comprising a plurality of etched
`
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`CASE IPR2017-00540
`Patent No. 6,936,851
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`trenches having a sloped smooth etching profile without sharp corners and
`without a prescribed angle of inclination” .................................................55
`
`G. Claims 16 - 18: Kawahara and Tadatomo Do Not Disclose or Suggest
`“the sides of said etched trenches” (Not Limited to the “sloped smooth
`etching profile” of the “etched trenches”) are (1) “smooth,” (2) “without
`sharp corners,” or (3) “without a prescribed angle of inclination” ............56
`
`NO CHALLENGED CLAIMS ARE OBVIOUS IN LIGHT OF
`VIII.
`Nagasawa and Tadatomo under 35 U.S.C. §103(a) ................................................. 59
`
`A. A PHOSITA Would Not Combine the References ...................................59
`
`B. Claims 1 & 15: Nagasawa does Not Disclose or Suggest “a textured
`district defined on the surface of said substrate comprising a plurality of
`etched trenches having a sloped etching profile with a smooth rotation of
`micro-facets without a prescribed angle of inclination” ............................61
`
`1. Nagasawa does not teach or suggest the use of “etched trenches” that
`have “a sloped etching profile with a smooth rotation of micro-
`facets” .................................................................................................61
`
`2. Nagasawa does not teach or suggest the use of “etched trenches” that
`have “a sloped etching profile without a prescribed angle of
`inclination” .........................................................................................68
`
`C. Claims 1 & 15: Nagasawa Does Not Suggest the Use of a System
`Wherein “first layer and substrate form a lattice-mismatched misfit
`system”. ......................................................................................................70
`
`D. Claims 1 & 15: Nagasawa in Combination with Tadatomo Does Not
`Disclose or Suggest Any Structure “whereby said plurality of inclined
`lower portions are configured to guide extended lattice defects away from
`propagating into the active layer” ..............................................................71
`
`E. Claim 15: Nagasawa Does Not Disclose or Suggest “a textured district
`defined on the surface of said substrate comprising a plurality of etched
`trenches having a sloped smooth etching profile without sharp corners and
`without a prescribed angle of inclination” .................................................72
`
`F. Claims 16 - 18: Nagasawa in Combination with Tadatomo Do Not
`Disclose or Suggest “the sides of said etched trenches” (Not limited to the
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`CASE IPR2017-00540
`Patent No. 6,936,851
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`“sloped smooth etching profile” of the “etched trenches”) are (1)
`“smooth,” (2) “without sharp corners,” or (3) “without a prescribed angle
`of inclination” ............................................................................................73
`
`IX. NO CHALLENGED CLAIMS ARE OBVIOUS IN LIGHT OF Nagasawa,
`KAWAHARA and Tadatomo under 35 U.S.C. §103(a) ......................................... 73
`
`X. THE PETITIONER FAILED TO IDENTIFY ANY COMPELLING
`RATIONALE FOR ADOPTING REDUNDANT GROUNDS OF REJECTION . 76
`
`XI. CONCLUSION ................................................................................................ 79
`
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`CASE IPR2017-00540
`Patent No. 6,936,851
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`
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`
`TABLE OF AUTHORITIES
`
`Cases
`Arendi S.A.R.L. v. Apple Inc., Appeal No. 15-2073 (Fed. Cir. 2016) .....................19
`Ex parte Clapp, 227 U.S.P.Q. 972, 973 (BPAI 1985) .............................................44
`Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966) ...............................17
`In re Gal, 980 F.2d 717 (Fed. Cir. 1992) .................................................................45
`K/S HIMPP v. Hear-Wear Technologies, LLC, 751 F.3d 1362 (Fed. Cir. 2014) ...19
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ................................................19
`Mintz v. Dietz & Watson, Inc., 679 F.3d 1372 (Fed. Cir. 2012) ..............................19
`Moore U.S.A., Inc. v. Standard Register Co., 229 F.3d 1091 (Fed. Cir. 2000) .......10
`OSRAM Sylvania, Inc. v. Am. Induction Techs., Inc., 701 F.3d 698 (Fed. Cir. 2012)
` ............................................................................................................................18
`Par Pharm., Inc. v. TWi Pharm., Inc., 773 F.3d 1186 (Fed. Cir. 2014) ..................20
`Proctor & Gamble Co. v. Teva Pharm. USA, Inc., 566 F.3d 989 (Fed. Cir. 2009) 18
`Statutes
`§ 42.104(b)(5) ..........................................................................................................17
`28 U.S.C. § 1746 ......................................................................................................33
`35 U.S.C. § 103 ................................................................................................. 17, 76
`35 U.S.C. § 325(d) ...................................................................................................20
`Other Authorities
`Illumina, Inc. v. Trustees of Columbia Univ., IPR2012-00006, Paper 43 (P.T.A.B.
`May 10, 2013) ....................................................................................................77
`LG Innotek Co., Ltd. v. Lexington Luminance LLC, Case IPR2017-00052, Decision
`Denying Institution of Inter Partes Review, Paper 7 ..................... 11, 12, 16, 27
`Liberty Mutual Insurance Company v. Progressive Casualty Insurance Company,
`CBM-2012-00003, Paper No. 8 (P.T.A.B. October 25, 2012) ................... 76, 77
`MPEP § 2143 ...........................................................................................................17
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`CASE IPR2017-00540
`Patent No. 6,936,851
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`Regulations
`37 C.F.R. § 42.1(b) ..................................................................................................77
`37 C.F.R. § 42.100(b) ................................................................................................ 5
`37 C.F.R. § 42.12 .....................................................................................................33
`37 C.F.R. § 42.2 .......................................................................................................33
`37 C.F.R. § 42.24 .....................................................................................................82
`37 C.F.R. § 42.24(a)(1) ............................................................................................82
`37 C.F.R. § 42.24(b) ................................................................................................82
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`CASE IPR2017-00540
`Patent No. 6,936,851
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`
`PATENT OWNER’S LIST OF EXHIBITS
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`
`Ex. 2001
`
`Ex. 2002
`
`Ex. 2003
`
`Ex. 2004
`
`Information Disclosure Statement submitted May 21, 2014 in
`connection with the reexamination of the ’851 patent
`Tadatomo translation appearing in the file history of U.S. Patent No.
`7,053,420
`Tadatomo translation submitted in connection with the Ex. 2001 IDS
`(“Tadatomo”)
`Tadatomo translation served on Patent Owner in connection with
`Lexington Luminance LLC v. Amazon.com, Inc., et al., No. 1:12-cv-
`12216-DJC (D. Mass.)
`Transmittal letter accompanying Ex. 2004
`Ex. 2005
`Tadatomo Office Action Response dated April 11, 2005
`Ex. 2006
`Ex. 2007 Declaration of Michael P.C. Watts, PhD. in Lexington Luminance
`LLC v. Google, Inc., No. 1:12-cv-12218-RGS (D. Mass.)
`K. Tadatomo, et al. U.S. Patent No. 7,053,420
`Declaration of Dr. Edwin L. Piner
`Curriculum Vitae of Dr. Edwin L. Piner
`Lexington Luminance LLC v. Amazon.com Inc., 601 F. App’x 963
`(Fed. Cir. 2015)
`Declaration of Robert D. Katz
`Information Disclosure Statement submitted October 3, 2003 in
`connection with the application leading to the Kawahara patent
`Japanese Publication No. 2001-160539 (“Masayuki”).
`K. Shibahara, et al., Antiphase-domain-free growth of cubic SiC on
`Si(100), Appl. Phys. Lett. Vol. 50 (1987) pp. 1888-1890.
`
`Ex. 2008
`Ex. 2009
`Ex. 2010
`Ex. 2011
`
`Ex. 2012
`Ex. 2013
`
`Ex. 2014
`Ex. 2015
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`CASE IPR2017-00540
`Patent No. 6,936,851
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`INTRODUCTION
`
`I.
`
`Patent Owner Lexington Luminance LLC (“Lexington”) submits that the
`
`Board should deny the request for inter partes review of U.S. Patent No. 6,936,851
`
`(“the ’851 patent”) because there is not a reasonable likelihood that Petitioner
`
`would prevail at trial with respect to at least one claim of the ’851 patent because
`
`the asserted prior art fails to teach or suggest all claim limitations. Neither U.S.
`
`Patent Application Publication No. 2003/0047129 (Ex. 1006 hereinafter
`
`“Kawahara”), nor U.S. Patent No. 7,101,774 (Ex. 1008 hereinafter “Nagasawa”) in
`
`view of PCT Publication No. WO 02/075821 (Ex. 1007), teaches or suggests all
`
`elements of any of the challenged claims.1
`
`Indeed, each of the prior art references relied upon by Petitioner were
`
`considered by the Examiner in the recent reexamination of the ’851 patent before
`
`he allowed the claims.2 For all these reasons as explained in detail below, the
`
`Petition for inter partes review should be denied.
`
`II. TECHNOLOGY BACKGROUND
`A. Overview of p-n junction semiconductor light-emitting devices
`As explained by Professor Piner, “[a] semiconductor light-emitting device is
`
`a generic term that refers to both light-emitting diodes (“LEDs”) and Laser Diodes
`
`1 Infra, §§VI and VII.
`
`2 Infra, §V.
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`CASE IPR2017-00540
`Patent No. 6,936,851
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`(“LDs”).”3 LEDs are more common; they are found in televisions, mobile phones,
`
`and light bulbs and consume less power than other earlier lighting devices.4
`
`“LEDs work by applying a voltage across a p-n junction, which pushes the holes
`
`from the p-type layer and the electrons from the n-type layer together to release
`
`light energy in the form of photons. A p-n junction is the area where the p-type
`
`material and n-type material come into contact. At the p-n junction, extra electrons
`
`from the n-type material can move to fill the holes in the p-type material.”5 When
`
`a voltage is applied across a p-n junction, holes from the p-type material and
`
`electrons from the n-type layer are pushed together.6 “When an electron
`
`recombines with a hole, the electron drops to a lower energy level (the valence
`
`band) and the electron’s excess energy is emitted as a photon, creating light. The
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`color of the emitted light is determined by the properties of the semiconductor
`
`material.” LEDs based on Gallium Nitride (“GaN”) are engineered to produce a
`
`variety of colors, including blue light in particular.7
`
`
`3 Ex. 2009, Professor Piner’s Declaration, ¶15.
`
`4 Id.
`
`5 Id. at ¶¶15-16.
`
`6 Id. at ¶16.
`
`7 Id.
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`Patent No. 6,936,851
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`B. History of GaN LEDs
`The development of GaN semiconductors was important because they
`
`emitted near UV and blue light, which was needed in lasers and LEDs.8 But using
`
`a sapphire substrate with GaN films led to problems because of a lattice mismatch
`
`and difference in the thermal expansion coefficient between the two materials.9 As
`
`explained by Professor Piner, “[t]he use of GaN on sapphire often led to stress and
`
`cracking due to the large lattice mismatch. Consequently, researchers began
`
`leaving the field to work with other materials. The remaining researchers
`
`attempted various approaches to attempt to solve the lattice mismatch problem
`
`between materials with different lattice constants.”10
`
`“One of the methods used to reduce the propagation of defects from the
`
`interface of the mismatched materials was to introduce a mask layer between the
`
`materials. This was known as Epitaxial Lateral Overgrowth (“ELO”).”11 A variant
`
`of ELO used a partial “air gap” between the materials, which was known as
`
`
`8 Id. at ¶ 17.
`
`9 Id.
`
`10 Id.
`
`11 Id.
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`Patent No. 6,936,851
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`“suspended” ELO.12 But ELO methods had the disadvantage of adding several
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`new steps to the fabrication process.13
`
`“Other methods attempted by other researchers included introducing
`
`substrate patterns containing protrusions that used flat areas, straight line segments,
`
`edges, or points.”14
`
`C. The ’851 patent
`Dr. Wang, the inventor of the ’851 patent, was well aware of the problems
`
`associated with using substrate patterns containing protrusions having flat areas,
`
`straight line segments, edges, or points.15
`
`Dr. Wang also realized that GaN and sapphire were crystalline materials,
`
`and as such, contained facet planes. He determined that a smooth rotation of
`
`microfacets was needed to minimize lattice defects such as misfit dislocations that
`
`may extend or propagate into the active layer.”16
`
`12 Id.
`
`13 Id.
`
`14 Id. at ¶ 19.
`
`15 Ex. 1001 (“’851 patent”) 2:3-6: “structural defects are inevitably generated as
`
`the growth front attempts to negotiate surface defects with sharp corners and
`
`abrupt changing curvature.”
`
`16 See ’851 patent 1:62; 2:20-21; 3:44; 4:56.
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`Patent No. 6,936,851
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`The success of Dr. Wang’s unorthodox approach was based, in part, on his
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`realization that areas of the substrate protrusions that did not have a smooth
`
`rotation of microfacets were susceptible to adverse microfaceting and layer
`
`deterioration.17 Thus, he developed a textured surface district that precluded the
`
`occurrence of chaotic microfaceting.18 He explained in detail his process for
`
`obtaining his textured district that used substrate protrusions made up of curves
`
`containing a smooth rotation of microfacets and in which there were no sharp
`
`corners.19 The efficacy of Dr. Wang’s invention was later confirmed by others.20
`
`In addition, the ’851 patent has been cited as prior art in 47 patents assigned to
`
`leading LED manufacturers such as Samsung Electronics, Applied Materials, and
`
`Mitsubishi Electric.21
`
`III. LEXINGTON LUMINANCE’S CLAIM CONSTRUCTIONS
`Under the Board’s rules, any unexpired claim “shall be given its broadest
`
`reasonable construction in light of the specification of the patent in which it
`
`appears.” 37 C.F.R. § 42.100(b). Under that construction, claim terms are to be
`
`17 ’851 patent 2:1-3.
`
`18 Id. at 2:32-24.
`
`19 Id. at 4:5-46.
`
`20 Ex. 2009, Professor Piner’s Declaration, ¶22.
`
`21 Id.
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`CASE IPR2017-00540
`Patent No. 6,936,851
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`given their ordinary and customary meaning as would be understood by one of
`
`ordinary skill in the art in the context of the entire patent disclosure.
`
`A. The “textured district” Claim Limitation
`Many claim construction issues involve this limitation:
`
`a textured district defined on the surface of said substrate comprising
`a plurality of etched trenches having a sloped etching profile with a
`smooth rotation of microfacets without a prescribed angle of
`inclination
`
`This claim language requires that (1) the “plurality of etched trenches”
`
`contain a sloped etching profile with a smooth rotation of microfacets and (2) the
`
`sloped etching profile be without a prescribed angle of inclination. It is helpful to
`
`visualize the “etched trenches” and the “sloped etching profiles” with the annotated
`
`figures from the ’851 patent displayed below — not to import limitations from the
`
`Specification — but to understand the relationships between the claim terms.
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`Patent No. 6,936,851
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`Figures appearing in the patent:
`
`Fig. 1A, 1B, 1C Exemplary
`Etched Trench
`
`Fig. 2A Exemplary
`Etched Trench
`
`Fig. 2B Exemplary
`Etched Trench
`
`
`
`Figs. 1A, 1B, 1C
`
`Fig. 2A
`
`Fig. 2B
`
`
`
`Claim language:
`a textured district defined on the
`surface of said substrate
`
`comprising a plurality of
`etched trenches
`
`having a
`
`sloped etching profile
`
`with a
`
`&
`
`without a
`
`smooth rotation
`of microfacets
`
`prescribed angle
`of inclination
`
`Thus, the broadest reasonable construction of this claim limitation requires the
`
`“sloped etching profile” to have a “smooth rotation of microfacets” and to be
`
`without a “prescribed angle of inclination”.22
`
`
`22 Ex. 2009, Professor Piner’s Declaration, ¶44.
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`CASE IPR2017-00540
`Patent No. 6,936,851
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`B.
`For the purposes of its preliminary response, Lexington does not oppose
`
`“etched trenches” (claims 1 and 15)
`
`Petitioner’s contention that the broadest reasonable interpretation of “etched
`
`trenches” is broad enough to encompass “areas in the surface of the substrate from
`
`which some amount of material is removed in order to create a pattern on the
`
`surface of the substrate.”
`
`“micro-facets” (claims 1 and 15)
`
`C.
`Lexington opposes Petitioner’s contention that the broadest reasonable
`
`interpretation of “micro-facets” is broad enough to encompass “very small planar
`
`crystal surfaces” because, as explained below, Petitioner’s proposal is not
`
`reasonable for the structures that are disclosed in the Specification of the ’851
`
`patent.23 Moreover, Petitioner has read the “micro-facets” term out of the claims
`
`through its “sloped etching profile” proposal.
`
`Everything about LED devices and the constituent substrate protrusions at
`
`issue here are “very small.”24 To put micro-facets in context, it is necessary to
`
`understand that the ’851 patent contemplates micro-facets as making up the surface
`
`contour of the substrate protrusions.25 By clarifying that micro-facets are the very
`
`23 Id. at ¶ 45.
`
`24 Id. at ¶ 46.
`
`25 Id.
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`CASE IPR2017-00540
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`small planes that make up a surface contour, micro-facets are distinguishable from
`
`the planes between the surface features.26 To conclude otherwise would mean that
`
`a facet of any size appearing in an LED could be a micro-facet, which would
`
`improperly read the term “micro” out of the term “micro-facet.” The diagram
`
`below illustrates this principle:
`
`Microfacets: small in
`relation to the size of
`the surface feature
`
`Not a microfacet – but
`still a “very small
`planar crystal surface”
`
`
`
`Fig. 2B Substrate Pattern
`
`
`For that reason, the construction adopted by Judge Stearns should also be
`
`adopted in this proceeding: “very small planes that make up a surface contour.”
`
`Ex. 1016 at 6.27 This construction would not improperly import a limitation from
`
`
`26 Id.
`
`27 While the Federal Circuit did not vacate the construction of “micro-facet”,
`
`neither did it endorse it. Ex. 2011, Lexington Luminance v. Amazon, 601 Fed.
`
`App’x 963, 972 (Fed. Cir. 2015) (“On this record, we find no error in the district
`
`court’s construction of ‘micro-facet.’”) (emphasis added). The illustration above
`
`explaining how a micro-facet should not be confused with the planar substrate
`
`region existing between two substrate protrusions was not in the Amazon record. It
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`CASE IPR2017-00540
`Patent No. 6,936,851
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`the specification, but would instead avoid improperly reading out the claim term
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`“micro” from the claim term “micro-facet” in the context of the invention. Here,
`
`the context involves the microscopic “sloped etching profiles” of the “etched
`
`trenches” in which the term appears. See Moore U.S.A., Inc. v. Standard Register
`
`Co., 229 F.3d 1091, 1111 (Fed. Cir. 2000) (holding that “there is nothing wrong
`
`with defining the dimensions of a device in terms of the environment in which it is
`
`to be used.”)
`
`“a sloped etching profile with a smooth rotation of micro-facets”
`D.
`(claim 1)
`
`Petitioner’s proposal is not reasonable because it reads the phrases “sloped
`
`etching profile” and “with a smooth rotation of micro-facets” entirely out of the
`
`claim limitation. Petitioner provides no support for its re-writing of the limitation.
`
`Moreover, as Professor Piner explains, “sloped etched sides” need not necessarily
`
`have a “smooth rotation of micro-facets.” Ex. 2009, ¶¶48-51.
`
`In addition, the Federal Circuit confirmed that the phrase “with a smooth
`
`rotation of micro-facets” modifies the “sloped etching profile”. Ex. 2011,
`
`Lexington Luminance LLC v. Amazon.com, Inc., 601 Fed.App’x 963, 971 (Fed.
`
`Cir. 2015). The claim language “sloped etching profile with a smooth rotation of
`
`
`was, however, in the Google record, and was adopted by the Google Court, which
`
`was aware of the Federal Circuit’s opinion. Ex. 1016 at 6-7.
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`micro-facets” must be construed under any standard to require the “sloped etching
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`profile” to contain a smooth rotation of micro-facets.
`
`For all these reasons, the Board should reject Petitioner’s proposal and
`
`construe the term “sloped etching profile with a smooth rotation of micro-facets”
`
`to mean “the etched trenches have etched sloped sides made up of a smooth
`
`rotation of micro-facets.”
`
`“a sloped etching profile… without a prescribed angle of
`E.
`inclination” (claims 1 and 15)
`
`The Board has previously construed this phrase under the broadest
`
`reasonable construction standard to mean “sloped etched sides without a specified
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`angle of inclination.” LG Innotek Co., Ltd. v. Lexington Luminance LLC, Case
`
`IPR2017-00052 (the “’052 IPR”), Decision Denying Institution of Inter Partes
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`Review, Paper 7, p. 10.
`
`The Board has previously recognized that the phrase “without a prescribed
`
`angle of inclination” modifies the entire “etching profile” recited in the claims, not
`
`constituent segments. ’052 IPR, Paper 7, p. 10. Patent Owner respectfully draws
`
`the Board’s attention to one potential clarification to its earlier finding. There may
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`be portions of the etching profile that are not sloped, and such portions need not be
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`“without a prescribed angle of inclination.” Accordingly, the phrase “without a
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`CASE IPR2017-00540
`Patent No. 6,936,851
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`prescribed angle of inclination” modifies the “sloped etching profile.” This is
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`consistent with the Board’s previous analysis:
`
`In analyzing this limitation, the Federal Circuit held the phrase
`“without a prescribed angle of inclination” “modifies the ‘sloped
`etching profile’ rather than ‘trenches.’” Ex. 1014, 14–15.
`Accordingly, the Federal Circuit construed the claim broadly such that
`“the claimed trenches can have, in addition to sloped areas, areas of a
`flat bottom as well as corners where the flat bottom and the inclined
`slope intersect with each other, as shown in Figures 2B and 4B.” Id. at
`15.
`
`’052 IPR, Paper 7, pp. 8-9 citing [Ex. 2011] Lexington Luminance v. Amazon, 601
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`Fed. App’x 963, 969 (Fed. Cir. 2015).
`
`The intrinsic record explains that this limitation is meant to exclude flat
`
`portions or straight line segments from appearing as part of the “sloped etching
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`profile.” The ’851 patent notes prior art attempts to address the problem of lattice
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`defects by etching features “with a specific inclination angle” into the substrate.
`
`’851 patent, 1:64-66. The patent’s usage of “prescribed angle” to reference a linear
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`feature of constant incline is explained by the patent’s discussion of prior art. Id.
`
`The patent states: “[i]n constrast to the prior art methods, there is no prescribed
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`plane for the layer to grow.” ’851 patent, 4:62-63. A plane is flat – an area having
`
`a constant incline.28 The ’851 patent teaches away from the use of a “sloped
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`etching profile” that has a “specific inclination angle” or a “single angle of
`
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`28 Ex. 2009, Professor Piner’s Declaration, ¶54.
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`CASE IPR2017-00540
`Patent No. 6,936,851
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`inclination.” ’851 patent, 1:64-2:1. A skilled artisan would understand that the
`
`phrase “without a prescribed angle of inclination” means “without a constant
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`inclination angle” or, alternatively, “without a single angle of inclination”.29
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`Moreover, the intrinsic evidence further reveals that the inventor stated that
`
`the features on the surface of the substrate became “naturally rounded” (i.e.,
`
`curved) (2:30-32) and therefore without a “constant” (i.e., unchanging) angle. See
`
`also 3:58-59 and 4:21-23 (“curved etching profile”). The claim’s requirement that
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`the profile be without a “prescribed angle of inclination” addressed the patentee’s
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`goal of a curved profile. ’851 patent 8:42.
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`Further, the reexamination history provides guidance. The Patent Office
`
`stated:
`
`It is agreed that the slope profiles of the trenches of layer 3 in Ota,
`Fig. 3, and layer 12 in Shibata, Fig. 1 do have a prescribed angle of
`inclination because they have straight line segments instead of a
`smooth rotation of microfacets.
`
`Ex. 1005 at p. 7. The prosecution history also states: “the angle of inclination of
`
`the sloped surface of the trench varies continuously so that there is no prescribed
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`angle of inclination as there might be in the trenches followed a rectangular or a
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`sharp saw-tooth pattern.” Ex. 1005 at p. 689; see also id. at 693 (differentiating the
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`“Ota” prior art which describes “that the sloped profiles of the trenches exhibit a
`
`
`29 Id.
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`CASE IPR2017-00540
`Patent No. 6,936,851
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`particular angle of inclination.”); see also id. at 663 (describing prior art containing
`
`sloped profiles that “do have a prescribed angle of inclination because they have
`
`straight line segments” that “exhibit a particular angle of inclination.”); see also id.
`
`at 695 (similar differentiation for the “Shibata” prior art). Thus, all of the intrinsic
`
`evidence demonstrates that a “prescribed angle of inclination” means a “constant
`
`angle of inclination.”
`
`The Federal Circuit confirmed that the phrase “without a prescribed angle of
`
`inclination” modifies the “sloped etching profile”. Ex. 2011, Lexington Luminance
`
`LLC v. Amazon.com, Inc., 601 Fed.App’x at 971. The claim language “sloped
`
`etching profile… without a prescribed angle of inclination” must be construed
`
`under any standard to require that the entire “sloped etching profile” – and not only
`
`a portion of it – is without a prescribed (or predetermined or specified) angle of
`
`inclination. Accord, Google Ex. 1016 at 10. For these reasons, this claim
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`limitation should be construed to require the entire portion of the etching profile
`
`that is sloped to be curved.30
`
`
`30 In addition, the specification expressly describes the use of a curved etching
`
`profile. See ’851 patent, 3:58-59 (“In this case, the etching is diffusion limited
`
`resulting in a curved etching profile.”); see also 4:21-23 (“Alternatively, the
`
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`F.
`Petitioner did not propose a construction for this term. For the purposes of
`
`“disposed on” (claims 1 and 15)
`
`its preliminary response, Lexington contends that the broadest reasonable
`
`interpretation encompasses “applied directly or indirectly above.” Accord, Ex.
`
`1016 at p. 18 (“Because the intrinsic evidence does not justify a narrower
`
`construction, the court will construe ‘disposed on’ as ‘applied directly or indirectly
`
`above.’”) In the context of the surrounding claim language, this proposed
`
`construction means that one or more intervening layers may exist between the
`
`“first layer” and the “substrate.”31
`
`“lattice-mismatched misfit system” (claims 1 and 15)
`
`G.
`For the purposes of its preliminary response, Lexington does not opp