Trials@uspto.gov
`571-272-7822
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` Paper 9
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` Entered: September 4, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HAMAMATSU CORPORATION,
`Petitioner,
`
`v.
`
`PRESIDENT AND FELLOWS OF HARVARD COLLEGE,
`Patent Owner.
`____________
`
`Case IPR2017-00909
`Patent 8,080,467 B2
`____________
`
`
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`HARLOW, Administrative Patent Judge.
`
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
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`571-272-7822
`
`
`
`
`
`
`
`
` Paper 9
`
`
` Entered: September 4, 2019
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`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HAMAMATSU CORPORATION,
`Petitioner,
`
`v.
`
`PRESIDENT AND FELLOWS OF HARVARD COLLEGE,
`Patent Owner.
`____________
`
`Case IPR2017-00909
`Patent 8,080,467 B2
`____________
`
`
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`HARLOW, Administrative Patent Judge.
`
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-00909
`Patent 8,080,467 B2
`
`
`
`Petitioner, Hamamatsu Corporation (“Hamamatsu”), requests
`
`rehearing of the Board’s Decision (Paper 7) (“Decision”) declining to
`
`institute inter partes review of claims 1, 2, and 6–8 of U.S. Patent
`
`No. 8,080,467 B2 (Ex. 1001) as obvious over the Wu Thesis1 in view of
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`Gibbons2 and claim 3 as obvious over the Wu Thesis in view of Gibbons and
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`Carey.3 Paper 8 (“Request for Rehearing” or “Req. Reh’g”). For the
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`reasons that follow, Hamamatsu’s Request for Rehearing is denied.
`
`Pursuant to 37 C.F.R. § 42.71(d):
`
`ANALYSIS
`
`A party dissatisfied with a decision may file a single request for
`rehearing without prior authorization from the Board. 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.
`
`When reconsidering a decision on institution, we review the decision for an
`
`abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists
`
`where a “decision [i]s based on an erroneous conclusion of law or clearly
`
`
`
`1 Wu, Femtosecond laser-gas-solid interactions (2000) (Ph.D. thesis,
`Harvard University) (“Wu Thesis”) (Ex. 1006).
`2 Gibbons, Ion Implantation in Semiconductors—Part II: Damage
`Production and Annealing, 60(9) PROC. IEEE, 1062–1096 (1972)
`(“Gibbons”) (Ex. 1007).
`3 Carey et al., In-situ Doping of Silicon Using the Gas Immersion Laser
`Doping (GILD) Process, 43 APPL. SURF. SCI., 325–332 (1989) (“Carey”)
`(Ex. 1009).
`
`2
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`
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`IPR2017-00909
`Patent 8,080,467 B2
`
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`erroneous factual findings, or . . . a clear error of judgment.” PPG Indus.
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`Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed.
`
`Cir. 1988).
`
`Hamamatsu contends that we misapprehended the annealing
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`procedure in the Wu Thesis, misapprehended the Wu Thesis’ consideration
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`of Wilson4, and made other factual and legal errors. Req. Reh’g 1–8. We
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`address these arguments below.
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`First, Hamamatsu asserts that we misapprehended the purpose for the
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`annealing experiment discussed in the Wu Thesis. Id. at 2–3. Specifically,
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`Hamamatsu contends that the Wu Thesis did not broadly investigate the
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`appropriateness of annealing generally but, rather, conducted its annealing
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`experiment to verify a theory about the reasons for the increase in a spiked
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`silicon’s ability to absorb visible and infrared wavelengths. Id. Based on
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`this alleged misapprehension, Hamamatsu asserts that we improperly
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`presumed that the reported “deleterious” effects on absorptance caused by
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`the annealing protocol in the Wu Thesis was “a generalized indictment of
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`the annealing process on spiked silicon” and “point[ed] away” from such a
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`process. Id. at 2–6.
`
`
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`4 Wilson, Depth distributions of sulfur implanted into silicon as a function of
`ion energy, ion fluence, and anneal temperature, 55 J. APPL. PHYS. 3490
`(1984). Wilson has not been submitted as prior art or as an exhibit in this
`case. Hamamatsu states that they are relying on the Wu Thesis’
`characterization of Wilson, rather than Wilson itself.
`3
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`IPR2017-00909
`Patent 8,080,467 B2
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`
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`We do not agree that we misapprehended the teachings of the Wu
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`Thesis. Our Decision explained that the “Wu Thesis employs annealing
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`(Ex. 1006, 51) to investigate the ‘especially puzzling’ difference in below-
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`bandgap absorption between ordinary and spiked silicon.” Decision 11. We
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`also cited Hamamatsu’s expert, Dr. Souri, in describing the purpose of the
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`annealing step in the Wu Thesis to “test the effects of sulfur incorporation in
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`the silicon lattice on the optical properties of the sample related to
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`absorptance in the infrared range.” Id. at 15 (citing Ex. 1012 ¶ 62).
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`Furthermore, our Decision recognized that the Wu Thesis did not provide a
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`general discussion of annealing, stating that “[t]he Wu Thesis [did] not posit
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`the use of annealing to improve the performance of a photovoltaic device, or
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`suggest any positive effect of annealing on dopant activation or on the
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`electrical properties of spiked silicon.” Id. at 17.
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`In addition, there is no dispute that the annealing protocol employed
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`by the Wu Thesis “prove[d] deleterious to the functionality of the silicon
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`device, particularly to its infrared wavelength absorptance capabilities.” Id.
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`at 15 (citing Pet. 21). Based on these observations, we concluded that the
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`Petitioner did not “adequately explain why an ordinarily skilled artisan
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`would have sought to anneal the sulfur-doped spiked silicon disclosed by the
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`Wu Thesis in view of the reference’s teachings concerning the
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`characteristics of spiked silicon, and the limitations of annealing such
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`devices.” Id. at 17.
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`Hamamatsu also contends that we erred in finding that Wilson does
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`not suggest that “anneal temperature plays a large role in the location and
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`4
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`IPR2017-00909
`Patent 8,080,467 B2
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`activation of sulfur dopants and resulting electrical [and] optical properties
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`of the doped sample, and that optimizing the annealing parameters is a
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`crucial element to enhancing the performance of a photovoltaic device.”
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`Req. Reh’g 5 (citing Decision 19). According to Hamamatsu, we
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`“overlooked that [the] Wu Thesis relied on Wilson to determine a proper
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`anneal temperature for achieving a desired result (i.e., removal of sulfur),
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`and that the procedure worked as expected.” Id.
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`We did not overlook the fact that the Wu Thesis relied on Wilson to
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`determine the proper anneal temperature for the removal of sulfur. Our
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`Decision states the description of Wilson by the Wu Thesis “addresses only
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`the location of sulfur atoms, relative to the silicon substrate in which they
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`were implanted, as a function of temperature.” Decision 19 (citing
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`Ex. 1006, 52). However, as we further explained,
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`[t]he Wu Thesis does not, either in its description of Wilson or
`elsewhere, indicate an annealing time ‘selected to enhance a
`density of charge carriers in [the] surface layer,’ as recited in
`claim 1, address the activation of sulfur dopants or the resultant
`electrical properties of doped substrates, or suggest that
`optimizing annealing parameters is crucial to enhancing the
`performance of a photovoltaic device.
`
`Id. Therefore, we recognized that Wilson — as described in the Wu Thesis
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`— taught the temperature required for sulfur removal; however, we did not
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`find that it more broadly taught optimization of annealing parameters as
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`asserted by Hamamatsu.
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`Hamamatsu also contends that we erred by stating that the Wu Thesis
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`does not “posit” or “contemplate” the “use of annealing” for various aspects.
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`5
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`IPR2017-00909
`Patent 8,080,467 B2
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`Req. Reh’g 6 (citing Decision 17). According to Hamamatsu, their Petition
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`did not rely on any express teaching of annealing in the Wu Thesis to make
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`the proposed combination but:
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`Rather, the proposition of annealing was gleaned from the
`general knowledge of one of ordinary skill in the art that
`annealing
`is a common method
`for enhancing doped
`semiconductor components (Petition at 4, 22-23, 26; Ex. 1012 at
`¶¶ 14-15, 80), and the inherent knowledge gleaned from Wu
`Thesis’ reliance on Wilson to perform the comparative
`experiment, which showed that annealing at extreme high
`temperatures drove out the sulfur (as Wilson correctly predicted)
`and negatively impacted the optical performance of the sample,
`suggesting that less extreme temperatures would leave the sulfur
`in place and avoid optical performance degradation.
`
`Req. Reh’g 7 (citing Ex. 1006 at 52; Petition at 21-22, 25-26; Ex. 1012 ¶¶
`
`62-64, 77-78).
`
`This argument is likewise unavailing. As stated in our Decision, the
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`annealing procedure used in the Wu Thesis does not change the
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`macrostructure of the silicon or reduce the amount of disorder in spikes.
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`Decision 18 (citing Ex. 1006, 52, 58). Hamamatsu contends that they are
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`relying on general knowledge of those skilled in the art as well as the
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`teachings of the Wu Thesis and Wilson to combine the prior art; however,
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`Hamamatsu does not adequately explain why an ordinarily skilled artisan
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`would have sought to anneal the spiked silicon disclosed by the Wu Thesis,
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`in which annealing had deleterious effects on absorptance in the infrared
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`range. Hamamatsu’s contention that the Wu Thesis’s use of the annealing
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`protocol of Wilson at high temperatures “suggest[ed] that less extreme
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`6
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`IPR2017-00909
`Patent 8,080,467 B2
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`temperatures would leave the sulfur in place and avoid optical performance
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`degradation” is not adequately supported. Req. Reh’g 7.
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`Furthermore, Hamamatsu does not sufficiently address why one of
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`ordinary skill in the art would have turned to Gibbons for teachings on
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`annealing the silicon of the Wu Thesis when Gibbons does not study the
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`effects of annealing on sulfur-doped silicon and uses a different method of
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`substrate doping than that used in the Wu Thesis. Decision 6, 20. In
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`addition, as explained in our Decision, Hamamatsu does not adequately
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`explain why one of ordinary skill in the art would have had a reasonable
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`expectation of success in making the proposed combination to improve the
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`electrical characteristics of such devices or “enhance a density of charge
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`carriers in” the surface layer as required by challenged claim 1. Id. at 21.
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`Lastly, Hamamatsu contends that we erred in finding that the Wu
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`Thesis sought to avoid annealing by incorrectly relying on the “perceived
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`description of an alternative – passivation by hydrogenation.” Req. Reh’g 6.
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`According to Hamamatsu, the hydrogenation process is described by the Wu
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`Thesis as serving the purpose of healing damage as opposed to activating
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`dopants in the silicon. Therefore, Hamamatsu asserts that we
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`misapprehended this fact in understanding hydrogenation as a “full and
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`complete substitute for the annealing process.” Id. at 6–7.
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`Hamamatsu’s argument regarding the alleged limitations of
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`passivation by hydrogenation for only healing damage appears to be new. In
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`fact, Hamamatsu’s Petition states that “[a]nnealing typically occurs after a
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`doping process, because the annealing is used to repair damage caused by
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`7
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`IPR2017-00909
`Patent 8,080,467 B2
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`the doping process, and to ‘activate’ the dopant material in the silicon.” Pet.
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`4. Hamamatsu did not make a distinction between these two purposes until
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`now, nor have they adequately explained why it matters. As explained in
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`our Decision, the passivation by hydrogenation process as disclosed in the
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`Wu Thesis is used to “cure the structural defects in, and improve the
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`electrical properties of,” the silicon substrate. Decision 18. Even, assuming
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`arguendo, that the passivation by hydrogenation process is not a “full and
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`complete substitute for the annealing process,” this does not change the fact
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`that the Wu Thesis does not suggest any positive effect of annealing on
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`dopant activation or on the electrical properties of spiked silicon.
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`Furthermore, to the extent that annealing was discussed in the Wu Thesis, it
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`had deleterious effects on absorptance.
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`CONCLUSION
`
`For the reasons given, Hamamatsu has not demonstrated that we
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`abused our discretion in denying institution of inter partes review of claims
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`1, 2, and 6–8 as obvious over Wu Thesis in view of Gibbons and claim 3 as
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`obvious over Wu Thesis in view of Gibbons and Carey. Neither has
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`Hamamatsu shown that we misapprehended or overlooked matters raised in
`
`the Petition in our Decision.
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`Accordingly, it is
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`ORDER
`
`ORDERED that Hamamatsu’s Request for Rehearing is denied.
`
`8
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`
`
`IPR2017-00909
`Patent 8,080,467 B2
`
`
`PETITIONER:
`
`John Simmons
`Stephen Murray
`Keith A. Jones
`PANITCH SCHWARZE BELISARIO & NADEL LLP
`uspto@panitchlaw.com
`jsimmons@panitchlaw.com
`smurray@panitchlaw.com
`kjones@panitchlaw.com
`
`
`PATENT OWNER:
`
`Thomas Engellenner
`Reza Mollaaghababa
`PEPPER HAMILTON LLP
`engellennert@pepperlaw.com
`mollaaghababar@pepperlaw.com
`
`
`
`9
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`
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