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 No. IPR2017-00909
`Patent No. 8,080,467 B2
`_________________
`
`PETITIONER’S REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71
`
`
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`HAMAMATSU CORPORATION
`Petitioner,
`
`v.
`
`PRESIDENT AND FELLOWS OF HARVARD COLLEGE
`Patent Owner.
`
`_________________
`
`Case No. IPR2017-00909
`Patent No. 8,080,467 B2
`_________________
`
`PETITIONER’S REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71
`
`
`
`Docket No.: 685399-18IPR
`
`TABLE OF CONTENTS
`
`page
`INTRODUCTION...........................................................................................1
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`ARGUMENT...................................................................................................1
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`I.
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`II.
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`A. Legal Standard..................................................................................................1
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`B. The Board Misapprehended Wu Thesis’ Relationship to Annealing ..............2
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`III. CONCLUSION ...............................................................................................8
`
`i
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`
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`Docket No.: 685399-18IPR
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`I.
`
`INTRODUCTION
`
`Petitioner Hamamatsu Corporation (“Petitioner”), pursuant to 37 C.F.R.
`
`§ 42.71(d), respectfully requests reconsideration of the Board’s September 6, 2017
`
`Decision Denying Institution of Inter Partes Review (Paper No. 7, “Decision”) of
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`U.S. Patent No. 8,080,467 (“the ‘467 Patent”). Specifically, Petitioner requests
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`reconsideration of the Decision as it relates to the asserted grounds based on
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`obviousness over Wu Thesis in view of Gibbons (claims 1, 2, and 6-8) and Wu
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`Thesis in view of Gibbons and Carey (claim 3).
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`II.
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`ARGUMENT
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`The Decision relies heavily on the concept that Wu Thesis presents
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`annealing of spiked silicon in a negative light due to the execution of an annealing
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`protocol that reduced the absorption capability of a silicon sample for infrared
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`wavelengths of electromagnetic radiation. As explained in further detail below,
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`this concept misapprehends the annealing procedure in Wu Thesis, which was
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`conducted for a targeted and exclusive purpose, Wu Thesis’ consideration of
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`Wilson, and other factual and legal errors.
`
`A.
`
`Legal Standard
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`A party dissatisfied with a decision by the Board not to institute trial may
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`request rehearing. 37 C.F.R. § 42.71(d). “The request must specifically identify
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`all matters the party believes the Board misapprehended or overlooked, and the
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`place where each matter was previously addressed in a motion, opposition, or
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`1
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`Docket No.: 685399-18IPR
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`reply.” Id. The Board reviews the decision for an abuse of discretion. 37 C.F.R.
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`§ 42,71(c). “An abuse of discretion may be indicated if a decision is based on an
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`erroneous interpretation of law, if a factual finding is not supported by substantial
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`evidence, or if the decision represents an unreasonable judgment in weighing
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`relevant factors.” Palo Alto Networks, Inc. v. Juniper Networks, Inc., IPR2013-
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`00369, Paper No. 39 at 2-3 (citing Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281
`
`(Fed. Cir. 2005)).
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`B.
`
`The Board Misapprehended Wu Thesis’ Relationship to
`Annealing
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`Pervading the Decision is the notion that the Petition and Dr. Shukri Souri’s
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`accompanying declaration do not adequately overcome the negative view of
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`annealing that Wu Thesis allegedly conveys to one of ordinary skill in the art. This
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`rationale manifests in statements spread throughout the Decision that: (1)
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`misapprehend Wu Thesis or Petitioner’s arguments; and/or (2) are legally
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`erroneous. These statements are addressed in turn below.
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`First, the Board presumes that the reported “deleterious” effects on
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`absorptance in the infrared wavelength range caused by Wu Thesis’ annealing
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`protocol1 amount to disclosures of “limitations of annealing such devices”
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`
`1 Notably, Wu Thesis does indicate that visible wavelength absorption was not
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`significantly affected, demonstrating that even this extreme annealing procedure
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`2
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`Docket No.: 685399-18IPR
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`(Decision at 17), “that annealing impairs optical performance” (id. at 20), and
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`teachings “which point away from the use of annealing to improve spiked silicon
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`devices” (id. at 18). This view misapprehends Wu Thesis’ purpose for the
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`annealing experiment in the first place. Wu Thesis was not broadly investigating
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`effects of annealing on the microstructured silicon, nor was it investigating the
`
`appropriateness of annealing generally. Rather, as discussed in the Petition
`
`(Petition at 15-16) and Dr. Souri’s declaration (Ex. 1012 at ¶¶ 62, 77), Wu Thesis
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`conducted its annealing experiment to verify a theory about the reasons for the
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`observed absorption increase (Ex. 1006 at 51-52).
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`Upon irradiating silicon in an SF6 environment, Wu Thesis noted increases
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`in the silicon’s ability to absorb electromagnetic radiation in both visible and
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`infrared wavelengths, the latter of which was “puzzling.” (Ex. 1006 at 50; Petition
`
`at 15). There were two possible explanations for this observation – one was that
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`the surface had been altered to include sharp spikes, and the other was the presence
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`of sulfur that had entered the silicon during the laser irradiation. (Ex. 1006 at 50;
`
`Petition at 15). Convinced that the spikes alone could not account for the
`
`absorption increase, Wu Thesis set out to compare a sample of the spiked silicon
`
`with the sulfur against a sample of spiked silicon without the sulfur. (Ex. 1006 at
`
`could be compatible with non-infrared devices. (Ex. 1006 at 55; Petition at 16,
`
`21).
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`3
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`Docket No.: 685399-18IPR
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`51-52; Petition at 15, 21). Since the ambient gas affected the morphology of the
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`surface, both samples would have to be irradiated in SF6, necessitating subsequent
`
`removal of sulfur from a sample to provide a fair comparison. (Ex. 1006 at 7, 10-
`
`12, 35; Petition at 14-15; Ex. 1012 at ¶ 45).
`
`Wu Thesis therefore turned to Wilson,2 a reference about annealing sulfur in
`
`silicon (notably, a reference dealing with ion implanted sulfur). (Ex. 1006 at 52;
`
`Petition at 21-22; Ex. 1012 at ¶ 63). Based on Wilson, it was determined that
`
`annealing at a temperature above 1200 K would expel the sulfur, enabling the
`
`desired comparison. (Ex. 1006 at 52). Wu Thesis thereafter conducted an anneal
`
`at 1210 K for three hours (Id.; Petition at 15-16, 21; Ex. 1012 at ¶¶ 62-63, 77).
`
`This procedure worked as expected, i.e., the sulfur was diffused to the surface, and
`
`allowed Wu Thesis to determine that the sulfur was at least a partial contributor to
`
`the observed absorption increase. (Ex. 1006 at 52, 55; Petition at 15-16, 21; Ex.
`
`1012 at ¶¶ 62-63, 77). Thus, annealing in Wu Thesis was merely a means to obtain
`
`a proper sample for comparing doped and undoped spiked silicon, and its result
`
`was not intended as a generalized indictment of the annealing process on spiked
`
`silicon.
`
`2 The Board notes that Wilson was not submitted as prior art or as an exhibit.
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`Decision at 19. However, Petitioner is relying on Wu Thesis’ characterization of
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`Wilson, not Wilson itself.
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`4
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`Docket No.: 685399-18IPR
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`Moreover, this result contradicts the Board’s finding that Wilson does not
`
`suggest that “anneal temperature plays a large role in the location and activation of
`
`sulfur dopants and resulting electrical [and] optical properties of the doped sample,
`
`and that optimizing the annealing parameters is a crucial element to enhancing the
`
`performance of a photovoltaic device.” Decision at 19. As explained above, the
`
`Board overlooked that Wu Thesis relied on Wilson to determine a proper anneal
`
`temperature for achieving a desired result (i.e., removal of the sulfur), and that the
`
`procedure worked as expected. (Ex. 1006 at 52, 55; Petition at 15-16, 21; Ex. 1012
`
`at ¶¶ 62-63, 77). At the very least, it would have been reasonable to assume that,
`
`in light of Wu Thesis’ understanding of Wilson, optimizing the annealing
`
`temperature to be below 1000 K would not expel the sulfur from the silicon, and so
`
`would more likely keep the optical properties of the doped sample from being
`
`depleted to the same extent. (Ex. 1006 at 52; Petition at 21-22, 25-26; Ex. 1012 at
`
`¶¶ 62-64, 77-78).
`
`The use of the phrase “point away” in the Decision further compounds the
`
`error. This language is very similar to “teaching away,” and appears to seek the
`
`same result without following the rigid criteria required under a “teaching away”
`
`analysis. “A reference that ‘merely expresses a general preference for an
`
`alternative invention but does not criticize, discredit, or otherwise discourage
`
`investigation into’ the claimed invention does not teach away.” Meiresonne v.
`
`5
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`Docket No.: 685399-18IPR
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`Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017) (quoting Galderma Labs., L.P.
`
`v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013) (emphasis added)). The Board
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`does not rely on any passage in Wu Thesis that expressly criticizes or discredits
`
`annealing of spiked silicon. To the extent the Decision could be said to
`
`characterize Wu Thesis’ annealing result as “discouragement,” as explained above,
`
`the specifically targeted use of annealing in Wu Thesis and the success of reliance
`
`on an ion-implant doped annealing reference would not have dissuaded one of
`
`ordinary skill in the art from a common practice in the semiconductor industry.
`
`(Ex. 1006 at 52; Petition at 21-22, 25-26; Ex. 1012 at ¶¶ 62-64, 77-78).
`
`The Board’s rationale that Wu Thesis seeks to avoid annealing also relies on
`
`the perceived description of an alternative – passivation by hydrogenation.
`
`Decision at 18. However, this process is explicitly described by Wu Thesis to
`
`serve the purpose of healing damage. (Ex. 1006 at 69, 79-80). As Petitioner and
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`Dr. Souri explained, annealing is commonly employed to accomplish two distinct
`
`goals: (1) healing damage to the silicon surface caused by other processes; and (2)
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`activating dopants in the silicon. (Petition at 4; Ex. 1012 at ¶¶ 14-15). Whether
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`Wu Thesis could be seen as teaching an alternative to annealing for the purpose of
`
`addressing defects, hydrogenation is not described in Wu Thesis as causing dopant
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`activation. (See e.g., Ex. 1006 at 79-80). The Board misapprehends this fact in
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`6
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`Docket No.: 685399-18IPR
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`understanding hydrogenation passivation as a full and complete substitute for the
`
`annealing process.
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`The Decision also repeatedly states that Wu Thesis does not “posit” or
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`“contemplate” the “use of annealing” for various aspects. See e.g., Decision at 17.
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`This is in contravention of M.P.E.P. 2144(I), which recites as follows:
`
`The rationale to modify or combine the prior art does not have
`to be expressly stated in the prior art; the rationale may be
`expressly or impliedly contained in the prior art or it may be
`reasoned from knowledge generally available to one of ordinary
`skill in the art, established scientific principles, or legal
`precedent established by prior case law.
`Petitioner and Dr. Souri did not rely on any express teaching of annealing in Wu
`
`Thesis to make the proposed combination. Rather, the proposition of annealing
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`was gleaned from the general knowledge of one of ordinary skill in the art that
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`annealing is a common method for enhancing doped semiconductor components
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`(Petition at 4, 22-23, 26; Ex. 1012 at ¶¶ 14-15, 80), and the inherent knowledge
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`gleaned from Wu Thesis’ reliance on Wilson to perform the comparative
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`experiment, which showed that annealing at extreme high temperatures drove out
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`the sulfur (as Wilson correctly predicted) and negatively impacted the optical
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`performance of the sample, suggesting that less extreme temperatures would leave
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`the sulfur in place and avoid optical performance degradation. (Ex. 1006 at 52;
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`Petition at 21-22, 25-26; Ex. 1012 at ¶¶ 62-64, 77-78).
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`7
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`Docket No.: 685399-18IPR
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`III. CONCLUSION
`
`For at least the reasons set forth above, Petitioner respectfully requests the
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`Board grant this request for rehearing and institute inter partes review of claims 1-
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`3 and 6-8 of the ‘467 Patent.
`
`Date: October 6, 2017
`
`Respectfully submitted,
`
`By:
`
`/John D. Simmons/
`John D. Simmons, Reg. No. 52,225
`Stephen E. Murray, Reg. No. 63,206
`Keith A. Jones, Reg. No. 67,781
`PANITCH SCHWARZE BELISARIO & NADEL LLP
`One Commerce Square
`2005 Market Street, Suite 2200
`Philadelphia, Pennsylvania 19103
`(215) 965-1330
`(215) 965-1331 (Fax)
`jsimmons@panitchlaw.com (E-Mail)
`smurray@panitchlaw.com (E-Mail)
`kjones@panitchlaw.com (E-Mail)
`
`8
`
`
`
`Docket No.: 685399-18IPR
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e)(4) and 42.105, the undersigned certifies
`
`that on October 6, 2017, a complete and entire copy of this Petitioner’s Request for
`
`Rehearing Pursuant to 37 C.F.R. § 42.71 was served by electronic mail on Patent
`
`Owner’s lead and back-up counsel:
`
`Thomas J. Engellenner
`Reza Mollaaghababa
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`SiOnyx_IPR@pepperlaw.com
`
`/John D. Simmons/
`John D. Simmons
`Attorney for Petitioners
`
`PANITCH SCHWARZE BELISARIO & NADEL LLP
`One Commerce Square
`2005 Market Street, Suite 2200
`Philadelphia, PA 19103
`(215) 965-1268
`jsimmons@panitchlaw.com
`
`
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