Trials@uspto.gov
`571.272.7822
`
`Paper No. 31
`Filed: August 31, 2018
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`COLLABO INNOVATIONS, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00958
`Patent 7,023,034 B2
`____________
`
`
`
`Before DAVID C. McKONE, GREGG I. ANDERSON, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`PER CURIAM.
`
`Opinion Dissenting-in-Part filed by Administrative Patent Judge
`ANDERSON.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`571.272.7822
`
`Paper No. 31
`Filed: August 31, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`COLLABO INNOVATIONS, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00958
`Patent 7,023,034 B2
`____________
`
`
`
`Before DAVID C. McKONE, GREGG I. ANDERSON, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`PER CURIAM.
`
`Opinion Dissenting-in-Part filed by Administrative Patent Judge
`ANDERSON.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
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`IPR2017-00958
`Patent 7,023,034 B2
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`I. INTRODUCTION
`Sony Corporation (“Petitioner”)1 filed a Petition (Paper 1, “Pet.”)
`pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes review of
`claims 1–18 (“the challenged claims”) of US Patent No. 7,023,034 B2 (“the
`’034 patent,” Ex. 1001), filed July 15, 2004.2 The Petition is supported by
`the Declaration of R. Michael Guidash (“Guidash Declaration,” Ex. 1002).
`Collabo Innovations, Inc. (“Patent Owner”)3 filed a Preliminary Response
`(Paper 6, “Prelim. Resp.”). We instituted an inter partes review of the
`challenged claims (“Institution Decision” or “Inst. Dec.,” Paper 8).
`Patent Owner filed a Response (“PO Resp.,” Paper 19), and Petitioner
`filed a Reply (“Pet. Reply,” Paper 22). Patent Owner’s Response is
`supported by the Declaration of Martin Afromowitz, Ph.D. (“Afromowitz
`Declaration,” Ex. 2003). Mr. Guidash was deposed by Patent Owner.
`(“Guidash Deposition,” Exs. 2004, 2005). Dr. Afromowitz was deposed by
`Petitioner (“Afromowitz Deposition,” Ex. 1020). An oral hearing was held
`on May 9, 2018, and a transcript thereof has been entered into the record
`(“Tr.,” Paper 30).
`Patent Owner filed a Motion to Exclude Evidence (“Motion,”
`Paper 24), Petitioner filed an Opposition to the Motion (“Opposition,”
`Paper 26), and Patent Owner filed a Reply in support of the Motion
`(Paper 28).
`
`
`1 Petitioner identifies Sony Corporation, Sony Corporation of America, and
`Sony Electronics Inc., as real parties-in-interest. Pet. 1.
`2 The ’034 patent claims priority to Japanese Application No. 2003-307696,
`filed August 29, 2003. Ex. 1001 (30).
`3 Patent Owner identifies Collabo Innovations, Inc., Wi-LAN Technologies
`Inc., and Wi-LAN Inc., as real parties-in-interest. Paper 5, 1.
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`The Board has jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision issues pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For
`the reasons that follow, we determine that Petitioner has shown by a
`preponderance of the evidence that claims 1–18 are unpatentable.
`II. BACKGROUND
`A. Related Proceedings
`The ’034 patent has been asserted by Patent Owner against Petitioner
`in Collabo Innovations, Inc. v. Sony Corp., Case No. 1-15-cv-01094
`(D. Del.). Pet. 1, Paper 5, 1. Patent Owner also identifies Collabo
`Innovations, Inc. v. Omnivision Technologies, Inc., Case No. 1-16-cv-00197-
`UNA (D. Del.) as another case where it has asserted the ’034 patent.
`Paper 5, 1. A separate petition for inter partes review4 was filed
`concurrently by Petitioner, also directed to claims 1–18 of the ’034 patent.
`B. Technology
`The invention of the ’034 patent relates to solid state imaging devices
`in which “a plurality of light-sensitive elements are arranged in a matrix
`form.” Ex. 1001, 1:7–10. A discussion of the field of technology in general,
`and the ’034 patent more specifically, follows.
`1. Background of the Technology
`“[T]o improve the light collecting power of a solid-state imaging
`device typified by a CCD,[5] there exists a solid-state imaging device in
`which two micro lenses are formed as shown in FIG. 8,” reproduced below.
`Ex. 1001, 1:12–17.
`
`
`4 Sony Corp. v. Collabo Innovations, Inc., Case IPR2017-00960 (“’960
`IPR”).
`5 Charge-coupled device. Ex. 2003 ¶ 41.
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`Figure 8 illustrates the prior art solid-state imaging device. Id. at 1:15–17,
`4:36–37. The solid-state imaging device “includes a semiconductor
`substrate 501, a gate insulating film 502, a gate electrode 503, a photodiode
`504, a charge transfer section 505, an interlayer insulating film 507, a
`light-shielding film 508, an insulating film 509, an intralayer lens 510, a
`planarization film 511, a color filter 513, and an on-chip micro lens 514.”
`Id. at 1:18–25. Insulating film 509 is formed on light-shielding film 508.
`Id. at 1:34–35. On-chip micro lens 514 is formed on color filter 513 for each
`photodiode 504. Id. at 1:38–39.
`As described in connection with the prior art shown in Figure 8, “the
`on-chip micro lens 514 is formed on the top layer of the solid-state imaging
`device, and the intralayer lens 510 is formed in the planarization film 511.”
`Ex. 1001, 1:41–43. “As such, two micro lenses are formed for each
`photodiode 504, whereby it is possible to further efficiently collect light onto
`the photodiode 504.” Id. at 1:43–46. The prior art shown in Figure 8 has a
`problem, however, in that it allows “color mixing” to occur when oblique
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`light, i.e., “light entering the solid-state imaging device obliquely from
`above,” enters the adjacent pixel. Id. at 1:47–51.
`The ’034 patent describes a second prior art device, shown in
`Figure 9, as a “solid-state imaging device capable of preventing color
`mixing caused by the oblique light.” Ex. 1001, 1:52–54. Figure 9 of
`the ’034 patent is reproduced below.
`
`
`Figure 9 is a cross sectional view of this prior art solid-state imaging device.
`Id. at 1:54–56, 4:38–39. “The solid-state imaging device as shown in FIG. 9
`differs from the solid-state imaging device as shown in FIG. 8 in that
`reflecting walls 512a and 512b are additionally provided on both sides of the
`intralayer lens 510.” Id. at 1:57–60. The addition of reflecting walls, as
`shown in Figure 9, improves light sensitivity of the solid-state imaging
`device, but there is “still variation in the light sensitivity among the pixels of
`the solid-state imaging device.” Id. at 2:4–8.
`Figure 10 of the ’034 patent shows the “distribution of light sensitivity
`of a camera device with an optical lens, into which a solid-state imaging
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`device [of Figure 9] is built.” Ex. 1001, 2:8–12. Figure 10 is reproduced
`below.
`
`
`Figure 10 shows “a distribution of light sensitivity of the conventional
`solid-state imaging device.” Id. at 4:40–41. The vertical axis in Figure 10
`represents light sensitivity, and the horizontal axis represents a position of a
`pixel in the solid-state imaging device. Id. at 2:12–14. Referring again to
`Figure 9, a pixel lying near the center of the solid-state imaging device,
`generally along the vertical axis, has a higher percentage of light incident
`from immediately above (denoted as α), than a pixel lying in a right area
`receiving oblique light incident from the left (denoted as β) or a pixel lying
`in a left area receiving oblique light incident from the right (denoted as γ).
`Id. at 2:15–28. As a result of having more oblique light, there are
`inefficiencies from light hitting the pixel in the right and left area and lower
`light sensitivity than the pixel in the central area. Id. at 2:39–42. This is the
`problem of “corner shading” described below.
`Patent Owner, through the Afromowitz Declaration testimony,
`summarizes the two problems discussed above in connection with Figures 8
`and 9 of the ’034 patent. See PO Resp. 5–10. “Corner shading” results from
`light impinging on peripheral pixels of the image sensor. Id. at 5–7 (citing
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`Ex. 2003 ¶ 29). “Color mixing” occurs when “color varies across the image,
`even though the wall that was photographed was all the same color and
`uniformly lit.” Id. at 7; see id. at 7–10 (citing Ex. 2003 ¶¶ 30–35).
`2. The ’034 Patent (Ex. 1001)
`The ’034 patent describes and claims “a solid-state imaging device
`capable of preventing color mixing caused by oblique light, and reducing
`variation in light sensitivity among pixels.” Ex. 1001, 2:51–53. Figures 2A
`through 2C are reproduced below.
`
`
`
`Figures 2A through 2C are cross section views of pixels located at the left
`and right edges and the center of a photoreceiving region of the solid-state
`imaging device. Id. at 5:7–12, 6:8–14.6 As shown in Figures 2A through
`2C, a pixel of the solid-state imaging device according to the present
`
`
`6 The cited portions of Exhibit 1001 uses right, center, and left in describing
`respectively Figures 2A, 2B, and 2C. At another part of the ’034 patent,
`Figure 2A is described as the left edge and 2C as the right edge. See
`Ex. 1001, 4:50–54. This discrepancy was noted in the Institution Decision.
`Inst. Dec. 6 n.5. Neither party argued the issue during trial, and the
`distinction is not relevant to the parties’ dispute. We proceed with the left to
`right description as stated in this Section II.B.2.
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`embodiment includes, among other parts, semiconductor substrate 51,
`photodiode 54, interlayer insulating film 57, light-shielding film 58,
`insulating film 59, intralayer lens 60, reflecting wall 62, and on-chip micro
`lens 64. Id. at 5:16–23. Light passes to photodiode 54 through aperture 65.
`Id. at 5:45–47. “[A]pertures 65 are formed immediately above the
`respective photodiodes 54 in a matrix form at regular spacings.” Id. at 5:47–
`49; see also id. at Fig. 3 (matrix).
`“The reflecting wall 62 of the solid-state imaging device according to
`the prese[n]t embodiment is formed so that a middle point between the
`reflecting walls opposing each other across the aperture 65 is displaced from
`the center of the aperture 65 toward the center of the photoreceiving region.”
`Ex. 1001, 6:3–8. The photoreceiving region is described with reference to a
`simplified 5×5 matrix. Id. at 6:24–29, Fig. 3. “[O]penings 65 are formed in
`a matrix format [at] regular spacings on the light-shielding film 58” and
`“reflecting walls 62 are formed over the light-shielding film 58 in a grid
`pattern.” Id. at 6:30–33. The “further the aperture 65 is away from the
`center of the photoreceiving region, the further the reflecting wall 62 is
`displaced toward the center of the photoreceiving region relative to the
`aperture 65, whereby it is possible to efficiently collect incident light onto
`the photodiode 54 in a position away from the center of the photoreceiving
`region.” Id. at 6:38–44.
`C. Illustrative Claim
`Of the challenged claims, claims 1 and 10 are independent apparatus
`claims. Claims 2–9 depend directly or indirectly from claim 1. Claims 11–
`18 depend directly or indirectly from claim 10. Claim 1 is reproduced
`below:
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`1[a].7 A solid-state imaging device comprising:
`
`[1b] a semiconductor substrate;
`
`[1c] a photoreceiving region provided on the semiconductor
`substrate;
`
`
`[1d] a plurality of light-sensitive elements provided in the
`photoreceiving region;
`
`
`[1e] a plurality of apertures, which are provided over the
`light-sensitive elements, for delivering an incident light to
`the light-sensitive elements;
`
`
`[1f] a plurality of reflecting walls formed over the light-sensitive
`elements and the apertures so as to oppose each other
`across the apertures; and
`
`
`[1g] a plurality of micro lenses provided over the reflecting walls
`and the apertures,
`
`
`[1h] wherein the plurality of micro lenses disposed in an inner
`periphery of the photoreceiving region, and the plurality
`of reflecting walls corresponding to the micro lenses are
`disposed such that a center of each of the micro lenses and
`a center of each of the reflecting walls opposing each other
`are displaced from a center of the aperture toward a center
`of the photoreceiving region, and
`
`
`
`an amount of displacement between the center of the
`photoreceiving region and the center of the reflecting
`walls is smaller than that of displacement between the
`
`
`7 We adopt the Petition’s use of the claim number followed by alphabetical
`designations for each claim limitation, e.g., 1[a] for the claim preamble and
`[1b]–[1h] for all other limitations. See Pet. 22–38.
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`center of the photoreceiving region and the center of the
`micro lens.
`
`
`Ex. 1001, 10:2–28.
`
`D. Grounds Upon Which Trial was Instituted
`Trial was instituted on claims 1–18 of the ’034 patent on the following
`grounds. Inst. Dec. 46.
`
`Reference(s)
`Tomoda8
`Tomoda and Abe10
`Tomoda and Kimura11
`Tomoda and Aoki12
`Tomoda, Kimura, and
`Kuroiwa13
`Tomoda, Kimura,
`Kuroiwa, and Abe
`
`Basis
`§ 102(b)9
`§ 103
`§ 103
`§ 103
`§ 103
`
`Claim(s)
`Challenged
`1, 2, 5, 9
`3, 8
`4
`6, 7
`10, 11, 13, 14, 18
`
`§ 103
`
`12, 17
`
`
`8 JP Pat. Appl. Pub. No. 2001-237404, to Naoki Tomoda et al., published
`Aug. 31, 2001 (“Tomoda,” Ex. 1003 (English translation)/Ex. 1004,
`(Japanese)). All references to Tomoda and the other translated Japanese
`references are to the English translations.
`9 The Leahy-Smith America Invents Act (AIA), Pub. L. No. 112-29, 125
`Stat. 284, 285–88 (2011), which revised 35 U.S.C. §§ 102 and 103, became
`effective March 16, 2013. The ’034 patent has an effective filing date of
`August 29, 2003, prior to the effective date of the AIA. Ex. 1001 (30).
`Thus, the grounds asserted are under the pre-AIA version of §§ 102 and 103.
`10 JP Pat. Appl. Pub. No. H11-087674, to Shuji Abe, published March 30,
`1999 (“Abe,” Ex. 1005 (English translation)/Ex. 1006 (Japanese)).
`11 JP Pat. Appl. Pub. No. 2001-077339, to Tadao Kimura, published
`March 23, 2001 (“Kimura,” Ex. 1007 (English translation)/Ex. 1008
`(Japanese)).
`12 JP Pat. Appl. Pub. No. H06-224398, to Tetsuro Aoki, published Aug. 12,
`1994 (“Aoki,” Ex. 1017 (English translation)/Ex. 1018 (Japanese)).
`13 JP Pat. Appl. Pub. No. H10-229180, to Jun Kuroiwa, published Aug. 25,
`1998 (“Kuroiwa,” Ex. 1009 (English translation)/Ex. 1010 (Japanese)).
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`Reference(s)
`Tomoda, Kimura,
`Kuroiwa, and Aoki
`
`
`
`Basis
`
`§ 103
`
`Claim(s)
`Challenged
`15, 16
`
`III. ANALYSIS
`A. Claim Construction
`In an inter partes review, claim terms are given their broadest
`reasonable interpretation in light of the specification in which they appear.
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016);
`37 C.F.R. § 42.100(b). We presume that claim terms have their ordinary and
`customary meaning. See TriVascular, Inc. v. Samuels, 812 F.3d 1056,
`1061–62 (Fed. Cir. 2016) (“Under a broadest reasonable interpretation,
`words of the claim must be given their plain meaning, unless such meaning
`is inconsistent with the specification and prosecution history.” (citation
`omitted)); In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). Any special definition for a claim term must be set forth in the
`specification with reasonable clarity, deliberateness, and precision. In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a
`special definition or other consideration, “limitations are not to be read into
`the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184
`(Fed. Cir. 1993). Only those terms that are in controversy need to be
`construed and only to the extent necessary to resolve the controversy. See
`Vivid Techs. Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999).
`Petitioner proposes constructions for “photoreceiving region,”
`“reflecting walls,” and the wherein clause of claim 1. Pet. 10–20. We
`construed those three terms in the Institution Decision. Inst. Dec. 10–15.
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`Patent Owner indicates in the Response that it “applies the Board’s
`construction for its analysis, but reserves the right to seek alternative
`constructions in other proceedings and matters.” PO Resp. 22.
`As explained in Section III.A.1 below, Patent Owner disputes the
`construction of “reflecting walls.” Based on the Response, no other term is
`in dispute. The other two terms construed in the Institution Decision are not
`disputed, but are repeated for completeness.
`1. “reflecting walls” (claims 1, 2, 4, 5, 6, 10, 11, 13, 14, 15)
`Petitioner proposes that “reflecting walls” be construed as “structures
`having approximately vertical surfaces that reflect light.” Pet. 14 (citing
`Ex. 1002 ¶¶ 71–7214). We adopted this construction in the Institution
`Decision. Inst. Dec. 12. Patent Owner offered no construction in its
`Preliminary Response and, as stated above, Patent Owner “applie[d] the
`Board’s construction” in its Response. Prelim. Resp. 14; PO Resp. 22.
`Notwithstanding the preceding, Patent Owner argued the preliminary
`construction in the Institution Decision was “overly broad.” PO Resp. 30;
`Tr. 25:23–26:19. For the first time at the oral hearing, Patent Owner argued
`that construction was not required and that the “plain and ordinary meaning”
`should be applied. Tr. 27:4–28:24. At the oral hearing, Patent Owner also
`argued it disagreed with the preliminary construction of “reflecting walls”
`
`
`14 Patent Owner notes that the Guidash Declaration states incorrectly that the
`’034 patent is expired. Prelim. Resp. 10 (citing Ex. 1002 ¶ 22).
`Nonetheless, the Guidash Declaration states the correct standard for
`construing claims of an unexpired patent. Ex. 1002 ¶ 22. We see no reason
`to discount the technical testimony on an incorrect statement of the law
`where the correct standard is applied. Patent Owner does not assert anything
`to the contrary.
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`and, contrary to its statements in the Response, indicated that a “new
`construction is necessary.” Id. at 31:6–17.
`Ultimately, Patent Owner requested “additional briefing on the
`construction of reflecting walls.” Tr. 34:3–14. We denied Patent Owner’s
`request based primarily on its lateness, occurring at oral hearing after the
`filing of Petitioner’s Reply and the taking of Patent Owner’s expert’s
`deposition. See Order, Conduct of the Proceedings, dated May 14, 2018,
`Paper 29, 3. In addition, even at the oral hearing, Patent Owner never
`proposed an alternative express construction for “reflecting walls,” at most
`arguing construction is not necessary and that plain and ordinary meaning
`should be applied. See Tr. 27:4–28:24.
`Patent Owner expressly or impliedly waived any argument contrary to
`the preliminary construction from the Institution Decision by not raising it in
`its Response. See PO Resp. 22; see also Scheduling Order, Paper 9, 3 (“The
`patent owner is cautioned that any arguments for patentability not
`raised in the response may be deemed waived.”). Further, Patent Owner
`argued at oral hearing that “[w]e have stated that the plain and ordinary
`meaning of the term is what should govern the term.” Tr. 28:16–21.
`However, this assertion is not supported in its Response, which states that
`“Patent Owner applies the Board’s construction for its analysis” without
`mention of plain and ordinary meaning. PO Resp. 21–23.
`Adequate notice of Patent Owner’s position on the construction of
`“reflecting walls” was required. See Genzyme Therapeutic Prod. Ltd. P’ship
`v. Biomarin Pharm. Inc., 825 F.3d 1360, 1367 (Fed. Cir. 2016) (quoting
`Pub. Serv. Comm'n of Ky. v. FERC, 397 F.3d 1004, 1012 (D.C. Cir. 2005)
`(Roberts, J.) (“The critical question for compliance with the APA and due
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`process is whether Genzyme received ‘adequate notice of the issues that
`would be considered, and ultimately resolved, at that hearing.’”)). At best,
`Patent Owner’s position is ambiguous and does not provide “adequate
`notice.” Further, we need not consider Patent Owner’s arguments raised for
`the first time at the oral hearing. See Dell Inc. v. Acceleron, LLC, 884 F.3d
`1364, 1369 (Fed. Cir. 2018) (holding that the Board was not obligated to
`consider an “untimely argument . . . raised for the first time during oral
`argument”).
`We are not persuaded that we should abrogate our preliminary
`construction and apply a plain and ordinary meaning to “reflecting walls.”
`At the oral hearing, Patent Owner did not explain sufficiently how we should
`apply the plain and ordinary meaning. Thus, we are not persuaded that the
`plain and ordinary meaning would be any narrower than the present
`construction of “structures having approximately vertical surfaces that
`reflect light,” which Patent Owner contends is “overly broad.” See PO Resp.
`30; Tr. 25:23–26:19.
`A review of the intrinsic evidence supports our preliminary
`construction of “reflecting walls.” We first look to the language of claim 1,
`which, in pertinent part, recites “a plurality of reflecting walls formed over
`the light-sensitive elements.” Ex. 1001, 10:11–12; see also id. at 11:1–2
`(claim 10, substituting “provided” for “formed” but otherwise identical).
`Beyond recitations relating to being opposed to each other and displaced
`relative to “a center of the aperture,” the independent claims do not further
`define the shape or configuration of the “reflecting walls.” Dependent
`claims 3 and 12 recite that “a vertical cross section of the reflecting wall is a
`trapezoid whose upper base is longer than a lower base.” Id. at 10:38–40
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`(claim 3), 12:7–9 (claim 12). No other dependent claim relates to the shape
`or configuration of the “reflecting walls.”
`Petitioner cites to the Specification in support of its proposed
`construction, including that a purpose of the reflecting walls is to: “reflect[]
`a portion of light entering the semiconductor substrate from above onto the
`aperture on each light-sensitive element.” Pet. 11–12 (citing Ex. 1001, 3:2–
`4, Abstract; Ex. 1002 ¶ 67). Petitioner cites other parts of the Specification
`that the reflecting walls include vertical surfaces that oppose each other
`across the aperture. Id. at 12 (citing Ex. 1001, 3:4–8, 5:16–23, 5:45–49,
`Fig. 2A; Ex. 1002 ¶¶ 68–69). Petitioner also points out the reflecting walls
`are not necessarily “just the vertical faces,” but “include[] the entire
`structure that forms the vertical surface,” such as in the embodiment of
`Figure 6, in which the reflecting walls have a trapezoidal cross section, with
`reflecting surfaces that are “approximately vertical.” Id. at 13–14 (citing
`Ex. 1001, 10:38–40 (claim 3), 9:11–16 (describing Fig. 6 as illustrating “a
`trapezoid whose upper base is longer than the lower base”), Fig. 6
`(illustrating the trapezoidal cross section); Ex. 1002 ¶¶ 70–72).
`The prosecution history of the ’034 patent was made of record in this
`proceeding by Patent Owner. See Ex. 2001. As discussed above, during
`trial, Patent Owner never argued an alternative construction and necessarily
`never cited to the prosecution history as relevant to construction of
`“reflecting walls.” Our independent review of the prosecution history does
`not disclose any argument or claim amendment inconsistent with our
`preliminary construction from the Institution Decision. See, e.g., Ex. 2001,
`18 (amended claim 13 reciting the “reflecting walls” as in claim 1 of the
`’034 patent).
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`The claim language and Specification are consistent with our
`construction of the “reflecting walls” as “structures having approximately
`vertical surfaces that reflect light.” The independent claims do not define
`the shape of the reflecting walls, and the dependent claims define one
`particular shape that is consistent with our “approximately vertical”
`construction. The drawings depict the “reflecting walls” as vertical. See
`Ex. 1001, Figs. 2A–2C, 4A–4B. The trapezoidal cross section embodiment
`is depicted as having “approximately” vertical walls, consistent with our
`preliminary construction. See id. at Fig. 6.
`Accordingly, we maintain our construction of “reflecting walls” from
`the Institution Decision as the broadest reasonable interpretation.
`2. “photoreceiving region” (claims 1, 2, 10, 11)
`Petitioner argues the term “photoreceiving region” should be
`construed as “an array of pixels containing light-sensitive elements.” Pet. 11
`(citing Ex. 1001, Abstract; Ex. 1002 ¶ 66). Petitioner cites to the
`Specification for support, which states the following:
`The solid-state imaging device according to the present invention
`comprises: a plurality of light-sensitive elements 1 arranged
`in a matrix form at regular spacings in a photoreceiving
`region provided on a semiconductor substrate . . . .
`
`Id. (citing Ex. 1001, Abstract; Ex. 1002 ¶¶ 65–66). In the Institution
`Decision, we adopted Petitioner’s construction of “photoreceiving region” as
`the broadest reasonable interpretation. Inst. Dec. 10–12.
`Neither party disputes our preliminary construction. Thus, we
`maintain the construction of “photoreceiving region” proposed in the
`Petition and adopted in the Institution Decision as the broadest reasonable
`interpretation.
`
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`3. “wherein” clause (claim 1)
`The wherein clause of claim 1 recites the following:
`wherein the plurality of micro lenses disposed in an inner
`periphery of the photoreceiving region, and the plurality of
`reflecting walls corresponding to the micro lenses are disposed
`such that a center of each of the micro lenses and a center of each
`of the reflecting walls opposing each other are displaced from a
`center of the aperture toward a center of the photoreceiving
`region . . .
`
`
`Ex. 1001, 10:16–22.
`Petitioner argues the “wherein” clause of claim 1 includes two claim
`elements. Pet. 14–15. Petitioner indicates that “[f]or purposes of this
`proceeding, [it] applies [Patent Owner’s] construction,” based on Patent
`Owner’s arguments in the co-pending District Court litigation. Id. at 19
`(citing “Letter to the Court,”15 Ex. 1013; Ex. 1002 ¶¶ 82–83). In its
`Preliminary Response, among other arguments, Patent Owner disagreed that
`the preceding is its construction because the Letter to the Court was sent for
`the limited purpose of opposing an early construction procedure by the
`Court. Prelim. Resp. 11.
`In the Institution Decision, we determined no construction of the
`wherein clause was required beyond the language of the claim itself. Inst.
`Dec. 13–15. Thus, we applied the plain and ordinary meaning of the
`“wherein” clause without any express construction. Id. at 15. Neither party
`disputes our preliminary determination. Accordingly, we maintain our
`determination from the Institution Decision that the wherein clause requires
`no express construction.
`
`15 Letter dated October 11, 2016, from Patent Owner to the Court in Case
`No. 15-cv-1094-RGA (see Section II.A. above, “Related Proceedings”).
`
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`B. Alleged Unconstitutionality
`Patent Owner objects to the constitutionality of inter partes review
`based on pending review of that issue by the United States Supreme Court.
`PO Resp. 39–40 (citing Oil States Energy Servs., LLC v. Greene’s Energy
`Grp., LLC, No. 16-712 (U.S. Nov. 23, 2016, cert. granted June 12, 2017)).
`On April 24, 2018, the Supreme Court issued a decision in Oil States
`determining that inter partes review is constitutional and does not violate
`Article III or the Seventh Amendment. Oil States Energy Servs., LLC v.
`Greene’s Energy Grp., LLC, 138 S. Ct. 1365, 1379 (2018). Patent Owner’s
`objection is moot.
`C. Grounds Based on Anticipation
`1. Law of Anticipation
`In order for a prior art reference to serve as an anticipatory reference,
`it must disclose every limitation of the claimed invention, either explicitly or
`inherently. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
`Anticipation “requires that every element and limitation of the claim was
`previously described in a single prior art reference, either expressly or
`inherently, so as to place a person of ordinary skill in possession of the
`invention.” Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1082 (Fed.
`Cir. 2008) (citing Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373,
`1379 (Fed. Cir. 2003); Cont’l Can Co. USA v. Monsanto Co., 948 F.2d
`1264, 1267–69 (Fed. Cir. 1991)).
`As the Federal Circuit has held,
`[t]his modest flexibility in the rule that “anticipation” requires
`that every element of the claims appear in a single reference
`accommodates situations where the common knowledge of
`technologists is not recorded in the reference; that is, where
`technological facts are known to those in the field of the
`
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`invention, albeit not known to judges. It is not, however, a
`substitute for determination of patentability in terms of § 103.
`
`Cont’l Can, 948 F.2d at 1268–69.
`The elements must be arranged as required by the claim, but identity
`of terminology is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir.
`1990). Furthermore,
`unless a reference discloses within the four corners of the
`document not only all of the limitations claimed but also all of
`the limitations arranged or combined in the same way as recited
`in the claim, it cannot be said to prove prior invention of the thing
`claimed and, thus, cannot anticipate under 35 U.S.C. § 102.
`
`Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
`Whether a patent is invalid as anticipated is a two-step inquiry. See Power
`Mosfet Tech., LLC v. Siemens AG, 378 F.3d 1396, 1406 (Fed. Cir. 2004).
`The first step requires construction of the claims. Id. The second step in the
`analysis requires a comparison of the properly construed claim to the prior
`art. Id.
`2. Tomoda Overview (Ex.1003)
`Tomoda describes an amplifying solid-state image pickup device that
`solves the problem of “reduced light gathering rates in the peripheral portion
`of the imaging area.” Ex. 1003, Abstract. Tomoda discloses “shifting of the
`microlens positions from the optical receivers in the peripheral portion of the
`imaging area . . . to reduce shading in the peripheral portion of the output
`image.” Id. ¶ 6.
`
`19
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`Figure 1 of Tomoda is reproduced below.
`
`
`Figure 1 “is a sectional view of an example of the amplifying solid-state
`image pickup device according to the present invention, showing the
`structure of the imaging area.” Ex. 1003 ¶ 22. Tomoda’s solid-state image
`pickup device includes a plurality of optical receivers 2 and light shielding
`layers 4 formed on semiconductor substrate 1. Id. ¶¶ 10, 23–24. The light
`shielding layers have an opening formed corresponding to each optical
`receiver. Id. ¶¶ 10, 26. The light shielding layers are stacked on each and
`with interlayer of insulation film 3 between two light shielding layers 4.
`Id. ¶¶ 10, 27.
`Shading is reduced in several ways. Ex. 1003 ¶¶ 15–16. Shading is
`reduced by shifting the centers of the openings in the light shielding layers
`“from the centers of the corresponding optical receivers in the direction
`towards the central portion of the imaging area.” Id. ¶ 15. Shading is
`further reduced by shifting “the centers of the microlenses from the centers
`of the corresponding optical receivers.” Id. ¶ 16. The shifting of the
`microlenses is larger in the peripheral portions of the imaging area than the
`central portion of the imaging area. Id.
`
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`Where “the rays of light incident on the amplifying solid-state image
`pickup device diverge or converge, it is preferable to shift the centers of the
`microlenses from the centers of the corresponding optical receivers in the
`direction in accordance with the optical paths of the incident light.”
`Ex. 1003 ¶ 17. In the case where the rays diverge, the centers of the
`microlenses are shifted “from the centers of the corresponding optical
`receivers in the direction towards the central portion of the imaging area.”
`Id. ¶ 18. If the rays converge, the centers of the micr
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