CASE IPR2017-01780
`Patent No. 6,936,851
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`TCL CORPORATION, TCL MULTIMEDIA TECHNOLOGY HOLDINGS,
`LTD., AND TTE TECHNOLOGY, INC.
`Petitioner,
`
`v.
`
`LEXINGTON LUMINANCE LLC
`Patent Owner.
`
`
`
`IPR2017-01780
`Patent No. 6,936,851
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
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`i
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`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION .............................................................................................. 1
`
`A. The Parties’ Experts ..................................................................................... 4
`
`II. THIS PETITION SHOULD BE DENIED UNDER 35 U.S.C. § 325(d) .......... 5
`
`III. TECHNOLOGY BACKGROUND ................................................................... 7
`
`A. Overview of p-n junction semiconductor light-emitting devices ................ 7
`
`B. History of GaN LEDs .................................................................................. 8
`
`C. The ’851 Patent ............................................................................................ 9
`
`IV. LEXINGTON LUMINANCE’S CLAIM CONSTRUCTIONS ...................... 10
`
`A. The “textured district” Claim Limitation ...................................................11
`
`B. “etched trenches” (claims 1 and 15) ..........................................................13
`
`C. “micro-facets” (claims 1 and 15) ...............................................................13
`
`D. “a sloped etching profile with a smooth rotation of micro-facets”
`(claim 1) .....................................................................................................15
`
`E. “a sloped etching profile… without a prescribed angle of
`inclination” (claims 1 and 15) ....................................................................16
`
`F. “disposed on” (claims 1 and 15) ................................................................19
`
`G. “lattice-mismatched misfit system” (claims 1 and 15) ..............................20
`
`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) .............................................................................20
`
`V. LEVEL OF ORDINARY SKILL IN THE ART ............................................. 23
`
`VI. NO CHALLENGED CLAIMS ARE OBVIOUS IN LIGHT OF NIKI .......... 23
`
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`ii
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`A. The Board Has Already Considered and Rejected the Same
`Arguments Involving Niki .........................................................................23
`
`B. Niki Overview ............................................................................................26
`
`1. Niki describes an approach to solving a problem that is
`distinctly different from that addressed by the ’851 Patent ...............27
`
`2. Niki uses a structure that is distinctly different from that
`described and claimed in the ’851 Patent ...........................................31
`
`C. Claims 1 & 15: Niki 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” .................................................................................................34
`
`1. Niki does not teach or suggest the use of “etched trenches” that
`have “a sloped etching profile with a smooth rotation of micro-
`facets” .................................................................................................34
`
`2. Niki does not teach or suggest the use of “etched trenches” that
`have “a sloped etching profile without a prescribed angle of
`inclination” .........................................................................................53
`
`D. Claims 1 & 15: Niki 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” ..........................................................................................................55
`
`1. Niki discloses nothing about configuring the first layer’s
`“inclined lower portions” ...................................................................61
`
`2. There is no structural equivalence between the “lower inclined
`portions” of Niki and the ’851 Patent. ...............................................62
`
`3. Niki does not disclose or suggest any structure “to reduce the
`propagation of extended lattice defects into the active layer” ...........65
`
`4. The “inclined lower portions” of Niki’s first layer do not reduce
`the propagation of extended lattice defects into the active layer. ......66
`
`5. Niki’s efficacy is limited to the prevention of local defects. .............68
`
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`iii
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`E. Claim 2: Niki Does Not Disclose or Suggest “said first layer has an
`upper planar portion with low defect density.” .........................................71
`
`F. Claim 3: Niki Does Not Disclose or Suggest “a textured district
`defined on a surface of said buffer” ...........................................................72
`
`G. Claim 15: Niki 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” ...................73
`
`H. Claims 16 - 18: Niki Does 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” ............74
`
`VII. CONCLUSION ................................................................................................ 76
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`iv
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`Cases
`Hockerson-Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951 (Fed. Cir.
`33
`2000)
`In re Spormann, 363 F.2d 444 (C.C.P.A. 1966)
`61
`In re Wright, 848 F.2d 1216 (Fed. Cir. 1988)
`28
`Krippelz v. Ford Motor Co., 667 F.3d 1261 (Fed. Cir. 2012)
`41
`Lexington Luminance v. Amazon, 601 Fed. App’x 963 (Fed. Cir. 2015) 14, 15, 20
`Millennium Pharm., Inc. v. Sandoz, Inc., 862 F.3d 1356 (Fed. Cir. 2017)
`61
`Moore U.S.A., Inc. v. Standard Register Co., 229 F.3d 1091 (Fed. Cir. 2000)
`15
`Nystrom v. Trex Co., Inc., 424 F.3d 1136 (Fed. Cir. 2005)
`33
`Par Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186 (Fed. Cir. 2014)
`61
`Statutes
`35 U.S.C. § 325(d)
`Other Authorities
`HTC Corp. v. NFC Tech., LLC, IPR2015-00384, Paper 11
`LG Innotek Co., Ltd. v. Lexington Luminance LLC, Case IPR2017-00052,
`Decision Denying Institution of Inter Partes Review, Paper 7
`Nora Lighting, Inc. v. Juno Mfg., LLC, IPR2015-00601, Paper 13
`Samsung Electronics Co., Ltd. v. Lexington Luminance LLC, Case IPR2017-
`00539, Decision Denying Institution of Inter Partes Review, Paper 8
`passim
`Regulations
`37 C.F.R. § 42.100(b)
`37 C.F.R. § 42.24
`37 C.F.R. § 42.24(a)(1)
`37 C.F.R. § 42.24(b)
`
`
`
`5, 6
`
`5
`
`passim
`6
`
`11
`79
`79
`79
`
`TABLE OF AUTHORITIES
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`
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`v
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`PATENT OWNER’S LIST OF EXHIBITS
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`
`Ex. 2001 Declaration of Dr. Edwin L. Piner
`Ex. 2002 Curriculum Vitae of Dr. Edwin L. Piner
`Ex. 2003 Reexamination File History of the ’851 Patent
`Ex. 2004 Declaration of W.R. Bottoms, PhD. in Lexington Luminance LLC v.
`Amazon.com, Inc., et al., No. 1:12-cv-12216-DJC (D. Mass.)
`Ex. 2005 Declaration of Edwin L. Piner, PhD. in Lexington Luminance LLC v.
`Google, Inc., No. 1:12-cv-12218-RGS (D. Mass.)
`Ex. 2006 Declaration of Michael P.C. Watts, PhD. in Lexington Luminance
`LLC v. Google, Inc., No. 1:12-cv-12218-RGS (D. Mass.)
`Ex. 2007 Lexington Luminance LLC v. Amazon.com Inc., 601 F. App’x 963
`(Fed. Cir. 2015)
`Ex. 2008 Motokazu Yamada, et al., InGaN-Based Near-Ultraviolet and Blue-
`Light-Emitting Diodes with High External Quantum Efficiency Using
`a Patterned Sapphire Substrate and a Mesh Electrode, Jpn. J. Appl.
`Phys. Vol. 48 (2002) pp. L1431-1433
`Ex. 2009 Declaration of Robert D. Katz
`
`
`
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`vi
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`CASE IPR2017-01780
`Patent No. 6,936,851
`
`INTRODUCTION
`
`I.
`
`Patent Owner Lexington Luminance LLC (“Lexington”) submits that the
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`Board should deny the request for inter partes review of U.S. Patent No. 6,936,851
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`(“the ’851 Patent”) because there is not a reasonable likelihood that Petitioner
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`would prevail at trial with respect to at least one claim of the ’851 Patent. The
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`single prior art reference advanced as grounds of rejection proposed by the
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`Petitioner in this IPR Petition — U.S. Patent No. 6,870,191 (“Niki”) — has already
`
`been rejected by the Board in its decision denying institution in two previous IPR
`
`petitions filed against the ’851 Patent. Ex. 1019, LG Innotek Co., Ltd. v. Lexington
`
`Luminance LLC, Case IPR2017-00052 (the “’052 IPR” or “LG IPR), Decision
`
`Denying Institution of Inter Partes Review, Paper 7; Ex. 1020, Samsung
`
`Electronics Co., Ltd. v. Lexington Luminance LLC, Case IPR2017-00539 (the
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`“’539 IPR” or “Samsung IPR”), Decision Denying Institution of Inter Partes
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`Review, Paper 8. In both the present IPR and IPR2017-00052, the Petitions
`
`proposed a ground of rejection against claims 1-3 and 15-18 as obvious over Niki.
`
`In IPR2017-00539, the Petition proposed a ground of rejection against claims 1-2
`
`and 15-18 as obvious over Niki. For the reasons explained below and in the
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`1
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`Board’s Decisions Denying Institution in IPR2017-00052 and IPR2017-00539,
`
`Niki does not teach or suggest all elements of any of the challenged claims.1
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`Indeed, in IPR2017-00052, the Board concluded that “Petitioner has not
`
`shown adequately that Niki teaches ‘whereby said plurality of inclined lower
`
`portions are configured to guide extended lattice defects away from propagating
`
`into the active layer,’ as recited in the independent claims.” IPR2017-00052,
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`Decision Denying Institution of Inter Partes Review, Paper 7 at p. 24. The Board
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`also ruled that “Petitioner also has not demonstrated a reasonable likelihood of
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`prevailing in its challenge to the dependent claims as obvious in view of the
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`teachings of Niki,” Id. at p. 26.
`
`Similarly, in IPR2017-00539, the Board also concluded that “Petitioner has
`
`not shown adequately that Niki teaches ‘whereby said plurality of inclined lower
`
`portions are configured to guide extended lattice defects away from propagating
`
`into the active layer,’ as recited in the independent claims.” IPR2017-00539,
`
`Decision Denying Institution of Inter Partes Review, Paper 8 at p. 25.
`
`Because the Board has already denied in IPR2017-00052 and IPR2017-
`
`00539 on the very same grounds of rejection proposed in this IPR, Petitioner
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`
`1 Infra, §VI; IPR2017-00052, Paper No. 7, pp. 13-26; IPR2017-00539, Paper No.
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`8, pp. 22-26.
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`2
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`clearly cannot possibly demonstrate a reasonable likelihood of prevailing on any of
`
`the challenged claims. This Petition should also be denied.
`
`Petitioner’s arguments that two schematic drawings in the prior art render
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`the challenged apparatus claims obvious (Petition, pp. 20-43) are wrong for two
`
`main reasons. First, some of the structural aspects of the invention, e.g., “a smooth
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`rotation of microfacets”, cannot possibly be discerned from the drawings. Second,
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`some of the structural aspects of the invention, e.g., “whereby said plurality of
`
`inclined lower portions are configured to guide extended lattice defects away from
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`propagating into the active layer”, use functional claiming. Petitioner has not even
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`come close to (1) showing that the claimed function is an inherent characteristic of
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`the prior art or (2) otherwise presenting evidence sufficient to support an inference
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`that the prior art necessarily functions in accordance with the requirements of the
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`claim limitations.
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`Petitioner’s attempt to belittle the inventive aspects of the ’851 Patent should
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`also be rejected. Petitioner’s characterization of “the sloped etched trenches, the
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`configuration of the substrate and first layer” as the only “purported point of
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`novelty” (See Pet. 2.) is inaccurate. As the Board has previously determined, the
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`’851 Patent’s approach to the reduction of propagation of defects includes the use
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`of smooth trenches and inclined layer growth:
`
`The ’851 Patent proposes reducing the propagation of those defects
`“by using the substrate member comprising a textured surface district
`
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`3
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`. . . [that] comprises a plurality of smooth trenches without a
`prescribed angle of inclination.” [’851 Patent] at 2:12–25. “As the
`inclined growth proceeds, the extended defects such as misfit
`dislocation are guided to designated locations and the overall defect
`density in the misfit system is reduced.” Id. at 3:43–46.
`
`IPR2017-00052, Decision Denying Institution of Inter Partes Review, Paper 7 at
`
`p. 4; IPR2017-00539, Decision Denying Institution of Inter Partes Review, Paper
`
`8 at p. 4.
`
`
`
`Instead of addressing the entirety of the inventive aspect of the ’851 Patent,
`
`or the totality of the claim limitations, Petitioner repeatedly focuses on the
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`similarity between two schematic drawings, neither of which incorporate all
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`limitations of the challenged claims, or are drawn to equivalent scales. Petitioner’s
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`argument hinges on an inference drawn from certain drawings appearing in the
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`’851 Patent and the prior art. The Board has previously expressly reviewed these
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`same drawings in each of its earlier decisions. IPR2017-00052, Decision Denying
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`Institution of Inter Partes Review, Paper 7 at p. 4, 23; IPR2017-00539, Decision
`
`Denying Institution of Inter Partes Review, Paper 8 at p. 4, 23.
`
`A. The Parties’ Experts
`Lexington’s expert, Professor Edwin L. Piner, holds Bachelor and PhD.
`
`degrees in Material Science and Engineering, and currently teaches graduate
`
`courses in Materials Science and Engineering at Texas State University. Ex. 2002.
`
`Professor Piner is an author of over 90 refereed journal articles, many of which
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`4
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`involve the materials and subject matter of the technology of the ’851 Patent. See
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`id.
`
`In sharp contrast, Petitioner’s expert Dr. Wilmer Bottoms has virtually no
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`experience or expertise in the technical field of the ’851 Patent. Dr. Bottoms,
`
`having degrees in physics, has been a private venture capitalist since 1999. Ex.
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`1004. Moreover, he has offered his expert witness services in such diverse fields
`
`as component packaging, MEMS devices, and automated materials handling
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`systems. Id. at 3. The Board may question his basis for opining as to the
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`knowledge of a Person Having Ordinary Skill In The Art (“PHOSITA”) in 2003,
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`the priority date appearing on the face of the ’851 Patent, as his CV reveals no
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`relevant refereed journal articles and little applicable experience during the
`
`relevant time period. See generally id.
`
`II. THIS PETITION SHOULD BE DENIED UNDER 35 U.S.C. § 325(d)
`35 U.S.C. § 325(d) allows the Board to exercise its discretion to deny
`
`institution of a petition for inter partes review when “another proceeding or matter
`
`involving the patent is before the Office” and “the same or substantially the same
`
`prior art or arguments previously were presented to the Office.” 35 U.S.C. §
`
`325(d). See, e.g., HTC Corp. v. NFC Tech., LLC, IPR2015-00384, Paper 11 at 9-
`
`11 (relying on section 325(d) to deny a second petition where “[the prior art]
`
`references applied against [the claims] in the present Petition are substantially the
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`5
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`same as those applied in [an] earlier Petition”); Nora Lighting, Inc. v. Juno Mfg.,
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`LLC, IPR2015-00601, Paper 13 at 9-13 (denying petition asserting prior art that
`
`was “duplicative” of art presented during reexamination).
`
`Indeed, the very same grounds of rejection proposed in this proceeding (i.e.,
`
`obviousness of claims 1-2 and 15-18 over Niki) were recently considered and
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`rejected by the Board in two previous IPRs challenging the ’851 Patent. IPR2017-
`
`00052, Decision Denying Institution of Inter Partes Review, Paper 7; IPR2017-
`
`00539, Decision Denying Institution of Inter Partes Review, Paper 8.
`
`Accordingly, the Board should exercise its discretion under 35 U.S.C. § 325(d) as
`
`an additional basis to decline to institute inter partes review. The distorted reading
`
`of Niki was unpersuasive in the previous Petitions and remains unpersuasive now.
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`In addition, Niki was before the Examiner during a recent reexamination
`
`proceeding filed by a third party. Ex. 2003 at p. 176.
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`Petitioner’s obviousness arguments, therefore, raise issues that were already
`
`considered and ultimately rejected many times by both the Board during IPR2017-
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`00052 and IPR2017-00539, and the Examiner during reexamination. This is an
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`independent basis on which the Board should exercise its discretion to deny the
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`Petition. 35 U.S.C. §325(d) (“In determining whether to institute or order a
`
`proceeding… the Director may take into account whether, and reject the petition or
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`request because, the same or substantially the same prior art or arguments
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`previously were presented to the Office.”)
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`III. TECHNOLOGY BACKGROUND
`A. Overview of p-n junction semiconductor light-emitting devices
`As explained by Professor Piner, “[a] semiconductor light-emitting device is
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`a generic term that refers to both light-emitting diodes (“LEDs”) and Laser Diodes
`
`(“LDs”).”2 LEDs are more common; they are found in televisions, mobile phones,
`
`and light bulbs and consume less power than other earlier lighting devices.3
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`“LEDs work by applying a voltage across a p-n junction, which pushes the holes
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`from the p-type layer and the electrons from the n-type layer together to release
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`light energy in the form of photons. A p-n junction is the area where the p-type
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`material and n-type material come into contact. At the p-n junction, extra electrons
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`from the n-type material can move to fill the holes in the p-type material.”4 When
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`a voltage is applied across a p-n junction, holes from the p-type material and
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`electrons from the n-type layer are pushed together.5 “When an electron
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`recombines with a hole, the electron drops to a lower energy level (the valence
`
`
`2 Ex. 2001, Professor Piner’s Declaration, ¶15.
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`3 Id.
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`4 Id. at ¶¶15-16.
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`5 Id. at ¶16.
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`7
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`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
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`material. LEDs based on Gallium Nitride (‘GaN’) are engineered to produce a
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`variety of colors, including blue light in particular.”6
`
`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.7 But using
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`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.8 As
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`explained by Professor Piner, “[t]he use of GaN on sapphire often led to stress and
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`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.”9
`
`“One of the methods used to reduce the propagation of defects from the
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`interface of the mismatched materials was to introduce a mask layer between the
`
`6 Id.
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`7 Id. at ¶ 17.
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`8 Id.
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`9 Id.
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`8
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`materials. This was known as Epitaxial Lateral Overgrowth (“ELO”).”10 A variant
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`of ELO used a partial “air gap” between the materials, which was known as
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`“suspended” ELO.11 But ELO methods had the disadvantage of adding several
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`new steps to the fabrication process.12
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`“Other methods attempted by other researchers included introducing
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`substrate patterns containing protrusions that used flat areas, straight line segments,
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`edges, or points.”13
`
`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,
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`straight line segments, edges, or points.14
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`Dr. Wang also realized that GaN and sapphire were crystalline materials,
`
`and as such, contained facet planes. He determined that a smooth rotation of
`
`10 Id. at ¶ 18.
`
`11 Id.
`
`12 Id.
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`13 Id. at ¶ 19.
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`14 Ex. 1001 (“’851 Patent”) 2:3-6: “structural defects are inevitably generated as
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`the growth front attempts to negotiate surface defects with sharp corners and
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`abrupt changing curvature.”
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`9
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`microfacets was needed to minimize lattice defects such as misfit dislocations that
`
`may extend or propagate into the active layer.”15
`
`The success of Dr. Wang’s unorthodox approach was based, in part, on his
`
`realization that areas of the substrate protrusions that did not have a smooth
`
`rotation of microfacets were susceptible to adverse microfaceting and layer
`
`deterioration.16 Thus, he developed a textured surface district that precluded the
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`occurrence of chaotic microfaceting.17 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
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`corners.18 The efficacy of Dr. Wang’s invention was later confirmed by others. In
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`addition, the ’851 Patent has been cited as prior art in 47 patents assigned to
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`leading LED manufacturers such as Samsung Electronics, Applied Materials, and
`
`Mitsubishi Electric.
`
`IV. 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
`
`15 See ’851 Patent 1:62; 2:20-21; 3:44; 4:56.
`
`16 ’851 Patent 2:1-3.
`
`17 Id. at 2:32-24.
`
`18 Id. at 4:5-46.
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`10
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`appears.” 37 C.F.R. § 42.100(b). Under that construction, claim terms are to be
`
`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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`11
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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
`
`
`
`
`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
`
`Figs. 1A, 1B, 1C
`
`Fig. 2A
`
`Fig. 2B
`
`Thus, the broadest reasonable construction of this claim limitation requires the
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`“sloped etching profile” to have a “smooth rotation of microfacets” and to be
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`without a “prescribed angle of inclination”.
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`12
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`“etched trenches” (claims 1 and 15)
`
`B.
`For the purposes of its preliminary response, Lexington does not oppose
`
`Petitioner’s contention that the broadest reasonable interpretation of “etched
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`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
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`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. 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.” 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. By clarifying that micro-facets are the very
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`small planes that make up a surface contour, micro-facets are distinguishable from
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`the planes between the surface features. To conclude otherwise would mean that a
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`facet of any size appearing in an LED could be a micro-facet, which would
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`
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`13
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`

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`improperly read the term “micro” out of the term “micro-facet.” The diagram
`
`below illustrates this principle:
`
`
`Fig. 2B Substrate Pattern
`
`
`Microfacets: small in
`relation to the size of
`the surface feature
`
`Not a microfacet – but
`still a “very small
`planar crystal surface”
`
`
`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.”
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`Ex. 1016 at 6.19 This construction would not improperly import a limitation from
`
`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,
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`the context involves the microscopic “sloped etching profiles” of the “etched
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`trenches” in which the term appears. See Moore U.S.A., Inc. v. Standard Register
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`19 While the Federal Circuit did not vacate the construction of “micro-facet”,
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`neither did it endorse it. Ex. 2007, 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
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`region existing between two substrate protrusions was not in the Amazon record. It
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`was, however, in the Google record, and was adopted by the Google Court, which
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`was aware of the Federal Circuit’s opinion. Ex. 1016 at 6-7.
`
`
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`14
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`

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`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
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`to be used.”)
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`“a sloped etching profile with a smooth rotation of micro-facets”
`D.
`(claim 1)
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`Petitioner’s proposal is not reasonable because it reads the phrases “sloped
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`etching profile” and “with a smooth rotation of micro-facets” entirely out of the
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`claim limitation.20 Petitioner provides no support for its re-writing of the
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`limitation. Moreover, as Professor Piner explains, “sloped etched sides” need not
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`necessarily have a “smooth rotation of micro-facets.” Ex. 2001, ¶¶ 48-56.
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`In addition, the Federal Circuit confirmed that the phrase “with a smooth
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`rotation of micro-facets” modifies the “sloped etching profile”. Ex. 2007,
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`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
`
`
`20 Petitioner’s expert, Dr. Bottoms, having reviewed the ’851 Patent in its entirety,
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`along with its file history, previously swore that a PHOSITA would understand this
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`term to mean, “when viewed in cross-section, a gradual incremental rotation in
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`slope from micro-facet to micro-facet such that there are no sharp corners formed
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`by an etching process.” Ex. 2004, p. 5, ¶ 13. Dr. Bottoms provides no explanation
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`for the radical reversal of his opinion.
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`
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`15
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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.
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`For all these reasons, the Board should reject Petitioner’s proposal and
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`construe the term “sloped etching profile with a smooth rotation of micro-facets”
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`to mean “the etched trenches have etched sloped sides made up of a smooth
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`rotation of micro-facets.”
`
`“a sloped etching profile… without a prescribed angle of
`E.
`inclination” (claims 1 and 15)
`
`The Board has twice previously construed this phrase under the broadest
`
`reasonable construction standard to mean “sloped etched sides without a specified
`
`angle of inclination.” IPR2017-00052, Decision Denying Institution of Inter
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`Partes Review, Paper 7, p. 10; IPR2017-00539, Decision Denying Institution of
`
`Inter Partes Review, Paper 8 at pp. 8-10.
`
`The Board also previously recognized that the phrase “without a prescribed
`
`angle of inclination” modifies the entire “etching profile” recited in the claims, not
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`constituent segments. IPR2017-00052, Decision Denying Institution of Inter
`
`Partes Review, Paper 7, p. 10. There may be portions of the etching profile that
`
`are not sloped, and such portions need not be “without a prescribed angle of
`
`inclination.” Accordingly, the phrase “without a prescribed angle of inclination”
`
`modifies the “sloped etching profile.” This is consistent with the Board’s previous
`
`analysis:
`
`
`
`16
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`

`

`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.
`
`IPR2017-00052, Decision Denying Institution of Inter Partes Review, Paper 7, pp.
`
`8-9.
`
`The intrinsic record explains that this limitation is meant to exclude flat
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`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.
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`’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 contrast 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. The ’851 Patent teaches away from the use of a “sloped etching
`
`profile” that has a “specific inclination angle” or a “single angle of inclination.”
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`’851 Patent 1:64-2:1. A skilled artisan would understand that the phrase “without
`
`a prescribed angle of inclination” means “without a constant inclination angle” or,
`
`alternatively, “without a single angle of inclination”.
`
`
`
`17
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`

`

`Moreover, the intrinsic evidence further reveals that the inventor stated that
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`the features on the surface of the substrate became “naturally rounded” (i.e.,
`
`curved) (’851 Patent 2:30-32) and therefore without a “constant” (i.e., unchanging)
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`angle. See also ’851 Patent 3:58-59 and 4:21-23 (“curved etching profile”). The
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`claim’s requirement that the profile be without a “prescribed angle of inclination”
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`addressed the patentee’s goal of a curved profile. 21 ’851 Patent 8:42.
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`Further, the reexamination history provides guidance: “the angle of
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`inclination of the sloped surface of the trench varies continuously so that there is
`
`no prescribed angle of inclination as there might be in the trenches followed a
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`rectangular or a sharp saw-tooth pattern.” Ex. 2003 at p. 689; see also id. at 693
`
`(differentiating the