ROBERT F. KRAMER (Bar No. 181706)
`Email: robert.kramer@dentons.com
`RUSSELL TONKOVICH (Bar No. 233280)
`Email: russell.tonkovich@dentons.com
`KENNETH JENQ (Bar No. 266024)
`Email: kenneth.jenq@dentons.com
`DENTONS US LLP
`1530 Page Mill Road, Suite 200
`Palo Alto, CA 94304-1125
`Telephone: (650) 798-0300
`Facsimile: (650) 798-0310
`
`CARL BRETSCHER (pro hac vice)
`Email: carl.bretscher@dentons.com
`DENTONS US LLP
`1900 K Street, N.W.
`Washington, D.C. 20006
`Telephone: (202) 496-7500
`Facsimile: (202) 496-7756
`
`
`Attorneys for Defendant
`RAYVIO, INC.
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF CALIFORNIA
`SAN JOSE DIVISION
`
`
`NITRIDE SEMICONDUCTORS CO.,
`LTD., a Japanese corporation,
`
` Case No. 5:17-cv-02952-EJD
`
`
`
`
`
`
`
`
`Plaintiff,
`
`vs.
`
`RAYVIO, INC., a Delaware corporation,
`
`
`
`Defendant.
`
`
`
`
`
`DEFENDANT RAYVIO, INC.’S
`INVALIDITY CONTENTIONS
`
`[PATENT L. R. 3-3]
`
`Hon. Edward J. Davila
`
`
`
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
` RAYVIO’S INVALIDITY CONTENTIONS
`
`
`
`Case No. 5:17-cv-02952-EJD
`
`Ray Vio Corporation Exhibit 1028
`
`

`

`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`I.
`
`INTRODUCTION
`
`Pursuant to N.D. Cal. Patent L.R. (“Patent Rule”) 3-3 and the Court’s Scheduling Order
`
`(Dkt. 37), Defendant RayVio, Inc. (“RayVio”) serves these Invalidity Contentions on Plaintiff
`
`Nitride Semiconductors, Inc. (“Nitride”). These Invalidity Contentions are based on Defendant's
`
`current knowledge of U.S. Patent No. 6,861,270 (“the ’270 Patent”), Defendants current
`
`understanding and interpretation of the scope of the patent claims as set forth in Nitride’s
`
`Infringement Contentions, and Defendant’s current understanding of the prior art.
`
`RayVio reserves the right to supplement these Invalidity Contentions to the extent
`
`permitted under the Local Rules. RayVio investigation is ongoing. This case is currently in the
`
`10
`
`early stages of discovery. As discovery proceeds, RayVio may learn of additional prior art and
`
`11
`
`information regarding the validity of the Asserted Claims of the ’270 patent. Moreover, Nitride
`
`12
`
`has not yet provided its proposed constructions pursuant to Patent L.R. 4-1 and 4-2. Additional
`
`13
`
`prior art may become relevant based on Nitride’s proposed constructions for the Asserted Claims.
`
`14
`
`Nitride’s constructions may also change the scope of the Asserted Claims thereby altering the
`
`15
`
`bases of invalidity of the Asserted Claims under 35 U.S.C. §§101, 102, 103, and 112.
`
`16
`
`While RayVio has considered Nitride’s Infringement Contentions, the contentions are
`
`17
`
`vague, ambiguous, and fail to specifically identify where each limitation of each asserted claim is
`
`18
`
`found in the accused products. Further, RayVio is not aware of whether Nitride will contend that
`
`19
`
`any limitations of the Asserted Claims are not disclosed by the prior art disclosed herein and, if
`
`20
`
`so, which specific limitations Nitride may allege are not disclosed in each particular prior art
`
`21
`
`reference disclosed herein. It is also unclear whether Nitride will allege that any of the disclosed
`
`22
`
`prior art references do not qualify as prior art. RayVio reserves the right to supplement these
`
`23
`
`Invalidity Contentions to the extent permitted under the Local Rules to address these and other
`
`24
`
`issues and information that may arise during discovery.
`
`25
`
`II.
`
`THE ASSERTED CLAIMS OF THE PATENTS-IN-SUIT
`
`26
`
`In Plaintiff’s Infringement Contentions, Nitride alleges that RayVio infringes claims 1, 2,
`
`27
`
`5, 8, 9, and 12 (collectively “Asserted Claims”).
`
`28
`
` RAYVIO’S INVALIDITY CONTENTIONS
`
`1
`
`Case No. 5:17-cv-02952-EJD
`
`Ray Vio Corporation Exhibit 1028
`
`

`

`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`III. THE ASSERTED CLAIMS OF THE ’270 PATENT ARE EACH INVALID FOR
`ANTICIPATION UNDER 35 U.S.C. § 102 AND/OR OBVIOUSNESS UNDER 35
`U.S.C. § 103 IN VIEW OF THE PRIOR ART [PATENT RULES 3-3(A), (B) AND
`(C)]
`
`Pursuant to Patent Rules 3-3(a), (b) and (c), RayVio contends that each of the Asserted
`
`Claims is invalid as anticipated by the prior art under 35 U.S.C. § 102 and/or as obvious in view
`
`of the prior art under 35 U.S.C. § 103. The identification of any patent or patent publication
`
`herein shall be deemed to include any counterpart patent or application filed, published, or issued
`
`anywhere in the world.
`
`RayVio’s claim charts in Exhibits 1-27 cite particular teachings and disclosures in the
`
`prior art that identify where each limitation is found in the reference. One of ordinary skill in the
`
`art would read the reference as a whole and in the context of the knowledge, literature, and
`
`publications in the field. RayVio cites exemplary portions of the prior art references in Exhibits
`
`1-27. RayVio reserves the right to rely on uncited portions of the prior art references in these
`
`exhibits, as well as other publications and expert testimony, to inter alia provide context and
`
`assist in understanding the cited portions and as evidence that a claim limitation is known or
`
`disclosed. Further, any citation to a figure in the exhibits is inclusive of all discussions of that
`
`figure in the reference. To establish bases for combinations of certain cited references that render
`
`the Asserted Claims obvious, RayVio reserves the right to rely on the general knowledge of one
`
`or ordinary skill in the art and common sense as well as uncited portions of the prior art
`
`references, other publications, and documents incorporated by reference.
`
`Because the parties have not yet exchanged proposed constructions and the Court has not
`
`yet construed the claims, there is uncertainty regarding the scope of the Asserted Claims. The
`
`prior art in Exhibits 1-27 may contain alternative interpretations of the prior art to account for the
`
`uncertainty as to the scope of the Asserted Claims, which have not been construed by the Court.
`
`Nothing stated herein shall be treated as an admission or suggestion that RayVio agrees with
`
`Nitride regarding either the scope of the Asserted Claims or the construction of a claim term.
`
`Nothing stated herein shall be construed as an admission or a waiver of any particular
`
`construction of any claim term. RayVio expressly reserves the right to contest any claim
`
` RAYVIO’S INVALIDITY CONTENTIONS
`
`2
`
`Case No. 5:17-cv-02952-EJD
`
`Ray Vio Corporation Exhibit 1028
`
`

`

`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`construction asserted by Nitride.
`
`The background and state of the art at the time of the purported invention of the ’270
`
`patent is exemplified by at least the references found at RV00000143 - RV00005917. Each of
`
`these references show the state of the art regarding gallium nitride based semiconductors and light
`
`emitting elements at the time the ’270 patent was filed. These references discuss the making,
`
`structure, and use of gallium nitride based semiconductors and light emitting devices. RayVio
`
`reserves the right to rely on additional references produced in discovery to provide a background
`
`of the technology, to provide context to the invention and the prior art, to show the knowledge of
`
`one of ordinary skill in the art, and for other background purposes.
`
`A.
`
`Priority Date of the ’270 Patent
`
`In Nitride’s Infringement Contentions pursuant to Patent L.R. 3-1, Nitride identifies the
`
`12
`
`filing date of the ’270 patent, March 6, 2002, as the asserted priority date. No other priority date
`
`13
`
`is stated in Nitride’s Infringement Contentions. Other than March 6, 2002, Nitride does not assert
`
`14
`
`any specific conception or reduction to practice dates in its Infringement Contentions pursuant to
`
`15
`
`Patent L.R. 3-1. Nitride has also not identified any documents relating to conception, reduction to
`
`16
`
`practice, design, and development of the claimed inventions of the ’270 patent as required by
`
`17
`
`Patent Local Rule 3-2. Therefore, RayVio’s Invalidity Contentions are based on Nitride’s current
`
`18
`
`asserted priority date of March 6, 2002. If Nitride amends its infringement contentions to assert
`
`19
`
`an earlier priority date, RayVio reserves its right to amend its invalidity contentions to address
`
`20
`
`Nitride’s amendments.
`
`21
`
`22
`
`B.
`
`Anticipation
`
`Claims 1, 2, 5, 8, 9, and 12 of the ’270 patent are each anticipated by the prior art
`
`23
`
`references shown in the table below. The table identifies the claims anticipated by each reference
`
`24
`
`and the Exhibit containing the claim chart that identifies where each limitation of the Asserted
`
`25
`
`26
`
`27
`
`28
`
`Claims is found in that reference.1
`
`
`1 The claim charts provide illustrative citations to where each element may be found in the prior
`art references. The cited references may contain other disclosures of each claim element as well,
`and RayVio reserves the right to argue any claim elements of the ’270 patent are disclosed in non-
`cited portions of these references.
`
` RAYVIO’S INVALIDITY CONTENTIONS
`
`3
`
`Case No. 5:17-cv-02952-EJD
`
`Ray Vio Corporation Exhibit 1028
`
`

`

`
`
`
`
`Prior Art Reference
`
`Claims Anticipated Claim Chart Exhibit
`
`Japanese Patent Pub. No. JP 10-79501A
`(“JP10079501”)
`
`1, 2, 5, 8, 9, 12
`
`Japanese Patent Pub. No. 11-354843
`(“JP11354843”)
`
`1, 2, 5, 8, 9, 12
`
`U.S. Patent No. 5,795,798 (“798 Patent”)
`
`1, 2, 5, 8, 9, 12
`
`U.S. Patent No. 6,194,241 (“241 Patent”)
`
`1, 2, 5, 8, 9, 12
`
`U.S. Patent No. 6,573,535 (“535 Patent”)
`
`1, 2, 5, 8, 9, 12
`
`U.S. Patent No. 6,657,232 (“232 Patent”)
`
`1, 2, 5, 8, 9, 12
`
`U.S. Patent No. 6,110,757 (“757 Patent”)
`
`1, 2, 5, 8, 9, 12
`
`Japanese Patent Pub. No. 2000-174337
`(“JP2000174337”)
`
`Japanese Patent Pub. No. 2000-349333
`(“JPA_2000349333”)
`
`“GaN quantum-dot formation by self-assembling
`droplet epitaxy and application to single-electron
`transistors” (“Kawasaki Reference”)
`
`1, 2, 5, 8, 9, 12
`
`1, 2, 5, 8, 9, 12
`
`1, 2, 5, 8, 9, 12
`
`“Reduction of defect density in GaN epilayer
`having buried Ga metal by MOCVD” (“Sumiya
`Reference”)
`
`1, 2, 5, 8, 9, 12
`
`“Self-assembling GaN quantum dots on AlxGa1-
`xN surfaces using a surfactant” (“Tanaka
`Reference 1”)
`
`1, 2, 5, 8, 9, 12
`
`“Stimulated emission from optically pumped
`GaN quantum dots” (“Tanaka Reference 2”)
`
`1, 2, 5, 8, 9, 12
`
`Japanese Patent Pub. No. 2000-223790
`(“JP2000223790”)
`
`“Buried Tungsten Metal Structure Fabricated by
`Epitaxial Lateral Overgrown GaN via Low
`Pressure Metalorganic Vapor Phase Epitaxy”
`(“Haino Reference”)
`
`1, 2, 5, 8, 9, 12
`
`1, 2, 5, 8, 9, 12
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`U.S. Patent No. 6,852,161 (“161 Patent”)
`
`1, 2, 5, 8, 9, 12
`
`16
`
` RAYVIO’S INVALIDITY CONTENTIONS
`
`4
`
`Case No. 5:17-cv-02952-EJD
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Ray Vio Corporation Exhibit 1028
`
`

`

`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`U.S. Patent No. 6,442,184 (“184 Patent”)
`
`1, 2, 5, 8, 9, 12
`
`Japanese Patent Publication No. H10-215029
`(“JPH10-215029”)
`
`1, 2, 5, 8, 9, 12
`
`“Localized variations in electronic structure of
`AlGaN/GaN heterostructures grown by
`molecular-beam epitaxy” (“Smith Reference 1”)
`
`1, 2, 5, 8, 9, 12
`
`U.S. Patent No. 6,139,628 (“628 Patent”)
`
`1, 2, 5, 8, 9, 12
`
`U.S. Patent No. 6,530,991 (“991 Patent”)
`
`1, 2, 5, 8, 9, 12
`
`U.S. Patent No. 6,645,885 (“885 Patent”)
`
`1, 2, 5, 8, 9, 12
`
`WO OO/30178 (“WO OO/30178”)
`
`1, 2, 5, 8, 9, 12
`
`European Patent EP 0779666A2 (“EP0779666”)
`
`1, 2, 5, 8, 9, 12
`
`“Structural and Electronic Properties of III V
`Nitride Heterostructures” (“Smith Reference 2”)
`
`1, 2, 5, 8, 9, 12
`
`“Incorporation of indium during molecular beam
`epitaxy of InGaN” (“Bottcher Reference”)
`
`1, 2, 5, 8, 9, 12
`
`“Indium droplet formation during molecular
`beam epitaxy of InGaN” (“Chaly Reference”)
`
`1, 2, 5, 8, 9, 12
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`C.
`
`Obviousness
`
`“The combination of familiar elements according to known methods is likely to be
`
`obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550
`
`U.S. 398, 416 (2007). “When a work is available in one field of endeavor, design incentives and
`
`other market forces can prompt variations of it, either in the same field or a different one.” Id. at
`
`417. “For the same reason, if a technique has been used to improve one device, and a person of
`
`ordinary skill in the art would recognize that it would improve similar devices in the same way,
`
`using the technique is obvious unless its actual application is beyond his or her skill.” Id.
`
`In determining whether one of ordinary skill in the art would have been motivated to
`
`combine multiple references, one can “look to interrelated teachings of multiple patents; the
`
`effects of demands known to the design community or present in the marketplace; and the
`
`background knowledge possessed by a person having ordinary skill in the art.” Id. at 418.
`
` RAYVIO’S INVALIDITY CONTENTIONS
`
`5
`
`Case No. 5:17-cv-02952-EJD
`
`Ray Vio Corporation Exhibit 1028
`
`

`

`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`“[A]ny need or problem known in the field of endeavor at the time of invention and addressed by
`
`the patent can provide a reason for combining the elements in the manner claimed.” Id. at 420.
`
`The motivation to combine the teachings of the prior art references disclosed herein is
`
`found in the references themselves and/or: (1) the nature of the problem being solved; (2) the
`
`express, implied, and inherent teachings of the prior art; (3) the knowledge of persons of ordinary
`
`skill in the art; (4) the fact that the prior art is generally directed towards the same or similar
`
`problems; and/or (5) the predictable results obtained in combining the different elements of the
`
`prior art.
`
`1.
`
`Obviousness Based on Knowledge of One of Ordinary Skill in the Art
`
`10
`
`It is RayVio’s contention that each of the references listed above in Section III.B.
`
`11
`
`anticipates the Asserted Claims of the ’270 patent. If any limitation of any Asserted Claim is
`
`12
`
`found missing from any anticipatory reference identified above in Section III.B., then that
`
`13
`
`limitation and that claim would have been obvious based on the disclosure of the reference and
`
`14
`
`the knowledge of one of ordinary skill in the art. ’
`
`15
`
`16
`
`17
`
`2.
`
`Obviousness Combinations
`
`a.
`
`Obviousness combinations including JP10079501
`
`JP10079501 in combination with any one of the following references renders the Asserted
`
`18
`
`Claims invalid as obvious: JP11354843; ’798 Patent; ’241 Patent; ’535 Patent; ’232 Patent; ’757
`
`19
`
`Patent; JP2000174337; JPA_2000349333; Kawasaki Reference; Sumiya Reference; Tanaka
`
`20
`
`Reference 1; Tanaka Reference 2; JP2000223790; Haino Reference; ’161 Patent; ’184 Patent;
`
`21
`
`’628 Patent; ’991 Patent; ’885 Patent; JPH10-215029; WO 00/30178; EP0779666; Smith
`
`22
`
`Reference 1; Smith Reference 2; Bottcher Reference, Chaly Reference. One of ordinary skill in
`
`23
`
`the art would have been motivated to combine the teachings of JP10079501 with each of the
`
`24
`
`references identified above to create the following combinations, which would render the
`
`25
`
`Asserted Claims of the ’270 patent invalid for obviousness.
`
`26
`
`27
`
`28
`
`•
`
`•
`
`•
`
`JP10079501 in view of JP10079501
`
`JP10079501 in view of JP11354843
`
`JP10079501 in view of ’798 patent
`
` RAYVIO’S INVALIDITY CONTENTIONS
`
`6
`
`Case No. 5:17-cv-02952-EJD
`
`Ray Vio Corporation Exhibit 1028
`
`

`

`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`JP10079501 in view of ’241 patent
`
`JP10079501 in view of ’535 patent
`
`JP10079501 in view of ’232 patent
`
`JP10079501 in view of ’757 patent
`
`JP10079501 in view of JP2000174337
`
`JP10079501 in view of JPA_2000349333
`
`JP10079501 in view of Kawasaki Reference
`
`JP10079501 in view of Sumiya Reference
`
`JP10079501 in view of Tanaka Reference 1
`
`JP10079501 in view of Tanaka Reference 2
`
`JP10079501 in view of JP2000223790
`
`JP10079501 in view of Haino Reference
`
`JP10079501 in view of ’161 patent
`
`JP10079501 in view of ’184 patent
`
`JP10079501 in view of ’628 patent
`
`JP10079501 in view of ’991 patent
`
`JP10079501 in view of ’885 patent
`
`JP10079501 in view of JPH10-215029
`
`JP10079501 in view of WO 00/30178
`
`JP10079501 in view of EP0779666
`
`JP10079501 in view of Smith Reference 1
`
`JP10079501 in view of Smith Reference 2
`
`JP10079501 in view of Bottcher Reference
`
`JP10079501 in view of Chaly Reference
`
`Further, one of ordinary skill in the art would have been motivated to combine the
`
`26
`
`teachings in any embodiment within JP10079501 with any other embodiment within the same
`
`27
`
`reference to render the Asserted Claims obvious.
`
`28
`
` RAYVIO’S INVALIDITY CONTENTIONS
`
`7
`
`Case No. 5:17-cv-02952-EJD
`
`Ray Vio Corporation Exhibit 1028
`
`

`

`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`JP10079501 in combination with any two of the following references renders the Asserted
`
`Claims invalid as obvious: JP11354843; ’798 Patent; ’241 Patent; ’535 Patent; ’232 Patent; ’757
`
`Patent; JP2000174337; JPA_2000349333; Kawasaki Reference; Sumiya Reference; Tanaka
`
`Reference 1; Tanaka Reference 2; JP2000223790; Haino Reference; ’161 Patent; ’184 Patent;
`
`'628 Patent; ’991 Patent; ’885 Patent; JPH10-215029; WO 00/30178; EP0779666; Smith
`
`Reference 1; Smith Reference 2; Bottcher Reference, Chaly Reference. One of ordinary skill in
`
`the art would have been motivated to combine the teachings of JP10079501 with the references
`
`identified above to render the Asserted Claims obvious. Examples of such combinations that
`
`render the Asserted Claims invalid for obviousness include the following:
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`JP10079501 in view of Sumiya Reference and JPH10-215029
`
`JP10079501 in view of ’241 Patent and JPH10-215029
`
`JP10079501 in view of ’232 Patent and JPH10-215029
`
`JP10079501 in view of ’757 Patent and JPH10-215029
`
`JP10079501 in view of JP2000223790 and JPH10-215029
`
`JP10079501 in view of JPA_2000349333 and JPH10-215029
`
`JP10079501 in view of ’798 Patent and JPH10-215029
`
`JP10079501 in view of Tanaka Reference 2 and JPH10-215029
`
`JP10079501 in view of ’798 Patent and Sumiya Reference
`
`JP10079501 in view of ’798 Patent and '241 Patent
`
`JP10079501 in view of ’798 Patent and JP2000223790
`
`JP10079501 in view of ’798 Patent and Tanaka Reference 2
`
`One of ordinary skill in the art would have been motivated to make each of the
`
`23
`
`aforementioned combinations for the following reasons. Each of the references above is directed
`
`24
`
`toward the same technological field (i.e., light emitting semiconductor elements containing
`
`25
`
`gallium nitride based semiconductor materials) and aim to solve the same problem of improving
`
`26
`
`light emission from a gallium nitride based semiconductor device. Like the ’270 Patent, each of
`
`27
`
`the references discloses a gallium nitride based semiconductor with multiple layers including a
`
`28
`
`light emitting element. See, e.g., ’270 Patent at 1:9-14; 1:46-59; JP10079501 at [Abstract];
`
` RAYVIO’S INVALIDITY CONTENTIONS
`
`8
`
`Case No. 5:17-cv-02952-EJD
`
`Ray Vio Corporation Exhibit 1028
`
`

`

`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`[0001-0005]; [0010-0016]; JP11354843 at [Abstract]; [0007-0010]; ’798 Patent at 2:44-3:5; ’241
`
`Patent at Abstract; 1:61-28; ’535 Patent at Abstract; 1:10-14; 3:22-4:54; ’232 Patent at 1:10-14;
`
`2:40-52; 3:22-4:54; ’757 Patent at Abstract; 2:56-3:42; JP2000174337 at [Abstract]; [0007-0008];
`
`JPA_2000349333 at [0001]; [0003-0006]; Kawasaki Reference at p.2243; Sumiya Reference at
`
`p.1060-1061; Tanaka Reference 1 at p.4096; Tanaka Reference 2 at p.1299; JP2000223790 at
`
`[Abstract]; [0002-0004]; Haino Reference at p.449; ’161 Patent at 1:21-29; 3:42-51; ’184 Patent
`
`at Abstract; 1:7-10; 2:8-19; ’628 Patent at Abstract; 1:5-10; 1:65-2:35; ’991 Patent at Abstract;
`
`1:8-14; 2:44-3:55; ’885 Patent at Abstract; 1:65-2:65;JPH10-215029 at [Abstract]; [0005-0008];
`
`[00014]; WO 00/30178 at 1:11-4:9; 4:11-10:11;EP0779666 at Abstract; 1:5-10; 1:13-31; 4:11-29;
`
`10
`
`Smith Reference 1 at Abstract; p.2749; Smith Reference 2 at p.1; p.8; p.25; Bottcher at Abstract;
`
`11
`
`p.3232-3233; Chaly at Abstract; p.147; p.148.
`
`12
`
`The similarities in the structure, function, and purpose of the disclosed invention (e.g.,
`
`13
`
`creating a light emitting element that includes a substrate, gallium nitride based layers, and a
`
`14
`
`“composition material” or “lattice mismatch layer”) would motivate a skilled artisan to combine
`
`15
`
`the teachings of the JP10079501 with any of these other aforementioned references. These
`
`16
`
`similarities also ensure that such a combination produces predictable results by simply adding or
`
`17
`
`substituting known features from one reference describing light emitting semiconductor elements
`
`18
`
`containing gallium nitride based semiconductor materials in the JP10079501 reference, which
`
`19
`
`similarly describes light emitting semiconductor elements containing gallium nitride based
`
`20
`
`semiconductor materials. One of ordinary skill in the art would have recognized that the
`
`21
`
`techniques used in the aforementioned references would have similar benefits in the context of
`
`22
`
`the teachings of JP10079501. Further, design and market concerns would have motivated one of
`
`23
`
`ordinary skill in the art to combine the JP10079501 with the references identified above.
`
`24
`
`It would have been a routine exercise for one of ordinary skill in the art to combine the
`
`25
`
`teachings of JP10079501 with the identified references to arrive at the claimed invention, as the
`
`26
`
`overlapping nature of their respective teachings confirms that such combinations had already
`
`27
`
`been achieved in the prior art and would not introduce any additional complexity or
`
`28
`
`unpredictability. As evidenced by the prior art cited herein, gallium nitride based semiconductors
`
` RAYVIO’S INVALIDITY CONTENTIONS
`
`9
`
`Case No. 5:17-cv-02952-EJD
`
`Ray Vio Corporation Exhibit 1028
`
`

`

`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`with light emitting elements, including “composition materials” and “lattice mismatch layers,”
`
`were commonplace as of the priority date of the ’270 patent. A person of ordinary skill in the art
`
`seeking to solve the problem identified by the patentee would have looked to analogous art for
`
`such a solution. As noted above, the solution identified by the patentee had already been
`
`identified by others in the field. One of ordinary skill in the art, thus, would have been motivated
`
`to combine such analogous teachings in the same manner proposed by the patentee.
`
`JP10079501 and the identified references would be motivated to combine these references
`
`because they address the same goal (e.g., to improve light emission from a gallium nitride based
`
`semiconductor device). Within this known work in this field of endeavor, a person of ordinary
`
`10
`
`skill in the art would make simple substitutions of the technology disclosed in the JP10079501
`
`11
`
`and each of the identified references. See, e.g., ’270 Patent at 1:9-12; 1:42-46; JP10079501 at
`
`12
`
`[Abstract]; [0001-0005]; [0010-0013];[0036-0038]; JP11354843 at [Abstract]; [Solution];
`
`13
`
`[0008];[0032]; ’798 Patent at 2:35-3:5; 5:5-21; ’241 Patent at Abstract; 1:61-28;3:43-45; 5:21-
`
`14
`
`26;7:27-34; ’535 Patent at Abstract; 1:11-34; 2:8-31; 2:64-3:5; ’232 Patent at 1:10-14; 2:40-52;
`
`15
`
`3:22-4:54; ’757 Patent at Abstract; 2:47-65; JP2000174337 at [Abstract]; [0008]; [0015]; [0018];
`
`16
`
`JPA_2000349333 at [0001]; [0003-0006]; [0038]; Kawasaki Reference at p.2243; Sumiya
`
`17
`
`Reference at p.1060-1061; p.1064; Tanaka Reference 1 at p.4096; p.4098; Tanaka Reference 2 at
`
`18
`
`Abstract; p.1299; JP2000223790 at [Abstract]; [0002-0004]; [0013-0014];[0030]; [0034]; Haino
`
`19
`
`Reference at p.449; ’161 Patent at 1:21-29; 3:42-51; ’184 Reference at Abstract; 1:7-10; 1:65-67;
`
`20
`
`2:8-19; ’628 Patent at Abstract; 1:5-10; 1:65-2:35; ’991 Patent at Abstract; 1:8-14; 2:44-3:55;
`
`21
`
`6:17-9:22; ’885 Patent at Abstract; 1:65-2:65; JPH10-215029 at [Abstract]; [0005-0008]; [0011-
`
`22
`
`0013]; [00016]; [0021]; [0024]; WO 00/30178 at 1:11-4:9; 4:11-10:11; EP0779666 at Abstract;
`
`23
`
`1:5-10; 1:13-31; 4:11-29; Smith Reference 1 at Abstract; p.2749; Smith Reference 2 at p.1; p.8;
`
`24
`
`p.25; Bottcher at Abstract; p.3232-3233; Chaly at Abstract; p.147; p.148. A person of ordinary
`
`25
`
`skill in the art would also have been motivated to combine these references by his education,
`
`26
`
`knowledge, and experience; by the state of the prior art as a whole as evidenced by the prior art
`
`27
`
`cited herein; by the nature of the problem to be solved (e.g., improving light emission from a GaN
`
`28
`
`based semiconductor device); by common sense; and by a goal of improving light emission from
`
` RAYVIO’S INVALIDITY CONTENTIONS
`
`10
`
`Case No. 5:17-cv-02952-EJD
`
`Ray Vio Corporation Exhibit 1028
`
`

`

`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`a device with GaN based materials. Moreover, one of skill in the art would have been well-
`
`equipped with sufficient, knowledge, and training to make the specific combinations identified
`
`above with a reasonable expectation of success because, as explained above, light emitting
`
`elements containing GaN based materials were well-known in the art, including those with
`
`“composition materials” and “lattice mismatch layers.”
`
`b.
`
`Obviousness combinations including JP11354843
`
`JP11354843 in combination with any one of the following references renders the Asserted
`
`Claims invalid as obvious: ’798 Patent; ’241 Patent; ’535 Patent; ’232 Patent; ’757 Patent;
`
`JP2000174337; JPA_2000349333; Kawasaki Reference; Sumiya Reference; Tanaka Reference 1;
`
`10
`
`Tanaka Reference 2; JP2000223790; Haino Reference; ’161 Patent; ’184 Patent; ’628 Patent;
`
`11
`
`’991 Patent; ’885 Patent; JPH10-215029; WO 00/30178; EP0779666; Smith Reference 1; Smith
`
`12
`
`Reference 2; Bottcher Reference, Chaly Reference. One of ordinary skill in the art would have
`
`13
`
`been motivated to combine the teachings of JP11354843 with each of the references identified
`
`14
`
`above to create the following combinations, which would render the Asserted Claims of the ’270
`
`15
`
`patent invalid for obviousness.
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`JP11354843 in view of ’798 patent
`
`JP11354843 in view of ’241 patent
`
`JP11354843 in view of ’535 patent
`
`JP11354843 in view of ’232 patent
`
`JP11354843 in view of ’757 patent
`
`JP11354843 in view of JP2000174337
`
`JP11354843 in view of JPA_2000349333
`
`JP11354843 in view of Kawasaki Reference
`
`JP11354843 in view of Sumiya Reference
`
`JP11354843 in view of Tanaka Reference 1
`
`JP11354843 in view of Tanaka Reference 2
`
`JP11354843 in view of JP2000223790
`
`JP11354843 in view of Haino Reference
`
` RAYVIO’S INVALIDITY CONTENTIONS
`
`11
`
`Case No. 5:17-cv-02952-EJD
`
`Ray Vio Corporation Exhibit 1028
`
`

`

`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`JP11354843 in view of ’161 patent
`
`JP11354843 in view of ’184 patent
`
`JP11354843 in view of ’628 patent
`
`JP11354843 in view of ’991 patent
`
`JP11354843 in view of ’885 patent
`
`JP11354843 in view of JPH10-215029
`
`JP11354843 in view of WO 00/30178
`
`JP11354843 in view of EP0779666
`
`JP11354843 in view of Smith Reference 1
`
`JP11354843 in view of Smith Reference 2
`
`JP11354843 in view of Bottcher Reference
`
`JP11354843 in view of Chaly Reference
`
`Further, one of ordinary skill in the art would have been motivated to combine the
`
`14
`
`teachings in any embodiment within JP11354843 with any other embodiment within the same
`
`15
`
`reference to render the Asserted Claims obvious.
`
`16
`
`JP11354843 in combination with any two of the following references: JP10079501; ’798
`
`17
`
`Patent; ’241 Patent; ’535 Patent; ’232 Patent; ’757 Patent; JP2000174337; JPA_2000349333;
`
`18
`
`Kawasaki Reference; Sumiya Reference; Tanaka Reference 1; Tanaka Reference 2;
`
`19
`
`JP2000223790; Haino Reference; ’161 Patent; ’184 Patent; ’628 Patent; ’991 Patent; ’885 Patent;
`
`20
`
`JPH10-215029; WO 00/30178; EP0779666; Smith Reference 1; Smith Reference 2; Bottcher
`
`21
`
`Reference, Chaly Reference. One of ordinary skill in the art would have been motivated to
`
`22
`
`combine the teachings of JP11354843 with the references identified above to render the Asserted
`
`23
`
`Claims obvious. Examples of such combinations that render the Asserted Claims invalid for
`
`24
`
`obviousness include the following:
`
`25
`
`26
`
`27
`
`28
`
`•
`
`•
`
`•
`
`•
`
`JP11354843 in view of Sumiya Reference and JPH10-215029
`
`JP11354843 in view of ’241 Patent and JPH10-215029
`
`JP11354843 in view of ’232 Patent and JPH10-215029
`
`JP11354843 in view of ’757 Patent and JPH10-215029
`
` RAYVIO’S INVALIDITY CONTENTIONS
`
`12
`
`Case No. 5:17-cv-02952-EJD
`
`Ray Vio Corporation Exhibit 1028
`
`

`

`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`JP11354843 in view of JP2000223790 and JPH10-215029
`
`JP11354843 in view of JPA_2000349333 and JPH10-215029
`
`JP11354843 in view of ’798 Patent and JPH10-215029
`
`JP11354843 in view of Tanaka Reference 2 and JPH10-215029
`
`JP11354843 in view of ’798 Patent and Sumiya Reference
`
`JP11354843 in view of ’798 Patent and ’241 Patent
`
`JP11354843 in view of ’798 Patent and JP2000223790
`
`JP11354843 in view of ’798 Patent and Tanaka Reference 2
`
`One of ordinary skill in the art would have been motivated to make each of the
`
`10
`
`aforementioned combinations for the following reasons. Each of the references above is directed
`
`11
`
`toward the same technological field (i.e., light emitting semiconductor elements containing
`
`12
`
`gallium nitride based semiconductor materials) and aim to solve the same problem of improving
`
`13
`
`light emission from a gallium nitride based semiconductor device. Like the ’270 Patent, each of
`
`14
`
`the references discloses a gallium nitride based semiconductor with multiple layers including a
`
`15
`
`light emitting element. See, e.g., ’270 Patent at 1:9-14; 1:46-59; JP10079501 at [Abstract];
`
`16
`
`[0001-0005]; [0010-0016]; JP11354843 at [Abstract]; [0007-0010]; ’798 Patent at 2:44-3:5; ’241
`
`17
`
`Patent at Abstract; 1:61-28; ’535 Patent at Abstract; 1:10-14; 3:22-4:54; ’232 Patent at 1:10-14;
`
`18
`
`2:40-52; 3:22-4:54; ’757 Patent at Abstract; 2:56-3:42; JP2000174337 at [Abstract]; [0007-0008];
`
`19
`
`JPA_2000349333 at [0001]; [0003-0006]; Kawasaki Reference at p.2243; Sumiya Reference at
`
`20
`
`p.1060-1061; Tanaka Reference 1 at p.4096; Tanaka Reference 2 at p.1299; JP2000223790 at
`
`21
`
`[Abstract]; [0002-0004]; Haino Reference at p.449; ’161 Patent at 1:21-29; 3:42-51; ’184 Patent
`
`22
`
`at Abstract; 1:7-10; 2:8-19; ’628 Patent at Abstract; 1:5-10; 1:65-2:35; ’991 Patent at Abstract;
`
`23
`
`1:8-14; 2:44-3:55; ’885 Patent at Abstract; 1:65-2:65;JPH10-215029 at [Abstract]; [0005-0008];
`
`24
`
`[00014]; WO 00/30178 at 1:11-4:9; 4:11-10:11;EP0779666 at Abstract; 1:5-10; 1:13-31; 4:11-29;
`
`25
`
`Smith Reference 1 at Abstract; p.2749; Smith Reference 2 at p.1; p.8; p.25; Bottcher at Abstract;
`
`26
`
`p.3232-3233; Chaly at Abstract; p.147; p.148.
`
`27
`
`The similarities in the structure, function, and purpose of the disclosed invention (e.g.,
`
`28
`
`creating a light emitting element that includes a substrate, gallium nitride based layers, and a
`
` RAYVIO’S INVALIDITY CONTENTIONS
`
`13
`
`Case No. 5:17-cv-02952-EJD
`
`Ray Vio Corporation Exhibit 1028
`
`

`

`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`“composition material” or “lattice mismatch layer”) would motivate a skilled artisan to combine
`
`the teachings of the JP11354843 with any of these other aforementioned references. These
`
`similarities also ensure that such a combination produces predictable results by simply adding or
`
`substituting known features from one reference describing light emitting semiconductor elements
`
`containing gallium nitride based semiconductor materials in