Paper No. 13
`Trials@uspto.gov
`571-272-7822 Entered: May 17, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`VIAVI SOLUTIONS INC.,
`Petitioner,
`
`v.
`
`
`
`
`MATERION CORPORATION,
`Patent Owner.
`_____________
`
`Case PGR2019-00017
`Patent 9,989,684 B2
`_____________
`
`
`Before BARBARA A. BENOIT, BART A. GERSTENBLITH, and
`NATHAN A. ENGELS, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: May 17, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`VIAVI SOLUTIONS INC.,
`Petitioner,
`
`v.
`
`
`
`
`MATERION CORPORATION,
`Patent Owner.
`_____________
`
`Case PGR2019-00017
`Patent 9,989,684 B2
`_____________
`
`
`Before BARBARA A. BENOIT, BART A. GERSTENBLITH, and
`NATHAN A. ENGELS, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324
`
`
`
`
`
`PGR2019-00017
`Patent 9,989,684 B2
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`
`I.
`
`INTRODUCTION
`
`Background
`A.
`VIAVI Solutions Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting institution of a post-grant review of claims 1–16 of
`U.S. Patent No. 9,989,684 B2 (Ex. 1001, “the ’684 patent”). Materion
`Corporation (“Patent Owner”) filed a Preliminary Response (Paper 9,
`“Prelim. Resp.”). On the same day Patent Owner filed its Preliminary
`Response, Patent Owner filed a statutory disclaimer of claims 12–14 and 16
`under 37 C.F.R. § 1.321(a). Ex. 2023. Accordingly, the claims remaining in
`the ’684 patent—claims 1–11 and 15—are the subject of Petitioner’s
`challenge in this proceeding. See 37 C.F.R. § 42.207(e) (“No post-grant
`review will be instituted based on disclaimed claims.”); cf. SAS Inst., Inc. v.
`Iancu, 138 S. Ct. 1348, 1357 (2018) (“[T]he claims challenged ‘in the
`petition’ will not always survive to the end of the case; some may drop out
`thanks to the patent owner’s actions.”).
`We review the Petition under 35 U.S.C. § 324(a), which provides that
`a post-grant review may not be instituted unless “it is more likely than not
`that at least 1 of the claims challenged in the petition is unpatentable.”
`35 U.S.C. § 324(a). Upon consideration of the present record and for the
`reasons explained below, we determine Petitioner has not satisfied its burden
`under § 324. Thus, we do not institute a post-grant review.
`
`Related Proceedings
`B.
`The parties indicate there are no related matters involving the
`’684 patent. Pet. 3; Paper 12, 1.
`
`
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`2
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`Real Parties in Interest
`C.
`Petitioner identifies VIAVI Solutions Inc. as the sole real party in
`interest. Pet. 2. Patent Owner identifies Materion Corportion as the sole
`real party in interest. Paper 12, 1.
`
`The ’684 Patent
`D.
`The ’684 patent is directed to “near infrared optical interference filters
`with improved transmission.” Ex. 1001, Title. The ’684 patent explains that
`known transmission interference filters employ a stack of alternating silicon
`and silicon dioxide (SiO2) layers. Id. at 1:19–20. “To extend device
`operation into the near infrared, it is further known to hydrogenate the
`silicon, so as to employ alternating layers of hydrogenated amorphous
`silicon (a-Si:H) and SiO2.” Id. at 1:40–43. The ’684 patent provides:
`an interference filter comprising a stack of a plurality of layers
`of at least one layer of amorphous hydrogenated silicon and at
`least one layer of one or more dielectric materials having a
`refractive index lower than the refractive index of the amorphous
`hydrogenated silicon wherein the layers of one or more dielectric
`materials include layers of a dielectric material having a
`refractive index in the range 1.9 to 2.7 inclusive.
`Id. at 1:51–58. The ’684 patent explains that the layers of amorphous
`hydrogenated silicon may include nitrogen (a-Si:H,N). See, e.g., id. at 1:59–
`62, 4:18–21, 4:36–39. The ’684 patent discloses various ranges for the
`passband center wavelength of several interference filters from 750 nm to
`1250 nm. See, e.g., id. at 1:64–66 (“750 to 1000 nm”), 3:5 (“800-
`1250 nm”).
`
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`Figure 4 of the ’684 patent is reproduced below:
`
`
`Figure 4 of the ’684 patent “diagrammatically shows an interference filter
`suitably manufactured using the sputter deposition system.” Id. at 2:26–28.
`Interference filter 100 includes substrate 102 and “alternating layers of
`a-Si:H,N 104 and SiO2 106 and/or Si3N4 108.” Id. at 7:7–12. “[F]ilter 100
`includes layer stacks 110, 112 on opposite sides of the substrate 102 . . . .”
`Id. at 7:21–22.
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`4
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`
`Illustrative Claim
`E.
`After Patent Owner’s disclaimer, claim 1 is the sole independent
`claim remaining in the ’684 patent and challenged in this proceeding.
`Claim 1 is representative of the claimed subject matter and reproduced
`below:
`1.
`
`An optical filter comprising:
`a transparent substrate;
`an interference filter comprising a layers stack comprising
`a plurality of layers of at least:
`layers of amorphous hydrogenated silicon; and
`layers of one or more dielectric materials having a
`refractive index lower than the refractive index of the amorphous
`hydrogenated silicon wherein the layers of one or more dielectric
`materials include layers of a dielectric material having a
`refractive index in the range 1.9 to 2.7 inclusive;
`the layers stack including repeating units of two or more
`layers configured to have a passband with properties defined by
`the repeating units including at least a passband center
`wavelength,
`wherein the layers stack includes a first layers stack on one
`side of transparent substrate and a second layers stack on the
`opposite side of the transparent substrate.
`Ex. 1001, 8:47–64.
`
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`5
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`Patent 9,989,684 B2
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`
`The Asserted Grounds of Unpatentability
`F.
`Petitioner challenges the claims of the ’684 patent on the following
`grounds:
`Reference(s)
`
`
`Hendrix2
`Hendrix and Tang3
`Hendrix and Wang4
`
`Basis
`§ 112(a) (Written
`Description)
`§ 112(a) (Enablement)
`§ 102(a)(1)
`§ 103(a)
`§ 103(a)
`
`Claim(s) Challenged1
`5 and 15
`5 and 15
`1–6 and 8–11
`7
`15
`
`Petitioner supports its challenge with a declaration by Richard A.
`Flasck, dated November 11, 2018 (Ex. 1005), and a declaration by Nicholas
`Panno, dated November 7, 2018 (Ex. 1016).
`
`ELIGIBILITY OF PATENT FOR POST-GRANT REVIEW
`II.
`The post-grant review provisions of section six of the Leahy-Smith
`America Invents Act (“AIA”), Pub L. No. 112-29, 125 Stat. 284 (2011),
`apply only to patents subject to the first inventor to file provisions of the
`AIA. AIA § 6(f)(2)(A). Specifically, the first inventor to file provisions
`
`
`1 As discussed above, the Petition includes additional challenges to
`claims 12–14 and 16, which have now been disclaimed by Patent Owner.
`Ex. 2023.
`2 U.S. Patent Application Publication No. US 2014/0014838 A1, published
`January 16, 2014 (Ex. 1006, “Hendrix”).
`3 English-language translation of Chinese Patent No. 203786316 U, issued
`August 20, 2014 (Ex. 1007, “Tang”).
`4 English-language translation of Chinese Patent No. 203849441 U, issued
`September 24, 2014 (Ex. 1008, “Wang”).
`
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`6
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`apply to any application for patent, and to any patent issuing thereon, that
`contains or contained at any time a claim to a claimed invention that has an
`effective filing date on or after March 16, 2013. AIA § 3(n)(1).
`Furthermore, “[a] petition for a post-grant review may only be filed not later
`than the date that is 9 months after the date of the grant of the patent or of
`the issuance of a reissue patent (as the case may be).” 35 U.S.C. § 321(c);
`see also 37 C.F.R. § 42.202(a) (setting forth the same).
`The ’684 patent issued on June 5, 2018. Ex. 1001, [45]. The Petition
`was filed on November 12, 2018. Paper 3, 1. Therefore, the Petition was
`filed within nine months of the ’684 patent issuance.
`Additionally, the earliest effective filing date for the ’684 patent is
`January 23, 2015. Ex. 1001, [60], 1:8–9; see Pet. 4–5 (asserting the same).
`Therefore, the ’684 patent is subject to the first inventor to file provisions of
`the AIA.
`Petitioner certifies that the ’684 patent “is available for post-grant
`review and that Petitioner is not barred or estopped from requesting a
`post-grant review challenging the patent claims on the grounds identified in
`the petition.” Pet. 4. Petitioner further states that it has not filed a civil
`action challenging the validity of any claim of the ’684 patent. Patent
`Owner’s Preliminary Response does not challenge Petitioner’s contentions
`as to the eligibility of the ’684 patent for post-grant review.
`On this record, we agree with Petitioner that the ’684 patent is eligible
`for post-grant review.
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`Petitioner asserts the level of skill in the art is apparent from the cited
`art. Pet. 12 (citing In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)).
`
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`Petitioner contends one of ordinary skill in the art would have at least either
`“(1) a master of science degree in physics, optical engineering, or a related
`field with a focus in optics, or (2) a bachelor of science degree in physics,
`optical engineering, or a related field with at least three years of industry
`experience in optical interference filter design.” Id. at 12–13 (citing
`Ex. 1005 ¶ 70). Patent Owner contends a person of ordinary skill in the art
`of optical filters “would typically have at least a bachelor of science degree
`in optics, optical physics, or a related field, and have at least five years of
`industry experience in designing and manufacturing optical interference
`(thin film) filters.” Prelim. Resp. 16 (citing Ex. 1005 ¶ 70).5
`As reflected above, the parties’ positions as to the level of ordinary
`skill in the art are similar. At this stage of the proceeding, we need not make
`an express determination as to the level of ordinary skill beyond finding that
`it is reflected by the prior art of record because we reach the same decision
`herein regardless of whether we apply Petitioner’s or Patent Owner’s
`proposed level of skill. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
`(Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In
`re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`
`IV. CLAIM CONSTRUCTION
`In a post-grant review based on a petition filed prior to November 13,
`2018, claim terms in an unexpired patent are construed according to their
`broadest reasonable interpretation in light of the specification of the patent in
`
`
`5 Patent Owner cites Mr. Flasck’s testimony in support, but Mr. Flasck’s
`testimony most directly supports Petitioner’s position. See Ex. 1005 ¶ 70.
`
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`which they appear. See 37 C.F.R. § 42.200(b) (2018);6 cf. Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). There is a
`presumption that claim terms are given their ordinary and customary
`meaning, as would be understood by a person of ordinary skill in the art in
`the context of the specification. See In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007). Nonetheless, “an inventor is indeed free to
`define the specific terms used to describe his or her invention . . . with
`reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994). Another exception to the general rule that
`claims are given their ordinary and customary meaning is “when the
`patentee disavows the full scope of a claim term either in the specification or
`during prosecution.” Uship Intellectual Props., LLC v. United States, 714
`F.3d 1311, 1313 (Fed. Cir. 2013) (quoting Thorner v. Sony Computer Entm’t
`Am., LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Additionally, only terms
`that are in controversy need to be construed, and these need be construed
`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); see also
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
`1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes
`review).
`
`
`6 A recent amendment to this rule does not apply here because the Petition
`was filed before November 13, 2018. See Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
`(amending 37 C.F.R. § 42.100(b) effective Nov. 13, 2018) (to be codified at
`37 C.F.R. pt. 42).
`
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`
`Petitioner proposes constructions for three claim terms—“layers of
`amorphous hydrogenated silicon,” “wherein the layers stack includes a first
`layers stack on one side of transparent substrate and a second layers stack on
`the opposite side of the transparent substrate,” and “passband wavelength
`range of 750-1100nm inclusive.” Pet. 14–19. Patent Owner proposes
`constructions for the same terms. Prelim. Resp. 17–28. We address each
`term to the extent necessary to resolve the controversies between the parties.
`See Nidec Motor, 868 F.3d at 1017.
`
`“layers of amorphous hydrogenated silicon”
`A.
`Petitioner proposes that the meaning of “layers of amorphous
`hydrogenated silicon” is “clear on its face.” Pet. 14. Petitioner raises the
`issue of construing this term solely based on a concern that Patent Owner
`will seek to construe this term as including nitrogen or an additive of
`nitrogen. Id. Petitioner contends one of ordinary skill in the art would not
`have understood that this recitation “require[s] nitrogen or an additive of
`nitrogen.” Id. Rather, Petitioner proposes “layers of amorphous
`hydrogenated silicon” should be construed to mean “layers of amorphous
`hydrogenated silicon” “without requiring the addition of nitrogen or an
`additive of nitrogen.” Id. at 15 (citing Ex. 1005 ¶ 81).
`Patent Owner contends “layers of amorphous hydrogenated silicon”
`means “layers of a-Si:H, optionally a-Si:H,N.” Prelim. Resp. 17. Patent
`Owner explains that its interpretation covers amorphous hydrogenated
`silicon “‘with added nitrogen’ as well as . . . ‘without added nitrogen.’” Id.
`at 18. Patent Owner asserts the ’684 patent specification refers to “various
`a-Si:H,N compositions as ‘amorphous hydrogenated silicon,’” and,
`therefore, the broadest reasonable interpretation consistent with the
`
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`specification is “layers of a-Si:H, optionally a-Si:H,N.” Id. at 18–19 (citing
`Ex. 1001, Abstract, 2:23–25, Fig. 3).
`Claim 1 recites, inter alia, “layers of amorphous hydrogenated
`silicon.” Ex. 1001, 8:51. The ’684 patent specification uses “a-Si:H” to
`refer to “hydrogenated amorphous silicon” (see, e.g., id. at 1:42–43
`(“hydrogenated amorphous silicon (a-Si:H)”)) and uses “a-Si:H,N” to refer
`to “amorphous hydrogenated silicon with added nitrogen” (see id. at
`Abstract (“amorphous hydrogenated silicon with added nitrogen (a-
`Si:H,N)”); see also id. at 3:31 (referring to “a-Si:H,N”); id. at 4:20 (“a-
`Si:H,N”)). The ’684 patent discusses the effects of adding nitrogen to layers
`of amorphous hydrogenated silicon in interference filters (see, e.g., id. at
`3:27–52, 7:7–54). In each instance where the ’684 patent discusses
`amorphous hydrogenated silicon with nitrogen or a nitrogen additive
`included, the ’684 patent expressly calls out nitrogen separately from the
`term “amorphous hydrogenated silicon.” See, e.g., id. at Abstract (“layers of
`amorphous hydrogenated silicon with added nitrogen (a-Si:H,N)”), 1:60–62
`(“layers of amorphous hydrogenated silicon with optimally added nitrogen
`(a Si:H,N)”), 2:23–25 (“FIG. 3 diagrammatically shows the impact of
`nitrogen additive on the optical properties (transmission and refractive
`index) of a-Si:H of fixed hydrogenation level.”), 4:19–21 (“the high
`refractive index layers are a-Si:H (which could be replaced by a-Si:H,N as
`disclosed herein)”), 4:36 (“[t]he high index a-Si:H or a-Si:H,N layer”).
`Neither party contends that the prosecution history sheds further light on the
`meaning of this term.
`As reflected above, neither party’s proposal requires the presence of
`nitrogen. Additionally, Patent Owner proposes that nitrogen is optional.
`
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`The parties’ proposed constructions of “amorphous hydrogenated silicon”
`are, therefore, consistent. Thus, we construe “amorphous hydrogenated
`silicon” as meaning just that, amorphous hydrogenated silicon.7
`
`B.
`
`“wherein the layers stack includes a first layers stack on one
`side of transparent substrate and a second layers stack on the
`opposite side of the transparent substrate”
`Petitioner proposes that this phrase means “the layers stack includes a
`first layers stack on one side of transparent substrate and a second layers
`stack on the opposite side of the transparent substrate, the first and second
`layers stacks each comprising at least one layer of dielectric material.”
`Pet. 17–18. As reflected above, Petitioner’s construction repeats the claim
`language with the additional requirement that each layers stack includes at
`least one layer of dielectric material. Petitioner contends Patent Owner
`disclaimed a broader meaning of the above phrase during prosecution when
`the applicant argued that certain prior art failed to suggest first and second
`layers stacks of dielectric materials on opposite sides of a substrate. Id. at
`15–16. Petitioner thus asserts “based on a reading of claim 1 and file history
`of the ’684 Patent, a [person of ordinary skill in the art] would have
`understood that each of the first and second layers stacks comprises at least
`one layer of dielectric material.” Id. at 16 (citing Ex. 1005 ¶¶ 83–86).
`Petitioner further contends “[n]o other condition should be imported
`into the above construction.” Id. (citing Ex. 1005 ¶ 86). Petitioner asserts
`
`
`7 We recognize that claim 1 recites the open-ended transition “comprising”
`following the preamble and also following its recitation of the “interference
`filter” and “layers stack.” Thus, on this record, we agree with Patent Owner
`that the addition of nitrogen to the recited “amorphous hydrogenated silicon”
`layers does not remove the layers from the scope of the claim.
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`other limitations from claim 1 directed to the “layers stack comprising a
`plurality of layers of at least” are not applicable to the first and second layers
`stack because the first and second layers stack “are merely included as part
`of the ‘layers stack comprising a plurality of layers of at least.’” Id.
`Additionally, Petitioner contends the applicant “did not distinguish the prior
`art on the basis that it did not disclose amorphous hydrogenated silicon on
`each side of the substrate or some other requirement of the layers stack;
`rather, the applicant limited its arguments to requiring dielectric materials on
`both sides of the substrate.” Id. at 16–17. Thus, Petitioner asserts “the
`disclaimer only requires the presence of dielectric materials on both sides of
`the substrate.” Id. at 17.
`Patent Owner contends “layers stack” is defined in claim 1 as
`containing “a plurality of layers of at least: layers of amorphous
`hydrogenated silicon” and “layers of one or more dielectric materials.”
`Prelim. Resp. 19. Patent Owner asserts that the later recitation of “first” and
`“second” “layers stacks” “should be interpreted to designate that there are
`two instances of the previously defined ‘layers stack.’” Id. at 20. Thus,
`Patent Owner proposes claim 1 “incorporates the elements of the underlying
`‘layers stack,’ specifically the ‘layers of amorphous hydrogenated silicon’
`and the ‘layers of one or more dielectric materials,’ into each of the later
`recited ‘first layers stack’ and ‘second layers stack’ on opposite sides of the
`transparent substrate.” Id.
`Patent Owner argues the intrinsic evidence supports its construction as
`neither the specification nor prosecution history provide different definitions
`for the term “layers stacks.” Id. at 22. First, Patent Owner points to the use
`of the article “a” when layers stack is recited initially. Id. at 23 (referring to
`
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`the claim language “an interference filter comprising a layers stack
`comprising” (emphasis added)). Patent Owner asserts “a” means “one or
`more” such that “a layers stack” means “one or more layers stacks.” Id.
`Second, Patent Owner points to the ’684 patent specification, “which
`consistently describes multiple ‘layers stacks’ as including layers of
`(a) a-Si:H and (b) one or more dielectric materials.” Id. (citing, e.g.,
`Ex. 1001, 7:21–33, Fig. 4). Additionally, Patent Owner explains that each
`description and figure of the layers stack indicates layers of each of these
`materials. Id. at 23–24 (citing, e.g., id. at 4:36–39, 7:7–33, 7:21–33, Fig. 4).
`Third, Patent Owner contests Petitioner’s disclaimer argument. Patent
`Owner asserts that the applicant did not argue that the layers stack
`exclusively includes dielectric materials. Id. at 24. Rather, the critical
`feature distinguished was the applied prior art’s lack of a layers stack on
`opposite sides of the substrate containing dielectric materials. Id.
`Accordingly, Patent Owner contends “first layers stack” and “second layers
`stack” should be construed to each require “layers of (1) a-Si:H [or
`optionally a-Si:H,N] and (2) one or more dielectric materials.” Id. at 25.
`We begin with the language of claim 1. Claim 1 recites, inter alia,
`an interference filter comprising a layers stack comprising a
`plurality of layers of at least: layers of amorphous hydrogenated
`silicon; and layers of one or more dielectric materials . . . the
`layers stack including repeating units of two or more layers
`configured to have a passband . . ., wherein the layers stack
`includes a first layers stack on one side of transparent substrate
`and a second layers stack on the opposite side of the transparent
`substrate.
`Ex. 1001, 8:49–64. As reflected in the claim language, the first recitation of
`“layers stack” includes a plurality of layers of at least two types of materials:
`
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`amorphous hydrogenated silicon and dielectric materials. That requirement
`is not disputed by either party. The disagreement focuses on the second and
`third recitation of “layers stack.” Petitioner’s position, explained in detail
`above, requires only that those latter recitations of “layers stack” include
`dielectric materials based on the theory of prosecution history disclaimer.
`Patent Owner’s position, also explained in detail above, requires that the
`latter recitations of “layers stack” include at least layers of amorphous
`hydrogenated silicon and dielectric materials.
`First, we understand Petitioner to argue that the latter recitations of
`“layers stack” do not expressly recite the same “plurality of layers”
`limitation, therefore opening the possibility that the “first layers stack” and
`“second layers stack” are part of the initially recited “layers stack,” but
`without being limited by the “plurality of layers” clause. In other words,
`such reading of the claim results in the initial recitation of “layers stack”
`including, at least, (1) a plurality of layers (along with the recited
`requirements for the plurality of layers), (2) a first layers stack, and (3) a
`second layers stack. That reading of claim 1 separates the first and second
`layers stack from the required layers of amorphous hydrogenated silicon and
`layers of dielectric materials by pinning those requirements to the “plurality
`of layers” recitation as opposed to the term “layers stack.”
`Second, Patent Owner’s position is that the claim expressly states
`what is required of a “layers stack,” and by the use of “first” and “second,”
`the claim indicates that the initially recited layers stack (and all the
`requirements thereof, including the plurality of layers) are repeated in each
`of the “first layers stack” and “second layers stack.” Patent Owner’s
`position draws support from the express language of the claim and the
`
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`’684 patent specification, examples of which are reproduced above, which
`consistently refers to the term “layers stack” as including at least layers of
`a-Si:H or a-Si:H,N and one or more dielectric materials.
`One difficulty we have with Petitioner’s position is that it results in
`different interpretations of the same term “layers stack,” an uncommon
`circumstance that requires evidence from the specification and/or
`prosecution history that the terms have different meanings. Fin. Control
`Sys. Pty, Ltd. v. OAM, Inc., 265 F.3d 1311, 1318 (Fed. Cir. 2001) (citing
`Phonometrics, Inc. v. N. Telecom, Inc., 133 F.3d 1459, 1465 (Fed. Cir.
`1998)); see also In re Varma, 816 F.3d 1352, 1363 (Fed. Cir. 2016) (noting
`the same). Here, there is no indication in the intrinsic record that the
`meaning of “layers stack” could include layers without a-Si:H or a form
`thereof. As explained by Patent Owner, each instance of “layers stack” or
`variation thereof (e.g., “layer stacks,” or even just “layers”), describing an
`interference filter, includes a-Si:H or a form thereof. The applicant’s
`argument during prosecution is best explained as reflecting this same
`meaning. In particular, the applicant argued that the prior art lacked a
`dielectric material on opposite sides of the substrate, but that does not mean
`the applicant disclaimed something that was included in the claim. Rather,
`we find the better understanding of the applicant’s argument is that the
`applicant appreciated the term “layers stack” included the recited layers of
`amorphous hydrogenated silicon and layers of one or more dielectric
`materials on opposite sides of the substrate and chose one of them—the
`dielectric materials—to argue in response to the Examiner’s rejection. That
`does not necessarily invoke disclaimer; rather, we find it was simply a
`matter of the applicant arguing a portion of the meaning of “layers stack” as
`
`
`
`16
`
`
`
`PGR2019-00017
`Patent 9,989,684 B2
`
`(a) recited in the claim and (b) confirmed by the specification. In other
`words, it is evidence that the applicant understood “layers stack,” recited as
`“first layers stack” and “second layers stack,” to require at least dielectric
`materials on opposite sides of the substrate, and the reason applicant
`understood as much is because those layers are expressly required by the
`claim. Additionally, an applicant is not required to raise multiple arguments
`in response to a rejection when one argument suffices. Thus, it is not correct
`to conclude that the meaning of “layers stack” does not include a-Si:H
`simply because the applicant did not argue that the applied prior art lacks
`a-Si:H.
`Further, Petitioner fails to provide any support for interpreting “layers
`stack” as not requiring layers of amorphous hydrogenated silicon. Petitioner
`points to the claim language (Pet. 16), which we have addressed above, but
`does not rely upon the specification to support its strained construction.
`Simply put, to construe the same term differently in the same claim requires
`more. And, based on the record before us, Petitioner has not shown there is
`more. Thus, on this record, Petitioner’s construction is broader than what is
`reasonably supported by the intrinsic evidence, including the specification.
`Accordingly, we are not persuaded by Petitioner that, under the broadest
`reasonable interpretation in light of the specification of the patent, the first
`and second layers stacks each require only one of the two enumerated types
`of layers, as Petitioner proposes. See 37 C.F.R. § 42.200(b). On this record
`and for purposes of determining whether to institute a post-grant review, we
`construe each instance of “layers stack” in claim 1 as requiring “a plurality
`
`
`
`17
`
`
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`PGR2019-00017
`Patent 9,989,684 B2
`
`of layers of at least: layers of amorphous hydrogenated silicon and layers of
`one or more dielectric materials.”8
`
`“passband wavelength range of 750-1100 nm inclusive”
`C.
`Claim 5 recites “[t]he optical filter of claim 1 wherein the layers stack
`is configured to have the passband wavelength range of 750-1100 nm
`inclusive.” Ex. 1001, 9:8–10. Petitioner contends the phrase means “only
`light within wavelength range of 750-1100nm inclusive is allowed to
`transmit through the filter without attenuation.” Pet. 19 (citing Ex. 1005
`¶ 101).
`Patent Owner asserts that the phrase means that light within the
`passband range of 750-1100 nm transmits through the device without
`attenuation, but that light outside of the recited passband range may transmit
`through the device with attenuation. See Prelim. Resp. 26. Patent Owner
`contends Petitioner seeks to construe the phrase as imposing an exclusion on
`any light outside of the range passing through the device even with
`attenuation. Id. Patent Owner identifies this concern from Petitioner’s
`arguments in the first ground challenging the patent claims, as opposed to
`Petitioner’s express construction. See, e.g., id. at 25 (citing Pet. 22–23), 26
`(same), 27 (same).
`
`8 We recognize that claim 1 recites the open-ended transition “comprising”
`following the preamble and also following its recitation of the “interference
`filter” and “layers stack.” Thus, on this record, we agree with Patent Owner
`that the addition of nitrogen to the recited “amorphous hydrogenated silicon”
`layers does not remove the layers from the scope of the claim.
`8 Claim 1 recites additional requirements of the “layers stack,” but for the
`purposes of this Decision and to resolve the present controversy between the
`parties, we need only determine that “layers stack” requires at least these
`two limitations. See infra Sections V.A–D.
`
`
`
`18
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`PGR2019-00017
`Patent 9,989,684 B2
`
`
`Putting aside the parties’ potential disagreement as to Petitioner’s
`challenges to the claims, we do not see a difference between the parties’
`express constructions of this phrase.9 The parties point to the applicant’s
`statement during prosecution that “a passband from the range of 750-
`1100 nm. . . . means that only light within this range is allowed to transmit
`through the device without attenuation.” Ex. 1002, 283. We agree that the
`applicant provided an explicit definition of the phrase and we adopt that
`meaning, which, as noted above, we understand both parties propose as the
`construction of the term. Therefore, “the passband wavelength range of
`750-1100 nm” means “only light within the range of 750-1100 nm inclusive
`is allowed to transmit through the device without attenuation.”10
`
`
`9 In the context of Petitioner’s written description challenge, Petitioner
`construes this phrase more narrowly than the meaning Petitioner proposes
`here. See infra Section V.A.
`10 We agree with Patent Owner that this construction means light outside the
`range of 750-1100 nm may not pass through the device without attenuation.
`But, the definition provided by the applicant does not indicate whether light
`outside this range transmits through the device with attenuation or whether
`no such light is allowed to transmit through. Given the parties’ agreement
`that some transmission of light outside a given bandpass wavelength range
`ordinarily occurs during use of an interference filter (see, e.g., Ex. 1005
`¶ 138 (Mr. Flasck’s opinion as to what passband wavelength range
`ordinarily means); see also Pet. 23; Prelim. Resp. 27), one of ordinary skill
`in the art would have been more likely to understand the applicant’s
`statement as not excluding all light outside the range. Rather, one of
`ordinary skill in the art would have understood that transmission of some
`light outside of the recited range could occur, but with attenuation.
`
`
`
`19
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`PGR2019-00017
`Patent 9,989,684 B2
`
`
`V. ANALYSIS
`A. Written Description
`The written-description inquiry is a question of fact, is context-
`specific, and must be determined on a case-by-case basis. Ariad Pharm.,
`Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The
`test for sufficiency of support is whether the disclosure of the application
`relied upon “reasonably conveys to the artisan that the inventor had
`possession at th
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