Gunapala et al.v.Scott et al.

Patent Trial and Appeal Board

Sep 30, 2014

12249749 (P.T.A.B. Sep. 30, 2014)

BoxInterferences@uspto.gov
Tel: 571-272-4683 Entered: September 30, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

CALIFORNIA INSTITUTE OF TECHNOLOGY
Junior Party
(US 7,737,411 B2)
(Inventors: Sarath D. Gunapala, David Z. Ting, Cory J. Hill, and
Sumith V. Bandara)

v.

LOCKHEED MARTIN CORPORATION
Senior Party
(Application No. 13/344,499)
(Inventors: Jeffrey W. Scott, Colin E. Jones, Ernie J. Caine, and
Charles A. Cockrum)
________________

Patent Interference 105,960 (HHB)
(Technology Center 2800)
________________

Before RICHARD E. SCHAFER, JOHN G. NEW, and HUNG H. BUI,
Administrative Patent Judges.

BUI, Administrative Patent Judge.

JUDGMENT – 37 C.F.R. § 41.127(a)
Interference No. 105,960
Caltech v. Lockheed Martin

2

A decision of the Board on motions has been issued holding: (1) Lockheed
Claims 45-47, 49, and 54-55 of Lockheed’s involved application (Lockheed ‘499
application) are unpatentable under 35 U.S.C. § 103 over prior art; and (2) Caltech
Claims 1-6 of Caltech ‘411 patent are considered unpatentable over the same prior
art by operation of the presumption of 37 C.F.R. § 41.207(c). Caltech remaining 5
Claims 7-12 of Caltech ‘411 patent and Lockheed remaining Claims 26-29, 36, 37,
39, 43-44, and 53 of Lockheed ‘499 application are fundamentally different, and
patentably distinct. The claims of Lockheed ‘499 application are directed to
detector devices where grading is performed specifically at “interfaces” between
layers in order to facilitate minority carrier transport (holes) while continuing to 10
prevent majority carrier transport (electrons) across the barrier, while remaining
claims of Caltech ‘411 patent are directed to detector devices where the absorption
layer is comprised of a chirped strain layer supper lattice. Because of these
significant differences, neither set of claims renders the other obvious. Thus, these
claim sets do not meet the two-way test, and there is no interference-in-fact 15
between remaining claims of Caltech ‘411 patent and Lockheed ‘499 application.
See 37 C.F.R. §41.203(a). Because there currently is no basis for formulating a
count representing the common patentable subject matter of the parties, it is
appropriate to terminate the interference at this point and enter judgment.
For the reasons discussed above, it is: 20
ORDERED that Junior Party, Caltech Claims 1-6 of Caltech ‘411 patent
(corresponding to the Count) will be cancelled pursuant to 35 USC §135(a);
FURTHER ORDERED that Senior Party, Lockheed Claims 45-47, 49, and
54-55 of Lockheed ‘499 application (corresponding to the Count) are finally
refused pursuant to 35 USC §135(a); 25
Interference No. 105,960
Caltech v. Lockheed Martin

3

FURTHER ORDERED that a copy of this judgment be made of record in
the files of Caltech’s involved patent, U.S. Patent No. 7,737,411 and Lockheed’s
involved application, U.S. Patent Application No. 13/344,499; and
FURTHER ORDERED that if there is any settlement agreement or related
documents which have not been filed, attention is directed to 35 U.S.C. §135(c) 5
and 37 C.F.R. §41.205.

/Richard E. Schafer/ ) 10
RICHARD E. SCHAFER )
Administrative Patent Judge )
)
/John G. New/ ) PATENT TRIAL AND
JOHN G. NEW ) APPEAL BOARD 15
Administrative Patent Judge )
)
/Hung H. Bui/ )
HUNG H. BUI )
Administrative Patent Judge ) 20

Interference No. 105,960
Caltech v. Lockheed Martin

4

cc (via email delivery):

Attorney for Junior Party – Caltech:
Joel A. Kauth, Esq.
John W. Peck, Esq. 5
KPPB LLP
2400 E. Katella Ave., Suite 1050
Anaheim, CA 92806
Email: Joel.Kauth@kppb.com
Email: John.Peck@kppb.com 10

Attorney for Senior Party – Lockheed Martin:
Michael K. Mutter, Esq.
Naphtali Y. Matlis, Esq.
Birch, Stewart, Kolasch & Birch, LLP 15
8110 Gatehouse Road, Suite 100 East
Falls Church VA 22042
Email: mailroom@bskb.com

BoxInterferences@uspto.gov
Tel: 571-272-4683 Entered: September 30, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

CALIFORNIA INSTITUTE OF TECHNOLOGY
Junior Party
(US 7,737,411 B2)
(Inventors: Sarath D. Gunapala, David Z. Ting, Cory J. Hill, and
Sumith V. Bandara)

v.

LOCKHEED MARTIN CORPORATION
Senior Party
(Application No. 13/344,499)
(Inventors: Jeffrey W. Scott, Colin E. Jones, Ernie J. Caine, and
Charles A. Cockrum)
________________

Patent Interference 105,960 (HHB)
(Technology Center 2800)
________________

Before RICHARD E. SCHAFER, JOHN G. NEW, and HUNG H. BUI,
Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON MOTIONS – 37 C.F.R. § 41.125(a)
I. INTRODUCTION
Pending before us are the following substantive motions:
Interference No. 105,960
Caltech v. Lockheed Martin

2

(1) Caltech Motion 2 (Paper 21) seeks to attack benefit for the purpose of
priority accorded to Lockheed in Declaration-Bd.R 203(d) (Paper 1, pg. 4).
 Lockheed Opposition 2 (Paper 42)
 Caltech Reply 2 (Paper 47)
5
(2) Caltech Motion 3 (Paper 22) seeks entry of judgment against only
Claims 45-47 of Lockheed’s involved application 13/344,499 based on alleged
lack of written description and enablement under 35 U.S.C. § 112, first paragraph.
 Lockheed Opposition 3 (Paper 43)
 Caltech Reply 3 (Paper 50) 10

(3) Caltech Motion 4 (Paper 23) seeks entry of judgment against Claims
26-29, 36, 37, 43-47, 49, and 53-55 of Lockheed’s involved application 13/344,499
based on an alleged lack of patentability under 35 U.S.C. § 103.
 Lockheed Opposition 4 (Paper 44) 15
 Caltech Reply 4 (Paper 51)

(4) Caltech Motion 5 (Paper 24), which is contingent on the grant of
Caltech Motion 3 (Paper 22) for inadequate written description and lack of
enablement under 35 U.S.C. § 112, ¶ 1, seeks entry of judgment of no interference-20
in-fact as to Claims 26- 29, 36, 37, 39, 43-44, 49, and 53-55 of Lockheed’s
involved application 13/344,499.
 Lockheed Opposition 5 (Paper 45)
 Caltech Reply 5 (Paper 52)
25
(5) Lockheed Motion 1 (Paper 26) seeks to redefine the interference by
designating Claims 29, 44, and 53 of Lockheed’s involved application 13/344,499
as not corresponding to the Count.
 Caltech Opposition (Paper 38)
 Lockheed Reply (Paper 48) 30

Interference No. 105,960
Caltech v. Lockheed Martin

3

After a review of all motions, oppositions and replies, we enter decisions on
the following: (1) Caltech Motion 2 (Paper 21) for lack of benefit for the purpose
of priority accorded to Lockheed; (2) Caltech Motion 3 (Paper 22) for inadequate
written description and lack of enablement under 35 U.S.C. § 112, first paragraph; 5
and (3) Caltech Motion 4 (Paper 23) for lack of patentability under 35 U.S.C. §
103(a) in order to secure the just, speedy, and inexpensive determination of this
interference proceeding. 37 C.F.R. § 41.125(a). We do not reach Caltech
contingent Motion 5 because the contingent event did not happen. We also do not
reach Lockheed Motion 1 because our other decisions result in termination of this 10
interference making it unnecessary to decide whether or not certain of Lockheed’s
claims correspond to the Count.
For the reasons discussed below, Caltech Motion 2 (Paper 21) for lack of
benefit is GRANTED relative to Lockheed’s first provisional application No.
60/865,793 filed on November 14, 2006, and is otherwise DENIED relative to 15
Lockheed’s second provisional application No. 60/880,580 filed on January 12,
2007.
With respect to Caltech Motion 3 (Paper 22), the preponderance of the
evidence leads us to conclude that Claims 45-47 of Lockheed’s involved
application 13/344,499 (“Lockheed ‘499 application”) have not been shown to lack 20
written description support and enablement from the original specification of
Lockheed’s involved application. In particular, we find the original specification
of Lockheed’s involved application provides written description and enablement of
the subject matter of Claims 45-47 and, as such, Lockheed has the right to be in
this interference. Accordingly, Caltech Motion 3 (Paper 22) is DENIED as to 25
Claims 45-47 of Lockheed’s involved application based on alleged lack of written
Interference No. 105,960
Caltech v. Lockheed Martin

4

description and enablement under 35 U.S.C. § 112, first paragraph. Because
Caltech Motion 5 (Paper 24) is contingent upon the granting of Caltech Motion 3
(Paper 22), and Caltech Motion 3 (Paper 22) is not GRANTED, the contingency
has not materialized. Accordingly, Caltech Motion 5 (Paper 22) is DISMISSED as
moot. 5
With respect to Caltech Motion 4 (Paper 23), the preponderance of evidence
also leads us to conclude that Claims 45-47 as well as Claims 49 and 54-55 in
Lockheed ‘499 application are unpatentable under 35 U.S.C. § 103(a) over prior
art. However, we find Caltech has failed to show that: (1) Lockheed Claims 26-29,
36, 37, 39, 43-44, and 53 are unpatentable under 35 U.S.C. § 103(a) over the same 10
prior art; and (2) the presumption under 37 C.F.R. §41.207(c) does not apply to
Caltech’s own Claims 1-6 of Caltech’s involved patent, U.S. Patent No. 7,737,411
(“Caltech ‘411 patent”) in this interference. As such, Caltech Motion 4 (Paper 23)
is GRANTED as to Lockheed Claims 45-47, 49, and 54-55, and is otherwise
DENIED as to Lockheed Claims 26-29, 36, 37, 39, 43-44, and 53 of Lockheed 15
‘499 application. Caltech Claims 1-6 of Caltech ‘411 patent are considered
unpatentable by operation of the presumption of 37 C.F.R. § 41.207(c).
As a result of the above decisions, Caltech no longer has any patentable
claims in this interference and Lockheed remaining Claims 26-29, 36, 37, 39, 43-
44, and 53 of Lockheed ‘499 application have not been shown to be unpatentable. 20
Caltech remaining Claims 7-12 of the Caltech ‘411 patent and Lockheed remaining
Claims 26-29, 36, 37, 39, 43-44, and 53 of the Lockheed ‘499 application are
fundamentally different, and patentably distinct. The claims of Lockheed ‘499
application are directed to nBn-type detector devices where grading is performed
specifically at “interfaces” between layers in order to facilitate minority carrier 25
transport (holes) while continuing to prevent majority carrier transport (electrons)
Interference No. 105,960
Caltech v. Lockheed Martin

5

across the barrier, whereas the remaining claims of Caltech ‘411 patent are directed
to the same detector devices where the absorption layer is comprised of a chirped
strain layer supper lattice. Because of these significant differences, neither set of
claims renders the other obvious. Thus, these claim sets do not meet the two-way
test, and there is no interference-in-fact between remaining claims of the ‘411 5
patent and the ‘499 application. See 37 C.F.R. §41.203(a). Because there
currently is no basis for formulating a count representing common patentable
subject matter of the parties, it is appropriate to terminate the interference at this
point. Consequently, we need not reach Lockheed Motion 1 (Paper 26) to
designate Lockheed Claims 29, 44, and 53 of Lockheed ‘499 application as not 10
corresponding to the Count. Therefore, Lockheed Motion 1 (Paper 26) is also
DISMISSED as moot.

II. BACKGROUND
An administrative patent judge (APJ) declared an interference between 15
Junior Party Caltech’s patent, U.S. Patent No. 7,737,411 (“Caltech ‘411 patent”)
and Senior Party Lockheed Martin’s application, U.S. Serial No. 13/344,499
(“Lockheed ‘499 application”). Paper 1, p. 1-2.
The interfering subject matter is directed to an nBn-type photo detector
having a barrier (B) layer disposed between an n-type (n) absorption layer and an 20
n-type contact layer to provide a barrier to the majority carriers (electrons) wherein
the barrier (B) layer comprises an alloy concentration graded or varied therein
(concentration gradient) in order to reduce bandgap discontinuities and abrupt
transitions at heterojunctions, while improving minority carrier (holes) transport
across the barrier without requiring an excess voltage (Ex. 2001 at Figs. 13 & 14, 25
Interference No. 105,960
Caltech v. Lockheed Martin

6

and ¶62). The interfering subject matter is represented by a single Count 1, which
is Caltech Claim 1 or Lockheed Claim 45.
Caltech independent claim 1, which is substantially identical to Lockheed
independent claim 45, is reproduced below:
1. A detector comprising: 5
an absorption layer for generating electrons-hole pairs in
response to absorbed photons, the absorption layer comprising a
semiconductor having majority carriers and minority carriers;
a barrier layer comprising a semiconductor adjacent to the
absorption layer to provide a barrier to the majority carriers, the 10
barrier layer comprising a concentration gradient; and
a contact layer comprising a semiconductor adjacent to the
barrier layer.
Paper 13, p. 1. Lockheed’s Claim 45 additionally includes the limitation that the
detector has no depletion layer.1 Paper 7 at 4-5. Caltech Claims 1-6 (Paper 13; Ex. 15
1002), as well as Lockheed Claims 26-29, 36, 37, 39, 43-47, 49, and 53-55 (Paper
7; Ex. 2001) have been designated as corresponding to the Count. Paper 1, pp. 3-4;
Paper 20, p. 2.

III. CALTECH MOTION 2 (PAPER 21) FOR LACK OF BENEFIT 20

Caltech Motion 2 (Paper 21) asserts that Lockheed is not entitled to the
November 14, 2006 filing date of a first provisional application 60/865,793
because Lockheed’s first provisional application 60/865,793 (Lockheed ‘793
provisional; Ex. 2036) lacks a constructive reduction to practice of the subject 25
matter of the Count. However, Caltech does not attack the benefit of the January

1 Such a limitation is inherent in all nBn-type photo detector structure and, as
such, does not require additional or separate patentability determination.
Interference No. 105,960
Caltech v. Lockheed Martin

7

12, 2007 filing date of Lockheed’s second provisional application 60/880,580
(Lockheed ‘580 provisional; Ex. 2002). As such, the benefit of the January 12,
2007 filing date of Lockheed’s second provisional 60/880,580 (Ex. 2002) remains
intact.
Turning now to the benefit chain of Senior Party Lockheed’s involved 5
application, U.S. Serial No. 13/344,499 (Lockheed ‘499 application), that
application filed January 5, 2012 is a continuation of U.S. Application Serial No.
13/153,297, filed June 3, 2011, now U.S. Patent 8,399,910 (Lockheed ‘910 patent),
which is said a continuation of U.S. Application Serial No. 11/939,464, filed
November 13, 2007, now U.S. Patent No. 8,044,435 (Lockheed ‘435 patent) and 10
claims the benefit of the filing dates of two provisional applications 60/880,580,
filed January 12, 2007 (Lockheed ‘580 provisional application; Ex. 2002), and
60/865,793, filed November 14, 2006 (Lockheed ‘793 provisional application; Ex.
2036). When this interference was declared, Lockheed was accorded benefit of the
filing dates of the continuation applications and both the provisional applications 15
60/880,580, and 60/865,793.
As the movant, Caltech bears the burden of establishing that Lockheed
should not be accorded benefit of the filing date of its provisional applications. 37
C.F.R. §§ 41.121(b) and 42.208(b); Fiers v. Revel, 984 F.2d 1164, 1169 (Fed. Cir.
1993). “Accord[ed] benefit means Board recognition that a patent application 20
provides a proper constructive reduction to practice under 35 U.S.C. 102(g)(1).2”
37 C.F.R. § 41.201. A constructive reduction to practice is defined in the PTO’s
regulations as “a described and enabled anticipation under 35 U.S.C. 102(g)(1) in a
patent application of the subject matter of a count.” Id. Where a chain of

2 Patent interferences continue under the relevant statutes in effect on 15 March
2013. See Pub. L. 112-29, § 3(n), 125 Stat. 284, 293 (2011).
Interference No. 105,960
Caltech v. Lockheed Martin

8

applications is relied upon the earliest constructive reduction to practice means the
first constructive reduction to practice that has been continuously disclosed
through a chain of patent applications including in the involved application or
patent. For the chain to be continuous, each subsequent application must have
been co-pending under 35 U.S.C. 120 or 121 or timely filed under 35 U.S.C. 119 5
or 365(a). Id.
In other words, in order to attack the benefit of an application accorded for a
count, i.e., deprive Lockheed the benefit of the filing date of its second provisional
application 60/865,793 (Ex. 2039), Caltech must explain why Lockheed’s
provisional application does not provide a constructive reduction to practice for the 10
count as required by our Standing Order (SO) §208.4.2, i.e., describe at least an
enabled embodiment meeting all the limitations of the Count. See Falkner v.
Inglis, 448 F.3d 1357, 1362 (Fed. Cir. 2006). An embodiment must also be present
in any necessary intermediate applications in the chain. See Stevens v. Tamai, 366
F.3d 1325, 1330-31 (Fed. Cir. 2004). 15
Count 1 requires, inter alia: “the barrier layer comprising a concentration
gradient” as recited in Lockheed independent claim 45, upon which claims 46 and
53 depend, and also as recited in independent claim 47 (Paper 7, p. 4).
Nevertheless, Caltech characterizes the Count as further including the
following: 20
(1) “where the barrier layer is graded with a first grading at a first
interface area between said barrier layer and said contact layer and
graded with a second grading at a second interface area between said
barrier layer and said photo absorbing layer such that the first grading
creates a graded transition from the minority carrier band edge of the 25
barrier layer to the minority carrier band edge of the contact layer; and
the second grading creates a graded transition from the minority
carrier band edge of the photo absorbing layer to the minority carrier
band edge of the barrier layer”
Interference No. 105,960
Caltech v. Lockheed Martin

9

as recited in Lockheed independent claim 26, from which claims 27-29 depend
(Paper 7, p. 3) (emphasis added);
(2) “where the barrier layer is graded with a first grading at a first
interface area between said barrier layer and said contact layer such 5
that the first grading creates a graded transition from the minority
carrier band edge of the barrier layer to the minority carrier band edge
of the contact layer”

as recited in Lockheed independent claim 36, from which claims 37-39 depend 10
(Paper 7, p. 3) (emphasis added);
(3) “where the barrier layer is graded with a grading that creates a
graded transition from the minority carrier band edge of the barrier
layer to the minority carrier band edge of the contact layer and also
creates a graded transition from the minority carrier band edge of the 15
photo absorbing layer to the minority carrier band edge of the barrier
layer”

as recited in Lockheed independent claim 43, from which claim 44 depends (Paper
7, p. 4) (emphasis added). 20
Caltech contends that Lockheed ‘793 provisional (Ex. 2036): (1) does not
disclose the concept of grading3 an interface area between the absorber and barrier
layers, and/or an interface area between the barrier and contact layers, and,
likewise, (2) does not describe how to create a “concentration gradient” within the
barrier layer in the manner recited in Lockheed independent claims 26, 36, 43, 45, 25
and 47. As such, Caltech argues Lockheed ‘793 provisional (Ex. 2036) does not

3 As will be discussed in our decision regarding Caltech Motion 3 (Paper 22) for
lack of written description and enablement and Caltech Motion 4 (Paper 22) for
lack of patentability, the term “grading” or “compositional grading” refers to
changing an alloy concentration in and along a width of a barrier layer between an
absorber layer and a contact layer within an nBn-type photo detector.

Interference No. 105,960
Caltech v. Lockheed Martin

10

anticipate the subject matter of the count and, therefore, no benefit to Lockheed
‘793 provisional (Ex. 2036) can be accorded to Lockheed ‘499 application in
respect to the subject matter of Count 1. Paper 21, pp. 3-6.
In its opposition (Paper 42), Lockheed admits that the ‘793 provisional
application (Ex. 2036) does not disclose the concept of grading in an interfacial 5
area between the barrier layer and one or both of the contact and absorber layers.
Paper 42, Appendix 2, pp. 7-10. However, Lockheed responds that: (1) Lockheed
‘580 provisional (Ex. 2002) provides a constructive reduction to practice of the
subject matter of the Count, and (2) Caltech does not present any arguments or
evidence challenging the constructive reduction to practice of the subject matter of 10
the count made in the Lockheed ‘580 provisional application. Id. 3 at 11; see also
Paper 47, Appendix 2-6.
As an initial matter, we note that, contrary to Caltech’s characterization of
the subject matter of the Count, the concept of grading at the interface between the
absorber and barrier layers, and/or an interface area between the barrier and contact 15
layers as recited in Lockheed independent claims 26, 36, and 43, is included but is
not required by the Count. As such, Caltech’s arguments regarding the failure of
the ‘793 provisional to disclose the same grading concept are misplaced.
Nevertheless, we have reviewed the ‘793 provisional and find that it does not
mention a “concentration gradient” within the barrier layer. Lockheed has not 20
directed us to any portions of the ‘793 provisional that describes a concentration
gradient or provided any expert testimony explaining how one skilled in the art
would have understood the teachings of that application.
In view of the foregoing reasons, including Caltech’s failure to address
Lockheed ‘580 provisional (Ex. 2036), Caltech Motion 2 (Paper 21) is GRANTED 25
relative to Caltech’s first provisional No. 60/865,793 (Ex. 2036) filed on
Interference No. 105,960
Caltech v. Lockheed Martin

11

November 14, 2006, and is otherwise DENIED relative to Caltech’s second
provisional No. 60/880,580 (Ex. 2002) filed on January 12, 2007.

IV. CALTECH MOTION 3 (PAPER 22) FOR LACK OF WRITTEN
DESCRIPTION AND ENABLEMENT 5

Caltech Motion 3 (Paper 22) moves for judgment against Claims 45-47 of
Lockheed’s involved application 13/344,499 based on an alleged lack of a written
description, and an alleged lack of enablement under 35 U.S.C. § 112, first
paragraph. Specifically, Caltech argues Lockheed’s involved application does not 10
provide written description and, likewise, enablement support for a limitation:
“barrier layer comprising a concentration gradient” as recited in Claims 45-47.
Paper 22 at 1-11.
Below are our findings of facts regarding the disclosures of Lockheed’s
involved application and Caltech’s involved patent, analysis and conclusion of law 15
regarding written description and enablement support from Lockheed’s involved
application for each of the contested Claims 45-47 of Lockheed’s involved
application.

A. FINDINGS OF FACTS 20
We make the following findings of facts (“FFs”) to resolve issues presented
in Caltech Motion 3 (Paper 22). These FFs, as well as others made elsewhere in
the Opinion, are supported by at least a preponderance of the evidence on the
record. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988).
Interference No. 105,960
Caltech v. Lockheed Martin

12

1.
1. The terms “heterojunction” and “heterointerface” are interchangeable
and refer to the place at which two layers of dissimilar semiconductors meet. Ex.
2001 at ¶[0032].
2. The term “barrier interface” refers to the heterojunctions or 5
heterointerfaces between the barrier layer and absorber layer, and the barrier layer
and the contact layer within an nBn-type photo detector. Ex. 2001 at ¶[0062].

2.
Lockheed’s Involved Application (Lockheed ‘499 Application) 10
3. Lockheed ‘499 application acknowledges nBn photo-detectors and
their structures were known in the prior art. Ex. 2001 at ¶[0029].
4. Lockheed identifies additional improvements to existing “nBn”
technology in six primary areas: (1) photo generated minority carriers generated in
the absorber layer diffuse to the barrier layer and such lateral diffusion degrades 15
the modulation transfer function (Ex. 2001 at Figs. 10-11); (2) non-ideal growth of
the barrier alloys can lead to spikes in the minority carrier band edge, requiring
excess voltage to turn on minority current collection (Ex. 2001 at Figs. 12-14); (3)
base nBn structure does not have minority carrier barrier between the absorber
layer and the substrate, leading to excess dark currents from thermally generated 20
carriers in the substrate (Ex. 2001 at Figs. 15-16); (4) base nBn structure does not
allow mesa isolation of small pixels which can further reduce dark current and
enable higher operating temperature (Ex. 2001 at Figs. 17-21); (5) extension of
cutoff wavelengths of nBn detectors for threat warning applications (Ex. 2001 at
Figs. 22-23); and (6) InGaAs as alloys used to create an nBn structure for a broad 25
5
10
15
Interfer
Caltech

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Interference No. 105,960
Caltech v. Lockheed Martin

14

As shown in Fig. 2 of Lockheed ‘499 application, the barrier (B) layer is
disposed between the n-type photo absorbing layer and the n-type contact area, and
comprising one or more of alloy concentrations of AlSb, AlAsSb, AlGaAsSb,
AlPSb, AlGaPSb, and HgZnTe. Ex. 2001 at ¶[0009].
7. In particular, Lockheed describes: 5
a barrier layer has been grown4 on the surface of the InGaAs
with the unique property of presenting a high barrier to carrier
flow in the conduction band, but with negligible barrier in the
valence band. This enables a bias to be placed across the
device without majority carrier current flow, while allowing the 10
collection of photo-generated minority carriers by diffusion.
The undoped wide-bandgap barrier acts simultaneously as
surface passivation, contact isolation and minority carrier
collector. Thus, there are no high lateral fields in the device,
eliminating the perimeter leakage effects. 15

Ex. 2001 at ¶[0033] (emphasis added).
8. In order to simplify device fabrication and realize large arrays of very
small pixels, Lockheed also discloses “[t]he barrier layer itself is relatively thin,
typically two thousand angstroms or less, and thus it can support latitude for strain 20
in the barrier growth without detriment to device performance.” Ex. 2001 at
¶[0034].
9. In order to address the area (2) concern where non-ideal growth of
barrier alloys can lead to spikes in the minority carrier band edge, Lockheed
further discloses “by grading the composition of the barrier [layer] to absorber and 25
contact interfaces, the spikes at heterointerfaces are eliminated… making the

4 Growths are typically done, via molecular beam epitaxy systems. Ex. 2036 at
7:6-8.

5
10
15
20
Interfer
Caltech

design m
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ig. 13 of
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s shown in
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ontact int

1. In pa
ayer and t
05,960
ed Martin
t to variat
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13 of Loc
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ed’s Fig. 1
Lockheed
hoto detec
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Fig. 13, t
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ions of all
kheed ‘499
f the barri
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tor structu
a barrier l
of the nB
he barrier
o provide
ority carri
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barrier/ab
ckheed de
bsorbing l
15
oys in the
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uced belo
cation sho
re includi
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layer, grow
a barrier in
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bly graded
sorber inte
scribes “[
ayer and th
growth pro
on is said
an nBn d
w with ad
ws an ener
ng grading
sed betwe
to detecto
n using v
a majorit
ion band.
at barrier
rface. Ex
a]lloys at
e contact
cess.” Ex
to illustrat
etector stru
ditional m
gy band d
the comp
en an abso
r structure
ariations o
y carrier c
The comp
interfaces
. 2001 at ¶
interfaces
area are pr
. 2001 at
e the bene
cture, sho
arkings for

iagram
osition of
rber layer
.
f alloy
onduction
osition of
, i.e.,
¶[0024] an
between th
eferably
fits
wn

an
and

an
d
e
Interference No. 105,960
Caltech v. Lockheed Martin

16

graded, whereby spikes in minority carrier band edges are substantially reduced.”
Ex. 2001 at ¶[0009] (emphasis added). As a result, these graded interfaces on the
barrier are said to avoid heterointerface notches that can increase bias voltage due
to thermionic emission limits.” Ex. 2001 at ¶[0059]. According to Lockheed, such
grading the composition of the barrier layer advantageously facilitates minority 5
carrier transport (holes) while continuing to inhibit or prevent majority carrier
transport (electrons) across the barrier of an nBn detector structure. Ex. 2001 at
Fig. 13, ¶¶[0024] and [0062].
12. In view of FF 3-11, Lockheed discloses grading the composition of an
alloy at least part of the barrier layer of an nBn detector structure, including, for 10
example, at interfaces between the barrier layer and the photo absorbing layer and
the contact area. Ex. 2001 at ¶¶[0009], [0024], [0033]-[0034], [0060], and [0062].

3.
Caltech’s Involved Patent (Caltech ‘411 Patent) 15
13. Caltech ‘411 patent also acknowledges that nBn photo-detectors and
their structures were known in the prior art. Ex. 2038 at 1:26-31.
14. Caltech discloses an nBn detector structure that comprises the same
sequence of: (i) an n-doped semiconductor photo absorption layer, (ii) an n-doped
semiconductor contact layer, and (iii) a middle barrier (B) layer disposed between 20
the photo absorption layer and the contact layer, and that nBn detector structure is
further described “where for some embodiments the barrier layer has a
concentration gradient, for some embodiments the absorbing layer has a
concentration gradient, and for some embodiments the absorbing layer is a chirped
strained layer super lattice.” Ex. 2038 at Abstract. 25
5
10
15
20
Interfer
Caltech

1
layer, or
allows f
across t
1
barrier l
shown i
below:
F
of a
appli
barr

A
barrier l
to anoth
interfac
and a co
Lockhe
preferab
ence No. 1
v. Lockhe
5. Acco
the use o
or design
he device.
6. For p
ayer comp
n Figs. 3A
igs. 3A an
n nBn-typ
cation incl
ier/absorp
s shown in
ayer, indic
er, i.e., a b
e (junction
ntact laye
ed ‘499 ap
ly graded
05,960
ed Martin
rding to C
f a chirped
of the ener
” Ex. 2038
urposes of
rises a con
and 3B.
d 3B of C
e photo de
uding grad
tion interfa
Caltech’
ated by la
arrier/abs
) of a barr
r 304. Ex
plication w
at barrier

altech, “[t]
strained l
gy bands
at Abstra
this interf
centration
Figs. 3A a
altech ‘41
tector stru
ing the co
ce (juncti
s Figs. 3A
bel 306, is
orption int
ier layer 3
. 2038 at F
here the c
interface.
17
he use of
ayer super
so that the
ct.
erence, an
gradient
nd 3B of C

1 patent sh
cture simil
mposition
on) to barr
and 3B, th
graded ac
erface (jun
06 dispose
igs. 3A-3B
ompositio
Ex. 2001
a graded b
lattice for
valence b
nBn dete
that is subj
altech ’41
ow an ene
ar to Fig.
of alloys
ier/contac
e compos
ross the su
ction) to a
d between
. This is
n of an all
at ¶¶[0024
arrier or a
the absorp
and may b
ctor structu
ect to the
1 patent a
rgy band d
13 of Lock
of a barrie
t interface
ition of an
rface from
barrier/co
an absorp
in contrast
oy of a ba
] and [006
bsorption
tion layer
e aligned
re in whic
Count, is
re reprodu

iagram
heed ‘499
r layer fro
(junction)
alloy of a
one inter
ntact
tion layer
to Fig. 13
rrier layer
2].
,
h a
ced

m
.

face
302
of
is
Interference No. 105,960
Caltech v. Lockheed Martin

18

17. Caltech specifically describes:
“[T]he barrier layer [306, shown in Figs. 3A-3B] comprises an alloy
of AlAsSb, where the Molar concentration of As increases as one
moves from left to right in the illustration. For example, at the
beginning of the barrier layer, at the junction with the absorption 5
layer, the concentration of As may be zero, so that the alloy
composition begins with AlSb. At the other side of the barrier [layer]
next to the contact layer, the Molar concentration of As may be 10%.
These concentration levels serve merely as an example, and other
embodiments may employ different levels of As. 10

By increasing the Molar concentration of As in the barrier layer as one
moves from the junction with the absorption layer to the junction with
the contact layer, better matching of the valence band is achieved as
indicated in FIG. 3B.” 15

Ex. 2038 at 2:59-3:4 (emphasis added).

18. In view of FF 12-17, Caltech discloses grading the composition of an
alloy of the barrier layer of an nBn detector structure, i.e., changing concentration 20
levels of an alloy (concentration gradient) within the barrier layer of an nBn
detector structure. Ex. 2038 at 2:59-3:4, Figs. 3A-3B.

B. ANALYSIS
1. 25
As an initial matter, we reject Caltech’s approach to challenging Lockheed’s
claims on written description grounds predicated upon new matter. Caltech alleges
that because the descriptions of Figures 13 and 14 recited in the Lockheed ‘499
application was not present verbatim in Lockheed’s provisional application No.
60/880,580 (Ex. 2002), that description constitutes new matter and somehow lacks 30
written description and enablement support for the limitation: “barrier layer
comprising a concentration gradient” as recited in Claims 45-47. Paper 22 at 8:6-
Interference No. 105,960
Caltech v. Lockheed Martin

19

9. As correctly recognized by Lockheed, Caltech attempts to challenge the priority
date and the benefit accorded to the Lockheed ‘499 application with respect to the
disclosure of grading the barrier layer. Paper 43, Opposition at 11:14-30.
However, Caltech’s attempt is misplaced for several reasons.
First, the only appropriate specification for the determination of adequate 5
written descriptive support is the specification in which the involved claims form a
part, Lockheed’s involved application 13/344,499 (“Lockheed ‘499 application”).
See Reiffin v. Microsoft Corp., 214 F.3d 1342, 1346 (Fed. Cir. 2000).
Second, having failed to raise a challenge to Lockheed’s accorded benefit of
Lockheed ‘580 provisional application (Ex. 2036) in Caltech Motion 2 (Paper 21), 10
which was denied, Caltech cannot raise this issue in the context of a motion limited
only to a written description and enablement under 35 U.S.C. § 112, first paragraph
with respect to Lockheed ‘499 application.
Third, with respect to the merits of Caltech’s allegation of new matter (Paper
22 at 8:6-9), we agree with Lockheed that Figures 13 and 14 are depicted in both 15
the Lockheed ‘499 application and its ‘580 provisional application, and both
include the statement that “alloys are graded at barrier interfaces in these
respective figures.” Paper 43, Opposition at 12:4-25; Ex. 2001 at Fig. 13; Ex. 2002
at p. 29. For example, the Lockheed ‘580 provisional also describes that “by
grading the composition of the barrier to absorber and contact interfaces, the spikes 20
at the heterointerfaces are eliminated,” and supports the claimed subject matter of
Lockheed ‘499 application claims at issue in this interference. Ex. 2002 at p. 29.
Likewise, we note that Claims 45-47 of Lockheed’s involved application
were copied from Caltech ‘411 patent, and thus, Lockheed Claims 45-47 must be
interpreted in the context of the specification of the Caltech ‘411 patent for 25
purposes of determining compliance with the written description requirement of 35
Interference No. 105,960
Caltech v. Lockheed Martin

20

U.S.C. § 112, first paragraph. Agilent Tech., Inc. v. Affymetrics, Inc., 567 F.3d
1366, 1375 (Fed. Cir. 2009) (“[W]hen a party challenges a written description for
the interference count or the copied claim in an interference, the originating
disclosure provides the meaning of the pertinent claim language”). Paper 22, 2:15-
20; Ex. 2035 at p. 7. Consequently, any attempt by Caltech to rely on the 5
prosecution history of the Caltech ‘411 patent in analyzing the written description
of Lockheed ‘499 application is improper and is misplaced, as correctly recognized
by Lockheed. Paper 43, Opposition at 12:27-31, 13:1-24.

2. 10
In order to satisfy the written description requirement under 35 U.S.C. §
112, first paragraph, the specification must convey with reasonable clarity to those
of ordinary skill in the art that as of the filing date of the application the inventor
disclosed the claimed invention. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-
64 (Fed. Cir. 1991); see also Pandrol USA, LP v. Airboss Ry. Products, Inc., 424 15
F.3d 1161, 1165 (Fed. Cir. 2005). The purpose of the written description
requirement is to prevent applicants from later asserting that they invented that
which they did not. Amgen Inc. v. Hoechst Marion Roussel Inc., 314 F.3d 1313,
1330 (Fed. Cir. 2003). However, the description does not have to be in the exact
same words, in ipsis verbis, as the language at issue in the corresponding claim. In 20
re Wertheim, 541 F.2d 257, 265 (CCPA 1976); In re Lukach, 442 F.2d 967, 969
(CCPA 1971).
The written description requirement of an invention is separate and distinct
from the enablement requirement. Vas-Cath, 935 F. 2d at 1564. “The enablement
requirement is satisfied when one skilled in the art, after reading the specification, 25
could practice the claimed invention without undue experimentation.” AK Steel
Interference No. 105,960
Caltech v. Lockheed Martin

21

Corp. v. Sollac and Ugine, 344 F.3d 1234, 1244 (Fed. Cir. 2003). “The
specification need not explicitly teach those in the art to make and use the
invention; the [enablement] requirement is satisfied if, given what they already
know, the specification teaches those in the art enough that they can make and use
the invention without undue experimentation.” Amgen Inc. v. Hoechst Marion 5
Roussel, Inc., 314 F.3d 1313, 1334 (Fed. Cir. 2003). “It is unnecessary to spell out
every detail of the invention in the specification; only enough must be included to
convince a person of skill in the art that the inventor possessed the invention and to
enable such a person to make and use the invention without undue
experimentation.” LizardTech v. Earth Resource Mapping, Inc., 424 F.3d 1336, 10
1345 (Fed. Cir. 2005).
The status quo of an interference is presumed correct. A party wishing to
change the status quo may be authorized to file a substantive motion under 37
C.F.R. §41.212(a) to effect that change. As the moving party, Caltech bears the
burden of proof to demonstrate entitlement to the relief requested. 37 C.F.R. § 15
41.121(b). To be sufficient, a motion must provide a showing, supported with
appropriate evidence, such that, if unrebutted, it would justify the relief sought. 37
C.F.R. § 41.208(b). The applicable standard of proof is by a preponderance of the
evidence. Bosies v. Benedict, 27 F.3d 539, 541-42 (Fed. Cir. 1994).
20
3.
Caltech has identified a limitation of Lockheed Claims 45-47 said not to be
described by Caltech’s written description and conveyed with reasonable clarity to
those skilled in the art that the inventor was in possession of: “a barrier layer
comprising a concentration gradient.” Paper 22, pp. 1-11. 25
Interference No. 105,960
Caltech v. Lockheed Martin

22

Citing Agilent, 567 F.3d at 1376, Caltech argues that Lockheed Claims 45-
47 were copied from Caltech’s involved patent and therefore must be construed in
light of Caltech’s written description. Caltech acknowledges the “barrier layer
comprising a concentration gradient” describes the actual barrier layer of Caltech’s
disclosure, not just its edges, or its interface with the adjacent absorber and contact 5
layers. Paper 22 at 4:22-23. Caltech further acknowledges “the barrier layer is in
between the absorption layer and the contact layer, indicated by label 306” shown
in Figs. 3A-3B of Caltech, and is used to provide a barrier to the majority carriers.
Paper 22 at 5:21-22 (citing Ex. 2038 at 2:53-54); and FF 12-17.
Nevertheless, when read in light of Caltech’s disclosure, Caltech contends 10
that its written description compels a construction of: (1) the term “barrier layer” as
the “layer in between the absorption layer and the contact layer and excluding the
region near the junction between absorption layer and the barrier layer” or the
“layer in between the absorption layer and the contact layer and excluding the
interface area,” (2) the term “concentration gradient” as a “Molar concentration of 15
at least one alloy changing across the [barrier] layer,” and (3) the phrase “barrier
layer comprising a concentration gradient” as a “Molar concentration of at least
one alloy changing across the [barrier] layer in between the absorption layer and
the contact layer and excluding the interface area.” Paper 22 at 4-7.
We disagree with Caltech. Pending claims in interference proceedings are 20
given their broadest reasonable construction in a manner consistent with Agilent,
i.e., in light of Caltech’s disclosure. Claim terms are also accorded their ordinary
and accustomed meaning as would be understood by one of ordinary skill in the
art. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc). In
some cases, as here, the ordinary meaning of claim language as understood by a 25
person of skill in the art may be readily apparent even to lay judges, and claim
Interference No. 105,960
Caltech v. Lockheed Martin

23

construction in such cases involves little more than the application of the widely
accepted meaning of commonly understood words. Phillips v. AWH Corp., 415
F.3d at 1314. This means that the words of the claims are given their plain
meaning unless that meaning is inconsistent with the specification. In re Zletz, 893
F.2d 319, 321 (Fed. Cir. 1989). Nevertheless, care must be exercised as there is an 5
important distinction between interpreting claims in light of the specification and
reading limitations into the claims from the specification. Comark Commc'ns, Inc.
v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998). Limitations appearing in
the specification but not recited in the claim must not be read into the claim. E-
Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003). We are 10
also mindful that our reviewing court has repeatedly cautioned against limiting
claims to the preferred embodiment. Comaper Corp. v. Antec, Inc., 596 F.3d 1343,
93 USPQ2d 1873, 1876 (Fed. Cir. 2010). Indeed, it is inappropriate to limit the
claim to an embodiment where the claim language is broader than the language
describing the embodiment. Superguide Corp. v. DirecTV Enterprises, Inc., 358 15
F.3d 870, 875 (Fed. Cir. 2004) (A particular embodiment appearing in the written
description may not be read into a claim when the claim language is broader than
the embodiment).
At the outset, we note that there is no language in any of the Lockheed
Claims 45-47 that expressly excludes any interface area between absorption and 20
contact layers from a barrier layer. The plain language of Lockheed Claims 45-47
simply requires “a barrier layer” and that “barrier layer” according to Caltech’s
specification refers to the entirety of a layer between the absorption layer and the
contact layer, indicated by label 306 shown in Figs. 3A-3B of Caltech, including
its edges or interfaces, i.e., barrier/contact interface (junction) and barrier/absorber 25
interface (junction). Ex. 2038 at 2:61-65; Figs. 3A-3B; and FF 13-18. We find
Interference No. 105,960
Caltech v. Lockheed Martin

24

nothing in Caltech’s specification indicating barrier interfaces, i.e., barrier/contact
interface (junction) and barrier/absorber interface (junction), are excluded from and
are not part of the “barrier layer.” Indeed, Caltech even acknowledges that the
“barrier layer comprising a concentration gradient” describes the actual barrier
layer, not just its edges, or its interface with the adjacent absorber and contact 5
layers. Paper 22 at 4:22-23. Accordingly, we reject Caltech’s proffered
construction of the term “barrier layer” and construe that term to mean “the layer
of material between the absorption layer and the contact layer of an nBn-type
photo detector” – that is consistent with Caltech’s own specification.
With respect to the term “concentration gradient” in the context of written 10
description, we find no explicit or special definition from Caltech’s specification.
Nevertheless, Caltech’s specification describes the “concentration gradient” in the
context of Fig. 3A as a “Molar concentration” level or simply concentration level
of an alloy forming a barrier layer that changes or increases as the barrier layer is
grown at the beginning of the barrier layer, at the junction with the absorption layer 15
until the end of the barrier, i.e., at the other side of the barrier layer next to the
contact layer. Ex. 2038 at 2:59-3:4; and FF 12-18. However, there is nothing in
Caltech’s specification indicating that such concentration change be linear or
continuous across the barrier layer. Caltech’s specification further describes these
concentration levels in context of Fig. 3A of Caltech serve merely as an example, 20
and other embodiments may employ different concentration levels of one or more
alloys. Ex. 2038 at 2:66; and FF 17.
Nor do we find any language in Lockheed Claims 45-47 that expressly
requires such a “concentration gradient” must be across the “barrier layer” as
proffered by Caltech. Paper 22 at 7:6-7. Rather, the plain language of Lockheed 25
Claims 45-47 simply requires the “barrier layer” to comprise a “concentration
Interference No. 105,960
Caltech v. Lockheed Martin

25

gradient” and that “concentration gradient” can be present anywhere within the
“barrier layer” including, for example: (1) across the barrier layer as proffered by
Caltech, or alternatively, (2) at least one of (or both) an interface between the
barrier and absorption layers and an interface between the barrier and contact
layers, as described by Lockheed’s specification and further defined by Lockheed’s 5
dependent claims, for example, Claims 54-55.
“It is common, and often permissible, for particular claims to pick out a
subset of the full range of described features, omitting others.” ScriptPro, LLC v.
Innovation Assocs., Inc., __ F.3d __, No. 2013-1561, slip op. at 7–8 (Fed. Cir.
Aug. 6, 2014). Caltech’s specification does not indicate that the particular location 10
of the “concentration gradient” within the “barrier layer” is considered an essential
element of the invention. C.f. Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d
1473, 1479 (Fed. Cir. 1998). An applicant for patent “is generally allowed claims,
when the art permits, which cover more than the specific embodiment shown.” In
re Vickers, 141 F.2d 522, 525 (CCPA 1944); see also Ethicon Endo-Surgery, Inc. 15
v. U.S. Surgical Corp., 93 F.3d 1572, 1582 n.7 (Fed. Cir. 1996).
In this context, and given that Caltech’s “concentration gradient” predictably
could be included or placed across the barrier layer as shown, for example, in Figs.
3A-3B of Caltech’s disclosure (Ex. 2038 at 2:61-65; Figs. 3A-3B; and FF 13-18),
or at various locations within the barrier layer including at an interface between the 20
barrier and absorption layers and an interface between the barrier and contact
layers, as shown, for example, in Fig. 2 and Fig. 13 of Lockheed’s disclosure (Ex.
2001 at ¶¶[0009], [0024], [0033]-[0034], [0060], [0062]; and FF 1-12), we find
Lockheed’s involved application provides written description for a limitation:
“barrier layer comprising a concentration gradient” as recited in Claims 45-47. We 25
also find the description in Lockheed’s specification reasonably conveys to one of
Interference No. 105,960
Caltech v. Lockheed Martin

26

ordinary skill in the art that Lockheed was in possession of the claimed subject
matter.
For the foregoing reasons, Caltech has failed to prove that Lockheed Claims
45-47 are unpatentable under 35 U.S.C. § 112, first paragraph, for lacking written
description and enablement support for a “barrier layer comprising a concentration 5
gradient.” Therefore, Caltech Motion 3 (Paper 22) is DENIED.

V. CALTECH MOTION 4 (PAPER 22) FOR LACK OF PATENTABILITY
10
Caltech Motion 4 (Paper 21) moves for judgment that Claims 26-29, 36, 37,
39, 43-47, 49, and 53-55 of the Lockheed ‘499 application (Paper 7; Ex. 2001) are
unpatentable under 35 U.S.C. § 103(a) over prior art. As the moving party,
Caltech bears the burden of proving by a preponderance of the evidence that
Claims 26-29, 36, 37, 39, 43-47, 49, and 53-55 of Lockheed ‘499 application are 15
unpatentable over prior art. 37 C.F.R. §§ 41.121(b) and 41.208(b); see also Bosies
v. Benedict, 27 F.3d 539, 541-42 (Fed. Cir. 1994).
Specifically, Caltech argues that Claims 26-29, 36, 37, 39, 43-47, 49, and
53-55 of Lockheed ‘499 application (Paper 7; Ex. 2001) are unpatentable under 35
U.S.C. § 103(a) as rendered obvious over two different combinations of prior art, 20
including: (1) Maimon, U.S. Patent Publication No. 2007/0215900 (Maimon ‘900;
Ex. 2003) and Lin, U.S. Patent No. 6,603,184 (Lin ‘184; Ex. 2004); and (2)
Maimon ‘900 (Ex. 2003), Federico Capasso, Compositional Graded
Semiconductors and Their Device Applications, 16 ANN. REV. MATER. SCI. 263
(1986) (Capasso; Ex. 2010), and White, U.S. Patent No. 4,679,063 (White ‘063; 25
Interference No. 105,960
Caltech v. Lockheed Martin

27

Ex. 2024).5 Paper 23, pp. 1-25 & APPENDIX 3A-3B (claim charts). However,
Caltech has not explained why the cited prior art, including Maimon ‘900 (Ex.
2003), Lin ‘184 (Ex. 2004), Capasso (Ex. 2010), and White ‘063 (Ex. 2024), does
not render obvious any of Caltech’s own Claims 1-6 as required by 37 C.F.R.
§41.207(c). Instead, Caltech simply incorporates by reference Caltech Motion 3 5
(Paper 22) and Caltech Motion 5 (Paper 25) for arguments that the prior art
identified in Caltech Motion 4 (Paper 23) does not apply to Caltech’s own Claims
1-6 of Caltech ‘411 patent (Paper 13; Ex. 1002), i.e., Caltech’s own Claims 1-6 are
directed to subject matter that is patentably distinct from Claims 26-29, 36, 37, 39,
43-47, 49, and 53-55 of Lockheed ‘499 application (Paper 7; Ex. 2002). Paper 23, 10
p. 24.
In its opposition, Lockheed responds that: (1) Caltech’s incorporation by
reference is not permitted under S.O. ¶ 106.2 and (2) Caltech has failed to explain
why the prior art identified in Caltech Motion 4 (Paper 23) is not equally
applicable to Caltech’s own Claims 1-6 of Caltech ‘411 patent (Paper 13; Ex. 15
1002) corresponding to the Count. Paper 44, p. 4. In addition, Lockheed argues
Caltech has incorrectly construed all of Lockheed’s claims corresponding to the
Count, mischaracterized both the cited prior art and Lockheed’s disclosure and,

5 In Appendix 3B of Caltech Motion 4 (Paper 23), Lin ‘184 (Ex. 2004) and
Capasso (Ex. 2010) are also listed in combination with Maimon ‘900 (Ex. 2003)
and White ‘063 (Ex. 2024). However, Lin ‘184 (Ex. 2004) is not relied upon for a
disclosure of any limitation of Claims 45-47, 49, and 54-55 of Lockheed ‘499
application. As such, Lin ‘184 is considered redundant and is not needed for the
combination of Maimon ‘900 (Ex. 2003), Capasso (Ex. 2010), and White ‘063 (Ex.
2024). Likewise, Capasso is also cited for a disclosure of “band gap grading
[which] allows one to literally design and tailor the important transport properties
to a given application” as similarly disclosed by White ‘063 (Ex. 2024 at 7:1-24,
9:6-12, and Fig. 2). As such, Capasso is also considered redundant and is not
needed for the §103 rejection.
Interference No. 105,960
Caltech v. Lockheed Martin

28

consequently, failed to establish obviousness of Lockheed’s Claims 26-29, 36, 37,
39, 43-47, 49, and 53-55. Paper 44, pp. 1-18.
In its reply, Caltech responds all the prior art cited by Caltech is not
applicable to Caltech’s own Claims 1-6 of the Caltech ‘411 patent because the
prior art teaches grading at an interface between absorption/barrier layers and 5
between barrier/contact layers, whereas Caltech Claims 1-6 are directed to a
“barrier layer comprising a concentration gradient.” Caltech concedes, however,
that “[w]hile the applicability of the prior art to the [Caltech] ‘411 patent may be
an interesting aside, it is not relevant to this motion, nor does it change the fact that
all of the prior art is applicable to the [Lockheed] ‘499 application.” Paper 51 at 2 10
(emphasis added).
Below are our findings of facts regarding the disclosures of Lockheed ‘499
application and Caltech ‘411 patent, the relevant prior art, analysis and conclusion
of law regarding patentability of each of the contested claims 26-29, 36, 37, 39, 43-
47, 49, and 53-55 of Lockheed ‘499 application as well as the presumption under 15
37 C.F.R. §41.207(c).

A. ADDITIONAL FINDINGS OF FACTS
1.
Basic P-N Junction & nBn Technology 20
19. P-N junctions are elementary “building blocks” of most
semiconductor devices, including photo detectors. We understand that such a p-n
junction is simply an interface between two layers of semiconductor material, p-
type and n-type, and, if illuminated, converts light into current. Ex. 1006 and Ex.
1008. A depletion region is formed or created when charge carriers (electrons and 25
holes) are swept away from the p-n junction by absorption of an incident photo,
Interference No. 105,960
Caltech v. Lockheed Martin

29

leaving none to carry a current. Ex. 1006. The total current is the sum of the dark
current (current that is generated in the absence of light) and the photocurrent, so
the dark current must be minimized in order to maximize the sensitivity of a
device. Ex. 1008.
20. In contrast to p-n junction type depletion-region devices, an nBn-type 5
photo detector is designed to eliminate such a p-n junction and associated junction
leakage. In particular, an nBn-type photo detector does not exhibit a depletion
region to further reduce the dark current generated in the semiconductor junction,
as described, for example, generally in Maimon, U.S. Patent Publication No.
2007/0215900, now issued as U.S. Patent No. 7,687,871 (Maimon ‘900; Ex. 2003 10
and Ex. 2012). These nBn-type photo detectors are inherently depletion-less, and,
as such, are also known as “depletion-less nBn-type photo-detector”. Ex. 2003 and
Ex. 2012 at 3:5-7.

Prior Art 15
21. Maimon ‘900 (Ex. 2003) was acknowledged and described in detail in
the Background Section of both Caltech ‘411 patent and Lockheed ‘499
application, and was also cited and considered by the Examiner during the
prosecution of both Caltech ‘411 patent and Lockheed ‘499 application. Ex. 2001
at 1:26-62; Ex. 2038 at ¶[0029]. 20
22. Maimon ‘900 (Ex. 2003) discloses each nBn detector structure
comprises a sequence of: (i) an n-doped semiconductor photo absorbing layer, (ii)
a middle barrier layer, and (iii) an n-doped semiconductor contact layer. Ex. 2012
at Abstract; 2:39-55; and Figs. 1A-1B. According to Maimon ‘900, the barrier
layer disposed between the photo absorbing layer and the contact layer exhibits a 25
thickness sufficient to prevent tunneling of majority carriers from the photo
Interference No. 105,960
Caltech v. Lockheed Martin

30

absorbing layer to the contact layer. Ex. 2012 at 2:49-51. Such a barrier layer is
also designed to have no offset for minority carriers and a band gap barrier for
majority carriers. Thus, current is almost exclusively by minority carriers. Ex.
2012 at 2:60-61.
5
2.
Lockheed’s Involved Application (Lockheed ‘499 Application)
23. Lockheed ‘499 application acknowledges nBn photo-detectors and
their structures were known in the prior art, as disclosed by Maimon ‘900 (Ex.
2003). Ex. 2001 at ¶[0029]. 10
24. As discussed in connection with FF 3-12, Lockheed further discloses
grading the composition of an alloy at least part of the barrier layer of an nBn
detector structure, including, for example, at interfaces between the barrier layer
and the photo absorption layer and the contact area. Ex. 2001 at ¶¶[0009], [0024],
[0033]-[0034], [0060], and [0062]. 15

3.
Caltech’s Involved Patent (Caltech ‘411 Patent)
25. Caltech ‘411 patent also acknowledges that nBn photo-detectors and
their structures were known in the prior art, as disclosed, for example, by Maimon 20
in an article entitled “nBn detector, an infrared detector with reduced dark current
and higher operating temperature,” published in Applied Physics Letters,
(Maimon; Ex. 2013). Ex. 1002 at 1:26-31.
26. As discussed in connection with FF 13-18, Caltech further discloses
grading the composition of an alloy of the barrier layer of an nBn detector 25
structure, i.e., changing concentration levels of an alloy (concentration gradient)
Interference No. 105,960
Caltech v. Lockheed Martin

31

within the barrier layer of an nBn detector structure. Ex. 2038 at 2:59-3:4, Figs.
3A-3B.

B. ANALYSIS
5
1.
Claim Construction

In determining patentability over the prior art, the name of the game is the
claim. In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). Claim terms of an 10
involved patent in an interference are given their broadest reasonable construction
as they would be understood by one of skill in the art in light of the specification.
Rolls-Royce PLC v. United Technologies Corp., 603 F.3d 1325, 1330 (Fed. Cir.
2010). “There are only two exceptions to this general rule: 1) when a patentee sets
out a definition and acts as his own lexicographer or 2) when the patentee 15
disavows the full scope of a claim term either in the specification or during
prosecution.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365
(Fed. Cir. 2012). For purposes of a patentability or invalidity challenge under 35
U.S.C. §§ 102 and 103, the copied claims must be interpreted in light of the host
disclosure, i.e., Lockheed’s disclosure and file history. Agilent Tech., Inc. v. 20
Affymetrics, Inc., 567 F.3d 1366, 1375 (Fed. Cir. 2009) (“[W]hen a party
challenges a claim’s validity under §§ 102 and 103 … the Board must interpret the
claim in light of the specification in which it appears”).6 Paper 44 at 5:11-14.

6 As per Agilent, the Federal Circuit requires copied claims to be interpreted
differently depending on whether those claims are challenged under 35 U.S.C.
§ 112, first paragraph or under 35 U.S.C. §§ 102 and 103. For purposes of a
written description challenge under 35 U.S.C. § 112, first paragraph, copied claims
must be interpreted in light of the originating disclosure. In contrast, for purposes
of a patentability or invalidity challenge under 35 U.S.C. §§ 102 and 103, the same
Interference No. 105,960
Caltech v. Lockheed Martin

32

We will look to Lockheed’s disclosure and file history to see if they provide
a definition for claim terms. Otherwise, we give them their “ordinary and
customary meaning” in the light of the specification that “the term would have to a
person of ordinary skill in the art in question at the time of the invention, i.e., as of
the effective filing date of the patent application.” Phillips v. AWH Corp., 415 5
F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).
In the present interference, analysis of the unpatentability assertions depends
on the meaning of several claim terms and limitations from independent claims 26,
36, 43, 45, and 47 of Lockheed ‘499 application corresponding to the Count.
Paper 1, Declaration-Bl. R. 203(d) at p. 4. Each of these claims corresponding to 10
the Count relates to grading the composition of a barrier (B) layer disposed
between a photo absorbing layer and a contact layer within an nBn detector
structure.
For Claims 45 and 47: “the barrier layer comprising a concentration
gradient.” Paper 7 at 4-5. 15
For Claim 26:
“where the barrier layer is graded with a first grading at a first
interface area between said barrier layer and said contact layer and
graded with a second grading at a second interface area between said
barrier layer and said photo absorbing layer such that 20
the first grading creates a graded transition from the minority
carrier band edge of the barrier layer to the minority carrier band edge
of the contact layer; and

copied claims must be interpreted in light of the host disclosure in which they are a
part. As a result of claim construction based on different disclosures, the same
copied claims with exactly the same wordings can mean different things depending
on the “written description” challenge or the “patentability” or “invalidity”
challenge. Fortunately, however, the plain reading of Caltech Claims 1-6 and
Lockheed copied Claims 45-47 and their claim construction do not vary
significantly from Caltech’s disclosure to Lockheed’s disclosure.
Interference No. 105,960
Caltech v. Lockheed Martin

33

the second grading creates a graded transition from the minority
carrier band edge of the photo absorbing layer to the minority carrier
band edge of the barrier layer.” Paper 7 at 3.

For Claim 36: “where the barrier layer is graded with a first grading at a first 5
interface area between said barrier layer and said contact layer such that the first
grading creates a graded transition from the minority carrier band edge of the
barrier layer to the minority carrier band edge of the contact layer.” Paper 7 at 3-4.
For Claim 43: “where the barrier layer is graded with a grading that creates a
graded transition from the minority carrier band edge of the barrier layer to the 10
minority carrier band edge of the contact layer and also creates a graded transition
from the minority carrier band edge of the photo absorbing layer to the minority
carrier band edge of the barrier layer.” Paper 7 at 4.
The disputed terms are: (1) “barrier layer”, (2) “concentration gradient”, (3)
“barrier layer comprising a concentration gradient”, (4) “grading”, (5) “graded 15
with a first grading” or “graded with a grading”, and (6) “grading at [an] interface”
as recited in Claims 26, 36, 43, 45, and 47 of Lockheed ‘499 application
corresponding to the Count. As per Agilent, these disputed terms are to be
construed in light of the host disclosure, i.e., Lockheed’s disclosure and file
history, and not Caltech’s disclosure and its file history. 20
At the outset, we note that neither Caltech nor Lockheed alleges that the
inventors of Lockheed ‘499 application gave any claim term a special definition
different from its recognized meaning to one with ordinary skill in the art.
However, rather than proffering a specific construction of these disputed terms,
Caltech takes the position that because the Lockheed ‘499 application never 25
describes “concentration gradient” outside of the claims and only describes what
Caltech has characterized as “grading an alloy at the interface of the
Interference No. 105,960
Caltech v. Lockheed Martin

34

absorber/barrier and/or barrier/contact layers,” the proper construction of these
disputed terms should be limited to only grading at an interface between layers.
Paper 23 at 21-22. Lockheed opposes Caltech’s wholesale approach to claim
construction and proffers its own construction, which we will address each claim
term identified by Lockheed in turn. 5
1. “Barrier Layer”
Lockheed construes the claim term “barrier layer” to mean a layer of
material disposed between the absorber layer and the contact layer in a depletion-
less, nBn-type photo-detector. Paper 44 at 7-8. Lockheed contends his claims
pertain to alloy grading in the barrier layer of depletion-less nBn-type photo-10
detectors, i.e., minority-carrier devices having an n-type absorber, an n-type
contact, and a barrier (B) layer disposed between the absorber and the contact to
prevent the flow of majority carriers between the absorber and the contact without
causing a depletion region. Id. Lockheed argues the term “barrier layer” therefore
encompasses all parts of the barrier (B) layer, from the absorber junction to the 15
contact junction. Id.
Caltech replies that Lockheed’s proffered construction is incorrect and
ignores Lockheed’s own specification and claims which further require an
“interface area” that is “between” layers. Paper 51 at 4. According to Caltech, the
term “barrier layer” does not encompass all parts of the barrier layer and 20
necessarily excludes particular interface areas that are “between” layers, such as “a
first interface area between said barrier layer and said contact layer” and “a second
interface area between said barrier layer and said photo absorbing layer” as recited,
for example, in Claim 26 of Lockheed ‘499 application. Id.
Upon reviewing the host disclosure, i.e., Lockheed’s disclosure and file 25
history as per Agilent, we do not find an explicit or special definition for the claim
Interference No. 105,960
Caltech v. Lockheed Martin

35

term “barrier layer.” Therefore, we resort to its ordinary and customary meaning
as would be understood by one of ordinary skill in the art at the time of the
invention. See Phillips, 415 F.3d at 1312. The ordinary and customary meaning of
the claim term “barrier layer” can be evidenced by a variety of sources, including
“the words of the claims themselves, the remainder of the specification, the 5
prosecution history, and extrinsic evidence concerning relevant scientific
principles, the meaning of technical terms, and the state of the art.” Phillips, 415
F.3d at 1314. Typically, it is the use of the words in the context of the written
description and customarily by those skilled in the relevant art that accurately
reflects both the “ordinary” and the “customary” meaning of the terms in the 10
claims. Ferguson Beauregard/Logic Controls, Div. of Dover Res., Inc. v. Mega
Sys., LLC, 350 F.3d 1327, 1338 (Fed. Cir. 2003).
The claims, of course, do not stand alone. Rather, they
are part of a fully integrated written instrument,
consisting principally of a specification that concludes 15
with the claims. For that reason, claims must be read in
view of the specification . . . . [T]he specification is
always highly relevant to the claim construction analysis.
Usually, it is dispositive; it is the single best guide to the
meaning of a disputed term. 20

Phillips, 415 F.3d at 1321 (citations omitted). In other words, Lockheed’s own
specification is the best guide to the meaning of claim terms.
As described in connection with Fig. 2 of Lockheed’s specification, the
“barrier layer” is disposed between the photo absorbing layer and the contact layer. 25
Ex. 2001 at ¶[0009]; FF 6. The “barrier layer” is grown on the surface of the photo
absorbing layer, via a known growth process, until typically, no more than two
thousand angstroms. Ex. 2001 at ¶[0034]; FF 7-8. In addition, the composition of
the barrier layer can be graded differently at barrier interfaces, i.e., barrier/contact
Interference No. 105,960
Caltech v. Lockheed Martin

36

interface and barrier/absorber interface in order to make design more robust to
variations of alloys in the growth process. Ex. 2001 at ¶[0062]; FF 9. We find
nothing in Lockheed’s specification indicating these barrier interfaces, i.e.,
barrier/contact interface and barrier/absorber interface, are excluded from and are
not part of the “barrier layer.” Accordingly, we find these barrier interfaces are all 5
parts of the barrier layer, from the absorber junction to the contact junction, as
proposed by Lockheed. Because Lockheed’s claim construction is consistent with
the specification of the Lockheed ‘499 application, we agree with Lockheed’s
claim construction that “barrier layer” is defined to mean a layer of material
disposed between the absorber layer and the contact layer in a depletion-less nBn-10
type photo-detector including the interface between the barrier layer and the
absorber and contact layers.
2. “Concentration Gradient”
Neither Caltech nor Lockheed proffers claim construction for the claim term
“concentration gradient” in the context of the host disclosure, i.e., Lockheed’s 15
disclosure and file history as per Agilent.7 Likewise, neither party offers the plain
and ordinary meaning of “concentration gradient.”

7 In Motion 3 (Paper 22) for lack of written description, Caltech construes the term
“concentration gradient” to mean a “Molar concentration of at least one alloy
changing across the [barrier] layer.” Paper 22, p. 7. Lockheed responds that the
same term should be construed to mean “the concentration of an alloy changing in
the [barrier] layer.” Paper 43, p. 8. However, for purposes of written description
analysis, these claim constructions are improper because they are interpreted in
view of Caltech ‘411 patent, and not the host disclosure, i.e., Lockheed’s
disclosure as per Agilent. Likewise, Caltech’s attempt to impute the prosecution
history of Caltech ‘411 patent to Lockheed ‘499 application is also improper.
Paper 22, p. 9, l. 17 – p. 10, l. 5. Our Standing Order, S.O. ¶106.02 prohibits
incorporation by reference and combined papers. Nevertheless, both Caltech’s
proffered claim construction and Lockheed’s claim construction can be insightful
Interference No. 105,960
Caltech v. Lockheed Martin

37

Upon reviewing Lockheed’s specification, we do not find an explicit or
special definition for the claim term “concentration gradient.” Therefore, we resort
to its ordinary and customary meaning as would be understood by one with
ordinary skill in the art. See Phillips, 415 F.3d at 1312. The ordinary and
customary meaning of the claim term “concentration gradient” can be evidenced 5
from Lockheed’s specification. As described in connection with Fig. 13 of
Lockheed’s specification, the composition of the barrier layer can be graded
differently at barrier interfaces, i.e., barrier/contact interface and barrier/absorber
interface in order to make design more robust to variations of alloys in the growth
process. Ex. 2001 at ¶[0062]; FF 10-11. In other words, the concentration of an 10
alloy varies or changes during the growth process of a barrier layer. As such, we
construe the claim term “concentration gradient” to mean “concentration of an
alloy changing in and along a length (thickness) of the barrier layer.” We note,
however, that “concentration gradient” can be present at any particular location
within the “barrier layer” including, for example, at least one of (or both) an 15
interface between the barrier and absorption layers and an interface between the
barrier and contact layers, as described in Lockheed’s specification (FF 3-12, 23-
24) and further recited in Lockheed Claims 54-55.
3. “Barrier Layer Comprising a Concentration Gradient”
The transitional term “comprising” is a legally operative claim term that is 20
synonymous with “including” and is inclusive or “open-ended and does not
exclude additional, unrecited elements or method steps.” See, e.g., Mars Inc. v.
H.J. Heinz Co., 377 F.3d 1369, 1376 (Fed. Cir. 2004); Invitrogen Corp. v. Biocrest
Mfg., L.P., 327 F.3d 1364, 1368 (Fed. Cir. 2003) (“The transition ‘comprising’ in a

and instructive for claim construction determination in the context of Motion 4
(Paper 23) for lack of patentability.
Interference No. 105,960
Caltech v. Lockheed Martin

38

method claim indicates that the claim is open-ended and allows for additional
steps.”); and Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501, (Fed. Cir. 1997)
(“Comprising” is a term of art used in claim language which means that the named
elements are essential, but other elements may be added and still form a construct
within the scope of the claim.); see also M.P.E.P. § 2111.03. 5
Based on our claim construction of the term “barrier layer” and
“concentration gradient” and the inclusive nature of the transitional term
“comprising”, we construe the claim term “barrier layer comprising a
concentration gradient” to mean “the layer of material disposed between the
absorber layer and the contact layer of a depletion-less nBn-type photo detector 10
including an alloy whose concentration changes in the layer along a length
(thickness) of that layer between the absorber layer and the contact layer.” We
find such a construction is consistent with Lockheed’s specification and, likewise,
is based on and fully supported by the disclosures of both Lockheed ‘499
application and Caltech ‘411 patent. 15
4. “Grading”, “Graded with a First Grading”, “Graded with a Grading”, and
“Grading at [an] Interface”
Neither Caltech nor Lockheed proffers claim construction for these claim
terms in the context of the host disclosure, i.e., Lockheed’s disclosure and file
history as per Agilent. Nevertheless, in some cases, as here, the ordinary meaning 20
of claim language as understood by a person of skill in the art may be readily
apparent even to lay judges, and claim construction in such cases involves little
more than the application of the widely accepted meaning of commonly
understood words. See Phillips, 415 F.3d at 1314. For example, the term
“interface” or “barrier interface” as used in Lockheed ‘499 application refers to a 25
heterointerface between the barrier layer and the absorber layer, or between the
Interference No. 105,960
Caltech v. Lockheed Martin

39

barrier layer and the contact layer. Ex. 2001 at ¶[0062]. Therefore, the widely
accepted meaning of the term “interface” or “barrier interface” is a place where the
barrier layer and the absorber layer meet, or where the barrier layer and the contact
layer meet. The remaining words such as “grading” or “graded” are given their
plain meaning consistent with the construction of “concentration gradient” offered 5
above with respect to Lockheed ‘499 application.

2.
Legal Standard for 35 U.S.C. § 103(a)
Once the meaning of the claims is determined, the next step is to determine 10
whether the claim is obvious under 35 U.S.C. § 103(a). “Section 103 forbids
issuance of a patent when ‘the differences between the subject matter sought to be
patented and the prior art are such that the subject matter as a whole would have
been obvious at the time the invention was made to a person having ordinary skill
in the art to which said subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 15
U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including: (1) the scope and content of the prior
art, (2) any differences between the claimed subject matter and the prior art, (3) the
level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 20
(1966). See also KSR, 550 U.S. at 406-07 (“While the sequence of these questions
might be reordered in any particular case, the [Graham] factors continue to define
the inquiry that controls.”). While the analysis under 35 U.S.C. § 103 allows
flexibility in determining whether a claimed invention would have been obvious,
“[w]e must still be careful not to allow hindsight reconstruction of references to 25
reach the claimed invention without any explanation as to how or why the
Interference No. 105,960
Caltech v. Lockheed Martin

40

references would be combined to produce the claimed invention.” Innogenetics,
N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3 (Fed. Cir. 2008). To reach a non-
hindsight driven conclusion of obviousness in view of multiple references, there
must be “some rationale, articulation, or reasoned basis to explain why the
conclusion of obviousness is correct.” In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 5
2006). The reasoning is important “because inventions in most, if not all, instances
rely upon building blocks long since uncovered, and claimed discoveries almost of
necessity will be combinations of what, in some sense, is already known.” KSR
550 U.S. at 418-19.
Caltech has determined, and Lockheed has agreed that a person of ordinary 10
skill in the art is one with at least a graduate degree in physics or at least 6 years of
experience in the field of semiconductor fabrication, or an equivalent combination
of education and experience. Paper 23, p. 22-23; Paper 44, p. 7. However, neither
Caltech nor Lockheed provides expert testimony regarding the state of the art, i.e.,
nBn photo detector structure, the differences between the claimed subject matter 15
and the prior art, and the reason why the references would be combined to produce
the claims of Lockheed ‘499 application.
Turning now to all the contested Claims 26-29, 36, 37, 39, 43-47, 49, and
53-55 of Lockheed ‘499 application (Paper 7; Ex. 2001), these claims can be
divided into two groups based upon the claimed subject matter: (1) Claims 45-47, 20
49, and 54-55 and (2) Claims 26-29, 36, 37, 39, 43-44, and 53. The claims of the
first group include the “barrier layer comprising a concentration gradient”
limitation (Claims 45-47, 49, and 54-55). The claims of the second group do not
include the broad “barrier layer comprising a concentration gradient” limitation,
but include specific, albeit different ways the barrier layer is compositionally 25
Interference No. 105,960
Caltech v. Lockheed Martin

41

graded at interfaces between the barrier layer and the photo-absorbing
layer/contact layer (Claims 26-29, 36, 37, 39, 43-44, and 53).

3.
We first address Claims 45-47, 49, and 54-55 of Lockheed ‘499 application. 5
Lockheed Claim 45 recites a detector comprising:
“an absorption layer for generating electrons-hole pairs in
response to absorbed photons, the absorption layer comprising a
semiconductor having majority carriers and minority carriers;
a barrier layer comprising a semiconductor adjacent to the 10
absorption layer to provide a barrier to the majority carriers, the
barrier layer comprising a concentration gradient; and
a contact layer comprising a semiconductor adjacent to the
barrier layer; and
where the detector has no substantial depletion layer.” 15

Paper 7; Ex. 2001, Claim 45 (emphasis added).
Lockheed Claim 46 further recites “the absorption layer and the contact
layer are n-type semiconductors so that the majority carriers are electrons and the
minority carriers are holes.” Paper 7; Ex. 2001, Claim 46. 20
Lockheed Claim 49 further requires “the concentration gradient is
configured to reduce minority carrier recombination by reducing the size of a
carrier trap at an interface of the barrier and contact layers.” Paper 7; Ex. 2001,
Claim 49.
Lockheed Claims 54-55 further recite “the concentration gradient is present 25
at least one of [or both] an interface between the barrier and absorption layers and
an interface between the barrier and contact layers.” Paper 7; Ex. 2001, Claims 54-
55.
Interference No. 105,960
Caltech v. Lockheed Martin

42

In other words, Lockheed Claims 45-46, 49, and 54-55 are broad, and
simply recite a basic nBn detector structure that comprises a sequence of: (i) an
absorption layer, (ii) a middle barrier layer, and (iii) a contact layer, and that has no
substantial depletion layer, known as “depletion-less nBn-type photo-detector,”
coupled with a further distinction that the “barrier layer comprising a concentration 5
gradient” albeit that “concentration gradient” can be present anywhere within the
“barrier layer” including, for example, at least one of (or both) an interface
between the barrier and absorption layers and an interface between the barrier and
contact layers.
Lockheed Claim 47 is similar to Claim 45 in scope of coverage, except that 10
“the absorption layer, the barrier layer, and the contact layer each having a band
for conduction of the minority carriers,” and that “the concentration gradient such
that the band is aligned across the barrier layer and the contact layer.” Paper 7; Ex.
2001, Claim 47.
15
Caltech’s Contentions
Caltech contends Claims 45-47, 49, and 54-55 of Lockheed ‘499 application
are unpatentable under 35 U.S.C. § 103(a) over two different combinations of prior
art: (1) the combination of Maimon ‘900 (Ex. 2003) and Lin ‘184 (Ex. 2004); and
(2) the combination of Maimon ‘900 (Ex. 2003), White ‘063 (Ex. 2024), Capasso 20
(Ex. 2010), and Lin ‘184 (Ex. 2004).8 Paper 23 at 1-25 & Appendix 3A-3B (claim
charts).

8 Lin ‘184 and Capasso (Ex. 2010) are further cited to support the second proposed
combination. Paper 23 at 13:23-14:17. However, Lin ‘184 is only cited for a
disclosure of the same photo detector having a barrier layer between absorber and
contact layers as similarly disclosed by Maimon ‘900. Likewise, Capasso is also
cited for a disclosure of “band gap grading [which] allows one to literally design
Interference No. 105,960
Caltech v. Lockheed Martin

43

In particular, Caltech asserts that an nBn detector structure comprising a
sequence of: (i) an n-doped semiconductor photo absorbing layer, (ii) a middle
barrier layer, and (iii) an n-doped semiconductor contact layer, known as
“depletion-less nBn-type photo-detector” was well known in the prior art as early
as 2003, as evidenced from Maimon ‘900. Paper 23, pp. 9-11; Ex. 2001, ¶[0029]; 5
Ex. 2003 at Abstract, 2:39-55, 3:5-7, Figs. 1A-1B; Ex. 2014; and FF 1-4.
According to Caltech, Maimon discloses a photodetector including a photo
absorbing layer, a contact layer, and a barrier layer disposed between the absorber
and contact layers, and configured to prevent majority transport. Paper 23 at
23:20-23. 10
Caltech does not expressly identify the differences between Maimon and
Lockheed’s claims, but implies the differences reside in “the barrier layer
comprising a concentration gradient.” Caltech asserts that grading the
concentration of alloys at interfaces between layers in a semiconductor device was
also well known in the prior art, as evidenced from Lin ‘184 or White ‘063.9 Paper 15
23 at 11-20.

and tailor the important transport properties to a given application” as similarly
disclosed by White ‘063 (Ex. 2024 at 7:1-24, 9:6-12, and Fig. 2). For purposes of
brevity, only Maimon ‘900 and White ‘063 are needed for the second combination
rejection. Both Lin ‘184 and Capasso (Ex. 2010) are considered redundant and
need not be included for purposes of the § 103(a) rejection. Paper 23, Appendix
3B at 1-14.
9 In addition to Lin ‘184 (Ex. 2004) and White ‘063 (Ex. 2024), other prior art
sources relied upon to show “grading the composition at the interfaces” between
layers of a semiconductor device include: Shubert (Ex. 2009 and Ex. 2022),
Capasso (Ex. 2010 and Ex. 2025), Lundstrom (Ex. 2011), Cheung (Ex. 2016),
Frensley (2017), Chu (Ex. 2018), Forrest (Ex. 2019), Kroemer (Ex. 2020), Ruyven
(Ex. 2021), Thompson (Ex. 2023), and Giboney (Ex. 2026). Paper 23, pp. 11-20.
However, these references are considered duplicative and undue multiplicity; only
Maimon ‘900 (Ex. 2003), White ‘063 (Ex. 2024) and Giboney (Ex. 2026) pertain
Interference No. 105,960
Caltech v. Lockheed Martin

44

Caltech’s motion provides a limitation-by-limitation analysis explaining why
each of the claim limitations is described by: (1) the combination of Maimon ‘900
and Lin ‘184, and (2) the combination of Maimon ‘900 and White ‘063. Paper 23
at 22:15-25:11. Appendix 3A to Caltech’s motion provides a claim chart
identifying where each limitation of Claims 45-47, 49, and 54-55 of Lockheed 5
‘499 application is disclosed by Maimon ‘900 and Lin ‘184. Paper 23 at Appendix
3A. Likewise, Appendix 3B to Caltech’s motion provides a claim chart identifying
where each limitation of Claims 45-47, 49, and 54-55 of Lockheed ‘499
application is disclosed by Maimon ‘900 and White ‘063. Again, Caltech does not
expressly identify the differences between Maimon and Lockheed Claims 45-47, 10
49, and 54-55, but implies a difference in the context of “the barrier layer
comprising a concentration gradient.” Paper 23 at Appendix 3B.
Lockheed does not dispute Caltech’s factual assertions regarding: (1) known
nBn detector structures and (2) barrier interface grading in general. Paper 44 at
11:7-15. Rather, Lockheed’s opposition (Paper 44) is predicated upon: (1) 15
fundamental differences between depletion-region devices, as disclosed by Lin
‘184 and depletion-less, nBn devices, as disclosed by Maimon ‘900 and both the
Caltech ‘411 patent and the Lockheed ‘499 application (Paper 44 at 12-14); (2) all
the references identified by Caltech Motion 4 (Paper 23 at 11:11-18:1), including
Lin ‘184, pertain to devices having depletion regions intentionally created through 20
or associated with traditional p-n junctions, which is the exact opposite of what is

“depletion-less nBn detector structure” as disclosed by Lockheed ‘499 application.
See Paper 44, p. 11 In contrast, all the references identified by Caltech in their
Motion 4 (Paper 23), including Lin ‘184 (Ex. 2004) pertain to devices having
depletion regions intentionally created through or associated with p-n junctions,
which have a structure that is different from both Lockheed’s and Caltech’s
claimed “nBn-type photo-detector.” Paper 23 at 11-20.
Interference No. 105,960
Caltech v. Lockheed Martin

45

desired and taught with respect to an nBn-type photo detector (Paper 44 at 11:7-18;
Ex. 2012 at 11:27-29); (3) as such, incorporating Lin ‘184 into Maimon ‘900
would not work or its intended purpose and would cause a depletion region to
occur and render the barrier of the nBn-type photo detector useless, producing an
inoperable device (Paper 44 at 15-18); and (4) there is no basis or articulated 5
reasoning to incorporate White ‘063 into Maimon ‘900 to arrive at the subject
matter of Claims 45-47, 49, and 54-55 of Lockheed ‘499 application because
White ’063 teaches away from grading barrier interfaces in depletion-less nBn
device. Paper 44 at 12-15.
10
Maimon ‘900 and Lin ‘184
In particular, Lockheed argues Lin ‘184 teaches the advantages of grading
interfaces of barriers that allow majority carrier flow and block minority carrier
flow in a depletion region, p-n junction device. Paper 44 at 16 (citing Ex. 2004 at
7:24-29). Therefore, if this grading technique as disclosed by Lin ‘184 is applied 15
to depletion-less, nBn type devices as disclosed by Maimon ‘900 or Lockheed ‘499
application, we find the combination would be contrary to the subject matter of
Maimon ‘900, as such, would not be operable as a depletion-less, nBn-type photo
detectors as required by Lockheed’s claims. Ex. 2004 at 6:52-57 and 7:24-29.
Caltech acknowledges the difference between the desired flow of majority 20
carriers as disclosed by Lin ‘184 and the desired flow of minority carriers as
disclosed by the Lockheed ‘499 application, but nevertheless imputes one skilled
in the art with a knowledge base sufficient would understand the problems and
nevertheless make the combination of Maimon ‘900 and Lin ‘184. Paper 51 at
9:12-27. 25
Interference No. 105,960
Caltech v. Lockheed Martin

46

We disagree with Caltech. First, as correctly noted by Lockheed, Lin ‘184
teaches grading interfaces to reduce heterojunction discontinuities, such as spikes
and wells, across the p-n junction. Ex. 2004 at 7:24-29. According to Lin ‘184,
the blocking structures are barriers used to block the flow of minority carriers and
grading at the interfaces as taught by Lin ‘184 “advantageously reduces any 5
barriers to majority carrier flow from the absorption region to the contact
structure” as shown in Fig. 2B of Lin ‘184. Ex. 2004 at 6:52-57. In other words,
Lin ‘184 teaches the exact opposite of the claimed subject matter of Lockheed ‘499
application, i.e., grading an interface area between the absorber and barrier layers,
and/or an interface area between the barrier and contact layers in order to facilitate 10
minority carrier transport while continuing to inhibit or prevent majority carrier
transport across the barrier. Ex. 2001 at Fig. 13, ¶¶[0024], [0062], Claims 26, 36,
and 43. Based on Lin’s teachings, we find a person of ordinary skill in the art
would not have had reason to follow the path set out by Lockheed claims because:
(1) incorporating the grading interfaces of Lin ‘184 into an nBn-type photo 15
detector as disclosed by Maimon ‘900 would reduce the barrier structure of
majority carrier transport that is contrary to the requirements of Lockheed claims,
and (2) in doing so would cause depletion regions to occur and would render the
barrier of the nBn-type photo detector useless, producing an inoperable device.
Ex. 2004 at 6:52-57 and 7:24-29; see In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 20
1984) (finding no suggestion to modify a prior art device where the modification
would render the device inoperable for its intended purpose). As such, we agree
with Lockheed that Lin ‘184 teaches away from making the combination as
proposed by Caltech.
Our holding is consistent with the Examiner’s conclusion that, during the 25
prosecution of Lockheed ‘499 application, Lin ‘184 was:
Interference No. 105,960
Caltech v. Lockheed Martin

47

unsuitable for combination with Maimon because Lin teaches a
photodetector having “a p-n junctions absorption region.” (Lin
at Para. [0021]) Applicants respectfully note that a p-n junction
inherently has a depletion region at the boundary between the p-5
type and n-type semiconductors. Maimon, by contrast, is
related to barrier-type (nBn, pBp, etc.) devices that do not have
substantial depletion regions. The underlying physical
properties and operating principles of depletion-region devices
and depletion-less devices are fundamentally different. 10

Ex. 2005 at p. 9 (emphasis added).
In view of these reasons, and the absence of any evidence to the contrary,
such as expert testimony regarding the combined teachings of Maimon ‘900 and
Lin ‘184, we find Caltech’s positions as to the combined teachings of Maimon 15
‘900 and Lin ‘184 are not supported by the record. Therefore, Caltech has not
established by a preponderance of evidence that the subject matter of Claims 45-
47, 49 and 54-55 of Lockheed ‘499 application is unpatentable under 35 U.S.C. §
103(a) as being obvious over Maimon ‘900 and Lin ‘184.
20
Maimon ‘900 and White ‘063
With respect to White ‘063, Lockheed acknowledges that, contrary to Lin
‘184, White ‘063 teaches grading barrier interfaces in the same depletion-less,
nBn-type device as disclosed by Maimon ‘900. Paper 44 at 11:11-17. Lockheed
argues, however, that White ‘063 expressly teaches away from intentionally 25
grading barrier interfaces in a depletion-less device. Id. at 15. To support that
“teaching away” argument, Lockheed relies on a portion of White ‘063 which
describes:
“[t]o avoid the need for compositional gradation at the emitter-
barrier interface in order to remove large heterostructure 30
Interference No. 105,960
Caltech v. Lockheed Martin

48

discontinuities in bands, it is preferable that the emitter and barrier
materials are n-type and p-type, respectively.”

Paper 44, p. 12 (citing Ex. 2024 at col. 2, ll. 17-22).
We do not find Lockheed’s argument persuasive on this point. First, “[a] 5
reference may be said to teach away when a person of ordinary skill, upon reading
the reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was taken by
the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). However, a mere
preference to dope materials with n-type or p-type to avoid the need for 10
compositional gradation at a particular barrier interface as suggested by White
‘063, without more, is neither a discouragement nor a diverging direction, and
certainly, does not show that White ‘063 is “teaching away” from the invention
claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Second, as correctly
noted by Caltech, White ‘063 teaches that grading can be used to match Fermi 15
levels: “The Fermi level is graded in the center layer 11 to accommodate the
different levels in the two cladding layers 9 and 13.” Paper 51, p. 8 (citing Ex.
2024 at col. 8, ll. 41-43, Fig. 1). According to White ‘063, “discrepancies
[alignment of Fermi levels] are reduced by inevitable compositional grading.” Id.
(citing Ex. 2024 at col. 7, l. 24). 20
We have reviewed Caltech’s comparison of the teachings of Maimon ‘900
and White ‘063 with each limitation recited in Claims 45-47, 49, and 54-55 of
Lockheed ‘499 application. We note, however, the only difference between the
invention of independent claims 45 and 47 of Lockheed ‘499 application and
Maimon ‘900 is the “barrier layer comprising a concentration gradient” and that 25
difference is taught by White ‘063 in the context of “compositional grading.” See
Ex. 2024 at 7:1-24, 9:6-12, and Fig. 2. Based on the combined teachings of
Interference No. 105,960
Caltech v. Lockheed Martin

49

Maimon ‘900 and White ‘063, our claim construction of the term “barrier layer
comprising a concentration gradient” and the absence of any evidence to the
contrary, we find that Caltech’s positions as to the combined teachings of Maimon
‘900 and White ‘063 are at least facially supported by the record. We also
conclude a person skilled in the art would have recognized that compositional 5
grading at any barrier interface would at least create a “barrier layer comprising a
concentration gradient” as recited in each of independent claims 45 and 47 of
Lockheed ‘499 application. Accordingly, we are persuaded that Caltech has
established that the subject matter of Claims 45-47, 49, and 54-55 of Lockheed
‘499 application is unpatentable under 35 U.S.C. § 103(a) as being obvious over 10
Maimon ‘900 and White ‘063. See Ex. 2010 at p. 263, ¶2; p. 275, ¶3.

4.
Presumption Under 37 C.F.R. §41.207(c)
A party moving for judgment based on prior art must also explain why the 15
prior art does not apply to the party’s claims. See Navarrini v. Worm, 79 USPQ2d
1178, 1183 (BPAI 2005). Specifically, 37 C.F.R. § 41.207(c) states:
“When a motion for judgment of unpatentability against an
opponent’s claim on the basis of prior art is granted, each of the
movant’s claims corresponding to the same count as the opponent’s 20
claim will be presumed to be unpatentable in view of the same prior
art unless the movant in its motion rebuts this presumption.”

Caltech never seriously challenges the presumption created by 37 C.F.R. §
41.207(c). In its original motion, Caltech provides no explanation why Caltech’s 25
involved claims (Claims 1-6 of Caltech ‘411 patent) are not unpatentable over the
same prior art against Claims 45-47, 49, and 54-55 of Lockheed ‘499 application.
Paper 23 at 24. Instead, Caltech refers to arguments and evidence submitted
Interference No. 105,960
Caltech v. Lockheed Martin

50

related motions to support an assertion that Caltech’s claims are directed to subject
matter that is patentably distinct from Lockheed’s claims. Id.
In its opposition (Paper 44), Lockheed responds that: (1) Caltech’s
incorporation by reference is not permitted under S.O. ¶106.2 and (2) Caltech has
failed to explain why the prior art identified in Caltech Motion 4 (Paper 23) is not 5
equally applicable to Caltech’s own Claims 1-6 of Caltech ‘411 patent (Paper 13;
Ex. 1002) corresponding to the Count. Paper 44 at 4.
In its reply (Paper 51), Caltech now argues all the prior art it cited is not
applicable to Caltech’s own Claims 1-6 because the prior art teaches grading at an
interface between absorption/barrier layers and between barrier/contact layers, 10
whereas Caltech Claims 1-6 are directed to a “barrier layer comprising a
concentration gradient.” Paper 51 at 2. In particular, Caltech argues: (1) grading
at an interface is different from a barrier layer comprising a concentration gradient;
(2) Caltech ‘411 patent discloses both grading at an interface and a layer
comprising a concentration gradient; (3) Lockheed ‘499 application only discloses 15
grading at heterojunctions to reduce spikes; (4) grading at the interface is used to
reduce spikes at heterojunctions in both p-n junction devices and nBn devices; (5)
known semiconductor techniques such as heterojunction grading to reduce spikes
are applicable to nBn-type devices; (6) the teachings of prior art, such as White
‘063 (Ex. 2024) are applicable to Lockheed; (7) a device combining Lin’s teaching 20
of heterojunction grading with Maimon’s teaching of an nBn-type device would be
operable; and (8) Lockheed’s failure to address a litany of prior art references cited
by Caltech regarding compositional grading at the interface to reduce
heterojunction discontinuities. Paper 51 at 2-10.
We disagree with Caltech. First, Claims 1-6 of Caltech ‘411 patent are 25
essentially identical to Claims 45-47, 49, and 54-55 of Lockheed ‘499
Interference No. 105,960
Caltech v. Lockheed Martin

51

application.10 Second, and contrary to Caltech’s arguments, grading at an interface
of a barrier layer would necessarily create a “barrier layer comprising a
concentration gradient” because such a concentration gradient could be present at
any particular location within the “barrier layer” including, for example: (1) across
the barrier layer as proffered by Caltech, or alternatively, (2) at least one of (or 5
both) an interface between the barrier and absorption layers and an interface
between the barrier and contact layers, as described by Lockheed’s specification
(FF 3-12, 23-24). Thus, we find no patentable distinction between grading at an
interface of a barrier layer and a barrier layer comprising a concentration gradient.
Third, none of Caltech’s arguments adequately explains to us why Caltech’s 10
teachings of a “barrier layer comprising a concentration gradient” are patentably
distinguishable over the same prior art cited against Lockheed. Lastly, and most
tellingly, Caltech even acknowledges that “[w]hile the applicability of the prior art
to the [Caltech] ‘411 patent may be an interesting aside, it is not relevant to this
motion, nor does it change the fact that all of the prior art is applicable to the 15
[Lockheed] ‘499 application.” Paper 51 at 2.
For the reasons set forth above, we find Caltech has failed to rebut the
presumption under 37 C.F.R. § 41.207(c) regarding Claims 1-6 of Caltech ‘411
patent, and, as such, Claims 1-6 of Caltech ‘411 patent are presumed unpatentable
over Maimon ‘900 and White ‘063. 20

5.

10 Lockheed Claim 45 differs from Caltech Claim 1 only in that the “detector” is
further defined as having “no substantial depletion layer.” Paper 7 at 4-5.
However, such a limitation is inherent in all nBn-type photo detector structure and,
as such, does not require additional or separate patentability determination.
Interference No. 105,960
Caltech v. Lockheed Martin

52

We next address the second group - Claims 26-29, 36, 37, 39, 43-44, and 53
of the Lockheed ‘499 application.
Lockheed independent claim 26 recites a photodetector comprising:
“a photo absorbing layer having a predetermined doping type,
a contact layer having the predetermined doping type, and 5
a barrier layer disposed between said photo absorbing and
contact layers, said barrier layer being configured to prevent majority
carrier transport;
where the barrier layer is graded with a first grading at a first
interface area between said barrier layer and said contact layer and 10
graded with a second grading at a second interface area between said
barrier layer and said photo absorbing layer such that
the first grading creates a graded transition from the minority
carrier band edge of the barrier layer to the minority carrier band
edge of the contact layer; and 15
the second grading creates a graded transition from the
minority carrier band edge of the photo absorbing layer to the
minority carrier band edge of the barrier layer.”

Paper 7; Ex. 2001, Claim 26 (emphasis added). 20
Similarly, Lockheed independent claim 36 also recites: “where the barrier
layer is graded with a first grading at a first interface area between said barrier
layer and said contact layer such that the first grading creates a graded transition
from the minority carrier band edge of the barrier layer to the minority carrier band
edge of the contact layer.” Paper 7 at 3-4; Ex. 2001, Claim 36. 25
Likewise, Lockheed independent claim 43 alternatively recites: “where the
barrier layer is graded with a grading that creates a graded transition from the
minority carrier band edge of the barrier layer to the minority carrier band edge of
the contact layer and also creates a graded transition from the minority carrier band
edge of the photo absorbing layer to the minority carrier band edge of the barrier 30
layer.” Paper 7 at 4; Ex. 2001, Claim 43.
Interference No. 105,960
Caltech v. Lockheed Martin

53

In other words, in contrast to a simple “concentration gradient” included in
the “barrier layer” as recited in Claims 45-47, 49, and 54-55 of Lockheed ‘499
application, each of Lockheed independent claims 26, 36 and 43 requires not only
a “barrier layer … configured to prevent majority carrier transport” but also
“graded with a first grading at first interface area … a second grading at a second 5
interface area … such that the first grading creates a graded transition from the
minority carrier band edge of the barrier layer to the minority carrier band edge of
the contact layer.” In other words, the gradient must extend across the interface
areas of the barrier layer. As a result, these graded barrier interfaces can
advantageously facilitate minority carrier transport while continuing to inhibit or 10
prevent majority carrier transport across the barrier. Ex. 2001 at Fig. 13 and
¶¶[0024], [0062].

Caltech’s Contentions
As with Claims 26-29, 36, 37, 39, 43-44, and 53 of Lockheed ‘499 15
application, Caltech also contends that: (1) nBn detector structures and (2)
compositional grading of barrier interfaces are well known, as evidenced from
either the combination of Maimon ‘900 and Lin ‘184, or the combination of
Maimon ‘900 and White ‘063. Paper 44 at 11:7-15. However, Caltech does not
expressly identify the differences between Maimon and Lockheed Claims 26-29, 20
36, 37, 39, 43-44, and 53.
Nevertheless, Caltech argues generally that grading the composition at
barrier interfaces would result in a graded transition between the band edges of the
adjacent layers and somehow would arrive at the subject matter of Claims 26-29,
36, 37, 39, 43-44, and 53 of Lockheed ‘499 application. Paper 23 at 23-24. 25
Interference No. 105,960
Caltech v. Lockheed Martin

54

We are not persuaded by Caltech’s arguments. First, we find that Lin ‘184
teaches grading barrier interfaces of a depletion region, p-n junction device and
agree with Lockheed that, if applied to an opposing device, such as a depletion-
less, nBn type device as disclosed by Maimon ‘900 and the Lockheed ‘499
application, the combination would not be operable as a depletion-less, nBn-type 5
photo detector. Paper 44 at 16 (citing Ex. 2004 at 7:24-29). Consequently, we find
Caltech has not established by a preponderance of evidence that the subject matter
of Claims 26-29, 36, 37, 39, 43-44, and 53 of Lockheed ‘499 application is
unpatentable under 35 U.S.C. § 103(a) as rendered obvious over Maimon ‘900 and
Lin ‘184. 10
Second, we find White ‘063 teaches compositional grading barrier interfaces
of the same depletion-less, nBn type device as disclosed by Maimon ‘900 and
Lockheed ‘499 application. As such, a person skilled in the art would have
recognized such compositional grading at barrier interfaces as suggested by White
‘063 could be incorporated into a depletion-less, nBn type device as disclosed by 15
Maimon ‘900. The same person skilled in the art would also have recognized such
compositional grading at barrier interfaces would eliminate bandgap
discontinuities and reduce the spikes and notches and, as such, would be sufficient
to create “a concentration gradient” as recited in the subject matter of Claims 45-
47, 49, and 54-55 of the Lockheed ‘499 application. However, such compositional 20
grading at barrier interfaces would also reduce barriers to both majority carrier
flow and minority carrier flow. Ex. 2001 at Fig. 13 and ¶¶[0024], [0062]. This is
contrary to the requirements of Claims 26-29, 36, 37, 39, 43-44, and 53 of
Lockheed ‘499 application, i.e., to facilitate minority carrier transport while
continuing to inhibit or prevent majority carrier transport across the barrier. Ex. 25
2001 at Fig. 13 and ¶¶[0024], [0062]. We find Caltech has not meaningfully
Interference No. 105,960
Caltech v. Lockheed Martin

55

explained why one having ordinary skill in the art would have recognized that the
minority carrier transport in the structure of Maimon ‘900 and White ‘063 could be
promoted while continuing to inhibit or prevent the majority carrier transport
across the barrier, and how the determination of obviousness could be based upon
the teachings of Maimon ‘900 and White ‘063. 5
Caltech has not provided sufficient evidence or directed us to any scientific
reasoning, apart from mere conclusory statements, to support an assertion that the
combination of Maimon ‘900 and White ‘063 would facilitate minority carrier
transport while continuing to inhibit or prevent majority carrier transport across the
barrier of a depletion-less, nBn type device. Caltech’s arguments and conclusory 10
statements, which are unsupported by sufficient factual evidence, are entitled to
little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Certainly, Caltech’s arguments alone
cannot take the place of evidence lacking in the record. Meitzner v. Mindick, 549
F.2d 775, 782 (CCPA 1977); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 15
1974).
Based on this record, we fail to findany reason or motivation to combine
those teachings of White ‘063 and Maimon ‘900 to arrive at the subject matter of
Claims 26-29, 36, 37, 39, 43-44, and 53 of Lockheed ‘499 application in order to
facilitate minority carrier transport while continuing to inhibit or prevent majority 20
carrier transport across the barrier of a depletion-less, nBn type device. Ex. 2001
at Fig. 13 and ¶¶[0024], [0062]. Accordingly, we find that Caltech has not
established by a preponderance of evidence that the subject matter of Claims 26-
29, 36, 37, 39, 43-44, and 53 of Lockheed ‘499 application is unpatentable under
35 U.S.C. § 103(a) as rendered obvious over Maimon ‘900 and White ‘063. 25

Interference No. 105,960
Caltech v. Lockheed Martin

56

VI. CONCLUSION
Based on the record before us, we conclude that Caltech has not met its
burden to show by the preponderance of evidence that: (1) the Lockheed ‘580
provisional application (Ex. 2002) lacks a constructive reduction to practice the
subject matter of the Count, and (2) Lockheed Claims 45-47 are unpatentable 5
under 35 U.S.C. § 112, first paragraph, for lacking written description support for a
“barrier layer comprising a concentration gradient.” As such, Caltech Motion 2
(Paper 21) is GRANTED relative to Lockheed’s first provisional application No.
60/865,793 (Ex. 2036) filed on November 14, 2006, but is otherwise DENIED
relative to Lockheed’s second provisional application No. 60/880,580 (Ex. 2002) 10
filed on January 12, 2007. Likewise, Cal Motion 3 (Paper 31) is DENIED as to
Lockheed Claims 45-47. Because Caltech Motion 5 (Paper 24) is contingent upon
the granting of Caltech Motion 3 (Paper 22), and Caltech Motion 3 (Paper 22) is
not GRANTED, the contingency has not materialized. Accordingly, Caltech
Motion 5 (Paper 22) is DISMISSED as moot. 15
We also conclude that Caltech has met its burden to show by the
preponderance of evidence that the subject matter of Claims 45-47, 49, and 54-55
of Lockheed ‘499 application is unpatentable under 35 U.S.C. § 103 over prior art,
including Maimon ‘900 and White ‘063. However, Caltech has not shown that the
subject matter of remaining Claims 26-29, 36, 37, 39, 43-44, and 53 of Lockheed 20
‘499 application is unpatentable under 35 U.S.C. § 103(a) over the same prior art.
We also conclude that Caltech has failed to rebut the presumption under 37 C.F.R.
§41.207(c) regarding Claims 1-6 of Caltech ‘411 patent and, as such, Claims 1-6 of
Caltech ‘411 patent are considered unpatentable over the same prior art by
operation of the presumption of 37 C.F.R. § 41.207(c). 25
Interference No. 105,960
Caltech v. Lockheed Martin

57

As a result of the above decisions, Caltech no longer has any patentable
claims in this interference and Lockheed remaining Claims 26-29, 36, 37, 39, 43-
44, and 53 of Lockheed ‘499 application have not been shown to be unpatentable.
The remaining Claims 7-12 of the Caltech ‘411 patent and Lockheed’s remaining
Claims 26-29, 36, 37, 39, 43-44, and 53 of Lockheed ‘499 application are 5
fundamentally different, and patentably distinct. The claims of Lockheed ‘499
application are directed to detector devices where grading is performed specifically
at “interfaces” between layers in order to facilitate minority carrier transport
(holes) while continuing to prevent majority carrier transport (electrons) across the
barrier, whereas the remaining claims of Caltech ‘411 patent are directed to 10
detector devices where the absorption layer is comprised of a chirped strain layer
supper lattice. Because of these significant differences, neither set of claims
renders the other obvious. Thus, these claim sets do not meet the two-way test,
and there is no interference-in-fact between remaining claims of Caltech ‘411
patent and Lockheed ‘499 application. See 37 C.F.R. §41.203(a). Because there 15
currently is no basis for formulating a count representing common patentable
subject matter of the parties, it is appropriate to terminate the interference at this
point. Consequently, we need not reach Lockheed Motion 1 (Paper 26) to
designate Lockheed Claims 29, 44, and 53 of Lockheed ‘499 application as not
corresponding to the Count. Therefore, Lockheed Motion 1 (Paper 26) is also 20
DISMISSED as moot.
Interference No. 105,960
Caltech v. Lockheed Martin

58

VII. ORDER
For the reasons discussed above, it is:
ORDERED that Caltech Motion 2 (Paper 21) alleging lack of benefit is
GRANTED relative to Lockheed’s first provisional application No. 60/865,793
filed on November 14, 2006, and is otherwise DENIED relative to Lockheed’s 5
second provisional application No. 60/880,580 filed on January 12, 2007;
FURTHER ORDERED that Caltech Motion 3 (Paper 22) alleging lack of
written description and enablement under 35 U.S.C. § 112, first paragraph is
DENIED as to Claims 45-47 of Lockheed ‘499 application;
FURTHER ORDERED that Caltech Motion 4 (Paper 23) alleging lack of 10
patentability under 35 U.S.C. § 103(a) is GRANTED as to Claims 45-47, 49, and
54-55, and is otherwise DENIED as to remaining Claims 26-29, 36, 37, 39, 43-44,
and 53 of Lockheed ‘499 application;
FURTHER ORDERED that, because Caltech did not overcome the
presumption under 37 C.F.R. §41.207(c) that its own claims were unpatentable for 15
the same reasons set forth for Lockheed’s involved claims, and as such, we hold
that Claims 1-6 of Caltech ‘411 patent are also unpatentable under 35 U.S.C.
§ 103(a) over the same prior art cited in Caltech Motion 4 (Paper 23);
FURTHER ORDERED that: (1) Caltech contingent Motion 5 (Paper 24) for
no interference-in-fact as to Lockheed remaining Claims 26, 29, 36, 37, 39, 43-44, 20
49, and 53-55 of Lockheed ‘499 application; and (2) Lockheed Motion 1 (Paper
26) to designate Lockheed Claims 29, 44, and 53 of Lockheed ‘499 application as
not corresponding to the Count are DISMISSED as MOOT;
FURTHER ORDERED that judgment be entered under 37 C.F.R. § 41.127
against the subject matter of Caltech Claims 1-6 of Caltech ‘411 patent and 25
Interference No. 105,960
Caltech v. Lockheed Martin

59

Lockheed Claims 45-47, 49, and 54-55 of Lockheed ‘499 application in a separate
paper; and
FURTHER ORDERED that a copy of this decision shall be entered into the
files of Caltech’s involved patent, U.S. Patent No. 7,737,411 and Lockheed’s
involved application, U.S. Patent Application No. 13/344,499. 5

/Richard E. Schafer/ )
RICHARD E. SCHAFER ) 10
Administrative Patent Judge )
)
/John G. New/ ) PATENT TRIAL AND
JOHN G. NEW ) APPEAL BOARD
Administrative Patent Judge ) 15
)
/Hung H. Bui/ )
HUNG H. BUI )
Administrative Patent Judge )
20

Interference No. 105,960
Caltech v. Lockheed Martin

60

cc (via email delivery):

Attorney for Junior Party – Caltech:
Joel A. Kauth, Esq.
John W. Peck, Esq. 5
KPPB LLP
2400 E. Katella Ave., Suite 1050
Anaheim, CA 92806
Email: Joel.Kauth@kppb.com
Email: John.Peck@kppb.com 10

Attorney for Senior Party – Lockheed Martin:
Michael K. Mutter, Esq.
Naphtali Y. Matlis, Esq.
Birch, Stewart, Kolasch & Birch, LLP 15
8110 Gatehouse Road, Suite 100 East
Falls Church, VA 22042
Email: mailroom@bskb.com

20