Seoul Viosys Co., Ltd.

Patent Trials and Appeals Board

Jun 8, 2020

IPR2020-00248 (P.T.A.B. Jun. 8, 2020)

Trials@uspto.gov Paper 8
571-272-7822 Entered: June 8, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SATCO PRODUCTS, INC.,
Petitioner,

v.

SEOUL SEMICONDUCTOR CO, LTD,
Patent Owner.
____________

IPR2020-00248
Patent 9,716,210 B2
____________

Before JEFFREY W. ABRAHAM, JESSICA C. KAISER, and
KAMRAN JIVANI Administrative Patent Judges.

ABRAHAM, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

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I. INTRODUCTION
Satco Products, Inc. (“Petitioner”), filed a Petition (Paper 2, “Pet.”)
requesting inter partes review of claims 1, 3, 4, 9, 10, 12, 14, 18, 19, 21, and
22 of U.S. Patent No. 9,716,210 B2 (Ex. 1001, “the ’210 patent”). Seoul
Semiconductor Co., Ltd (“Patent Owner”), filed a Preliminary Response to
the Petition (Paper 6, “Prelim. Resp.”).
We have authority to determine whether to institute an inter partes
review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2019). The standard
for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which
provides that an inter partes review may not be instituted “unless the
Director determines . . . there is a reasonable likelihood that the petitioner
would prevail with respect to at least 1 of the claims challenged in the
petition.”
For the reasons set forth below, upon considering the Petition,
Preliminary Response, and evidence of record, we determine the information
presented in the Petition fails to establish a reasonable likelihood that
Petitioner would prevail with respect to at least one of the challenged claims.
Accordingly, we deny the Petition, and do not institute an inter partes
review.
A. Related Proceedings
The parties identify Seoul Semiconductor Co., Ltd. v. Satco Products,
Inc., Case No. 2:19-cv-04951 (E.D.N.Y.); Seoul Semiconductor Co., LTD v.
The Factory Depot Advantages, Inc., Case No. 2:19-cv-05065 (C.D. Cal.);
Seoul Semiconductor Co., Ltd. v. Bed Bath and Beyond, Inc., Case No. 2:18-
cv-03837 (C.D. Cal). Pet. 1; Paper 5, 1. Patent Owner additionally
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identifies Seoul Semiconductor Co., Ltd., v. Healthe, Inc., Case No. 6:19-cv-
02264 (M.D. Fla.). Paper 5, 1.
B. The ’210 Patent
The ’210 patent, titled “Light Emitting Diode and Method of
Fabricating the Same,” issued on July 25, 2017. Ex. 1001, code (45), (54).
The ’210 patent is directed to a light emitting diode (LED) having
“improved electrostatic discharge characteristics and/or luminous
efficiency.” Ex. 1001, 1:24–28. The ’210 patent discloses several
embodiments of LEDs comprising various layers, including an n-type
contact layer, a p-type contact layer, an active region having a multi-
quantum well structure, a superlattice layer, an electron reinforcing layer,
and a spacer layer disposed between the n-type contact layer and the active
region. Ex. 1001, 3:31–4:13.
According to the ’210 patent, using different compositions and doping
configurations in each layer provides for the desired improvements in LED
properties. Ex. 1001:13:60–14:33. For example, the ’210 patent explains
that doping only the final layer of the superlattice closest to the active region
with high-concentration silicon improves leakage current and electrostatic
discharge characteristics of the LED. Ex. 1001, 3:35–44, 8:10–62, 13:60–
65. Additionally, the ’210 patent teaches that
the present invention forms the spacer layer formed of the
plurality of layers between the contact layer and the active
region, thereby making it possible to reduce strain generated in
the active region. Further, the present invention can lower the
forward voltage Vf in the active region through the spacer layer
by selectively doping only the layer adjacent to the active region
with the n-type impurity.
Ex. 1001, 14:23–26.
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C. Illustrative Claim
Petitioner challenges claims 1, 3, 4, 9, 10, 12, 14, 18, 19, 21, and 22 of
the ’210 patent. Independent claim 1 is illustrative and is reproduced below:
1. A light emitting diode, comprising:
an n-type contact layer,
a p-type contact layer disposed over the n-type contact
layer;
an active region disposed between the n-type contact
layer and the p-type contact layer and comprising a
multi-quantum well structure including a quantum well
layer that includes a composition ratio of Indium (In) and
a barrier layer;
a superlattice layer including a plurality of layers,
disposed near the active region; and
a spacer layer including a plurality of layers disposed
between the superlattice layer and the n-type contact
layer and having a bandgap smaller than that of the
barrier layer and greater than that of the quantum well
layer.
Ex. 1001, 14:40–55.
D. The Asserted Unpatentability Challenges
Petitioner contends claims 1, 3, 4, 9, 10, 12, 14, 18, 19, 21, and 22 of
the ’210 patent are unpatentable based on the following grounds:

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Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1, 3, 4, 9, 10, 12, 14, 18, 19, 21,
22
102 Sanga1
3, 4, 9, 10, 12, 14, 18, 19, 21,
22
103 Sanga

Petitioner also relies on a declaration from P. Morgan Pattison, Ph.D.
(Ex. 1003, “the Pattison Declaration”).
II. ANALYSIS
A. Claim Construction
In an inter partes review, we construe claim terms according to the
standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed.
Cir. 2005) (en banc). 37 C.F.R. § 42.100(b). Under Phillips, claim terms
are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at
1312. “[T]he ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention.” Id. at 1313. “Importantly, the person
of ordinary skill in the art is deemed to read the claim term not only in the
context of the particular claim in which the disputed term appears, but in the
context of the entire patent, including the specification.” Id.
Petitioner contends that the terms of the ’210 patent should be
interpreted according to their ordinary and customary meaning. Pet. 8.
Although Petitioner contends that no specific construction is required for
any terms in the ’210 patent, Petitioner provides information relating to
“claim constructions that have been issued, briefed, and/or agreed to” in

1 US 7,462,884 B2, issued Dec. 9, 2008 (Ex. 1004).
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“ongoing litigation between Patent Owner and other parties.” Pet. 8. The
claim terms addressed in these district court actions are “multi-quantum well
structure,” “barrier layer,” and “superlattice layer.” Pet. 8–20.
Patent Owner provides a construction for the claim language requiring
that the “spacer layer” have “a bandgap smaller than that of the barrier layer
and greater than that of the quantum well layer.” Prelim. Resp. 28 (referring
to this as the “bandgap limitation” for the spacer layer), 31–32. Patent
Owner, however, argues that Petitioner’s arguments fail regardless of how
the bandgap limitation is construed. Prelim. Resp. 36.
After reviewing the parties’ arguments and evidence, we determine
that we do not need to expressly construe any terms for purposes of this
Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. &
Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be
construed that are in controversy, and only to the extent necessary to resolve
the controversy.”)).
B. Level of Ordinary Skill in the Art
Petitioner contends that a person of ordinary skill in the art in the field
of the ’210 patent would have had “a Ph.D. in chemical engineering,
materials engineering, or electrical engineering (with a focus on
semiconductor materials), or similar advanced postgraduate education in this
area, as well as at least 2 years of experience relating to LED design and
fabrication.” Pet. 7 (citing Ex. 1003 ¶¶ 23–27). Petitioner also contends that
“[a] person with less education but more relevant practical experience,
depending on the nature of that experience and degree of exposure to LED
fabrication and design (including the involved materials, chemistry, and
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physics), could also qualify” as a person of ordinary skill in the art in the
field of the ’210 patent. Pet. 7.
Patent Owner does not appear to dispute this proposed definition. See
generally Prelim. Resp. Neither party argues that the outcome of this case
would differ based on our adoption of any particular definition of one of
ordinary skill in the art.
In light of the record before us, for purposes of this Decision, we
adopt Petitioner’s proposal regarding the level of one of ordinary skill in the
art. The level of ordinary skill in the art is also reflected by the prior art of
record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
C. Claims 1, 3, 4, 9, 10, 12, 14, 18, 19, 21, and 22 — Alleged
Anticipation by Sanga
Petitioner contends Sanga anticipates claims 1, 3, 4, 9, 10, 12, 14, 18,
19, 21, and 22. Pet. 26–46. Petitioner directs us to portions of Sanga that
purportedly disclose all the limitations of the challenged claims, and also
relies on the Pattison Declaration to support its arguments.
1. Sanga (Ex. 1004)
Sanga is directed to a nitride semiconductor device for use in a light
emitting device such as an LED. Ex. 1004, 1:6–9. Sanga aims to improve
electrostatic discharge (ESD) tolerance in semiconductor devices “by
preventing uneven distribution of the electric current in the p-side nitride
semiconductor layer.” Ex. 1004, 3:10–14. Sanga discloses several
embodiments and examples of semiconductor devices having multiple
layers, including a description of the composition and orientation of each
layer. See Ex. 1004, 6:25–25:47, Figs. 1, 3–5.

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2. Analysis
Independent claim 1 of the ’210 patent requires an n-type contact
layer, a p-type contact layer, a barrier layer in an active region comprising a
multi-quantum well structure, a superlattice layer, and “a spacer layer
including a plurality of layers disposed between the superlattice layer and
the n-type contact layer and having a bandgap smaller than that of the barrier
layer and greater than that of the quantum well layer.” Ex. 1001, 14:40–55.
Petitioner contends that the claimed spacer layer is “simply a nitride
based semiconductor layer that includes multiple layers, which layers may
be doped with an n-type impurity (see claim 4), and which has a smaller
bandgap energy than that of the barrier layer and a larger bandgap energy
than that of the well layer.” Pet. 32–33 (citing Ex. 1001, 10:5–16).
Petitioner argues that n-side multilayer 10 of Sanga’s Example 1
corresponds to the claimed spacer layer, noting that in Example 1, multilayer
10 is positioned between the superlattice layer and the n-type contact layer.
Pet. 33–34 (citing Ex. 1004, 23:7–36, Fig. 5). Petitioner further argues that
“in its simplest form, the n-side multilayer 10 is a nitride based
semiconductor having a layer of GaN and a layer of In0.03Ga0.97N.” Pet. 34
(citing Ex. 1004, 23:8–20).
With regard to bandgap energy, Petitioner asserts that it was known in
the art that indium has the effect of lowering the bandgap energy of GaN-
based semiconductors. Pet. 23 (citing Ex. 1003 ¶¶ 35–36; Ex. 10052; Ex.

2 Kuramoto, US 2006/0097242 A1, published May 11, 2006 (Ex. 1005).
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10063). In particular, Petitioner directs us to Exhibit 1005, which teaches
that the band gap of a given layer is widened (increased) by decreasing the
indium ratio in an InGaN composition, and that a GaN layer has a larger
bandgap than an InGaN layer. Ex. 1005 ¶ 7; Pet. 23–24. Similarly,
Petitioner contends that Exhibit 1006 teaches that the bandgap energy of a
layer decreases as the indium concentration increases. Ex. 1006, Fig. 8;
Pet. 24–25.
Based on this knowledge, Petitioner asserts that the indium content of
the In0.03Ga0.97N layer lowers the bandgap of n-side multilayer 10 of Sanga’s
Example 1 such that the bandgap of n-side multilayer 10 is lower than that
of the GaN barrier layer in Example 1, which contains no indium. Pet. 35.
Petitioner further asserts that the bandgap of n-side multilayer 10 is higher
than the bandgap of the quantum well layer in Example 1, which is
composed of In0.3Ga0.97N, and therefore has a much higher indium content
(30% vs 3%). Pet. 35. Petitioner thus concludes that “the n-side multilayer
of Example 1 has a bandgap energy that is lower than the barrier layer and
has a bandgap energy higher than the quantum well layer.” Pet. 36.
Patent Owner contends that Petitioner fails to show that Sanga
discloses that n-side multilayer 10 has “a bandgap smaller than that of the
barrier layer and greater than that of the quantum well layer,” as claim 1
requires. Prelim. Resp. 28. Patent Owner asserts that Petitioner’s arguments
are flawed because Petitioner focuses only on the In0.03Ga0.97N layer within
Sanga’s n-side multilayer 10 when addressing the bandgap limitation, and

3 O’Donnell et al., Structural analysis of InGaN epilayers, J. PHYSICS:
CONDENSED MATTER, Vol. 13, No. 32, 6977–6991 (August 2001)
(Ex. 1006).
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seemingly ignores the GaN layer. Prelim. Resp. 35–37. According to Patent
Owner, “[t]here is no basis in the claim language to focus on some layers
that compose the ‘spacer layer’ and ignore others. The bandgap limitation
applies to the ‘spacer layer’—not selected layers within the ‘spacer layer.’”
Prelim. Resp. 38.
Patent Owner also points out that Petitioner’s approach conflicts with
the teachings of Sanga, which states that when comparing the bandgap of
multilayer structures with the bandgap of other layers, the layer with the
largest bandgap within the multilayer structure should be used to perform the
comparison. Prelim. Resp. 39–40. Patent Owner thus argues that if
Petitioner had followed Sanga’s teachings, it would have selected the
bandgap of the GaN layers within Sanga’s n-side multilayer 10 to compare
against the bandgap of the barrier and quantum well layers. Prelim.
Resp. 40.
Additionally, Patent Owner argues that to the extent Petitioner
considers Sanga’s n-side multilayer 10 to be a single layer containing some
indium for purposes of the bandgap comparison, “there is no basis to treat
the bandgap of a multilayer, superlattice structure composed of layers having
different compositions as equivalent to the bandgap of a single layer having
the same average composition.” Prelim. Resp. 39.
Finally, Patent Owner argues that other phenomena besides layer
composition affect the bandgap of multilayer structures. Prelim. Resp. 42.
These phenomena include strain, piezoelectric fields, and the hybridization
effect. Prelim. Resp. 42–44. Patent Owner asserts that Petitioner fails to
account for these phenomena when addressing the bandgap of Sanga’s n-
side multilayer 10 in Example 1. Prelim. Resp. 44–46.
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We agree with Patent Owner that Petitioner has failed to satisfy its
burden of demonstrating that Sanga discloses a spacer layer having a
bandgap smaller than the bandgap of the barrier layer, as claim 1 requires.
In particular, we are not persuaded that Petitioner’s evidence regarding the
bandgap of the In0.03Ga0.97N layer in n-side multilayer 10 is sufficient to
demonstrate that Sanga discloses the bandgap limitation of the spacer layer,
as recited in claim 1.
Referring to Example 1 in Sanga, Petitioner has provided evidence
that Sanga discloses a spacer layer (n-side multilayer 10) that includes at
least one GaN layer and one In0.03Ga0.97N layer, i.e., a plurality of layers.
Pet. 33–34; Ex. 1004, 14:56–15:3, 23:7–36. Petitioner has also provided
evidence that the bandgap of the In0.03Ga0.97N layer in n-side multilayer 10 is
smaller than the bandgap of the GaN barrier layer in Sanga Example 1 based
on the relative indium concentrations in each layer. Pet. 23–24, 35–36;
Ex. 1004, 23:20–22; Ex. 1005 ¶ 7; Ex. 1006, Fig. 8. Petitioner, however,
does not present evidence regarding the bandgap of any other layer in n-side
multilayer 10 of Example 1 or compare those bandgap values with the
bandgap of the barrier layer of Example 1. Nor does Petitioner explain
adequately any rationale for using the bandgap of the In0.03Ga0.97N layer that
comprises only part of n-side multilayer 10 to determine that the overall
bandgap of n-side multilayer 10 is smaller than the bandgap of the barrier
layer of Example 1.
On its face, claim 1 requires a comparison between the bandgap of the
spacer layer and the bandgap of the barrier layer. Nothing in the claim
language suggests that this limitation can be satisfied by comparing the
bandgap of one specific layer of the spacer layer to the bandgap of the
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barrier layer. By way of contrast, claim 4 recites that “at least one layer of
the plurality of layers in the spacer layer positioned adjacent to the active
region is doped with n-type impurities.” Ex. 1001, 14:62–65. Thus, for
some claims, the inventors used claim language to focus on the constituent
layers of the spacer layer. As Patent Owner points out, however, claim 1
contains no such language with regard to the bandgap of the spacer layer.
Prelim. Resp. 34–35.
Additionally, when discussing the spacer layer, the ’210 patent
describes an exemplary embodiment wherein “spacer layer 128 may have a
structure in which (Al, In, Ga)N-based group III-nitride semiconductor
layers 128a and 128b hav[e] a smaller bandgap than that of the barrier layer
of the active region 129.” Ex. 1001, 10:40–44. This language suggests that
for a spacer layer having a plurality of layers, each layer of the spacer layer
has a bandgap that is smaller than the bandgap of the barrier layer. As noted
above, Petitioner did not address the bandgap of all of the layers in n-side
multilayer 10, and thus has presented no argument that each layer in Sanga’s
purported “spacer layer” has a bandgap smaller than that of the barrier layer.
Prelim. Resp. 36.
As a result, Petitioner is left to rely on the bandgap of the In0.03Ga0.97N
layer alone as the basis for determining the bandgap of the entire spacer
layer. Petitioner’s approach, however, is inconsistent with explicit evidence
in the record relating to comparing the bandgap of a multilayered structure
with the bandgap of other layers. This evidence appears in Sanga, which
states:
When the p-side wide band gap multilayer 12 has a structure in
which layers having different band gaps are alternately stacked,
the bandgap of a layer having the largest band gap in the p-side
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wide band gap multilayer is considered when comparing the
band gap of the p-side wide band gap multilayer 12 with other
layers.
Ex. 1004, 16:30–35 (emphasis added). As noted above, Petitioner presents
evidence demonstrating that a GaN layer has a larger bandgap than an
InGaN layer. Pet. 24; Ex. 1005 ¶ 7. Thus, to the extent a person of ordinary
skill in the art would have followed Sanga’s teaching when comparing the
bandgap of n-side multilayer 10 with the bandgap of the barrier layer in
Sanga Example 1, the skilled artisan would have used the bandgap of the
GaN layer in n-side multilayer 10 for the comparison, not the bandgap of the
In0.03Ga0.97N layer. We thus agree with Patent Owner that Petitioner’s
approach conflicts with the teachings of Sanga, the prior art reference upon
which Petitioner bases its unpatentability arguments.
Setting aside the specific teachings of Sanga, we agree with Patent
Owner that for purposes of determining the overall bandgap of n-side
multilayer 10, Petitioner appears to treat n-side multilayer 10, which is
composed of multiple layers having different compositions, as a single layer
having the same average composition. Prelim. Resp. 39; see also Pet. 35
(arguing that “[t]he indium content of the In0.03Ga0.97N layer lowers the
bandgap energy of the multilayer, such that the bandgap of the n-side
multilayer 10 is lower than that of the GaN barrier layer”). Petitioner,
however, does not direct us to evidence sufficient to support a conclusion
that the presence of indium in the In0.03Ga0.97N layer of n-side multilayer 10
necessarily lowers the overall bandgap of n-side multilayer 10, which
contains at least one other layer having a different composition, such that its
bandgap is smaller than that of the GaN barrier layer in Sanga’s Example 1.
This is especially true considering Patent Owner directs us to evidence
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suggesting that material composition alone is not determinative of the
bandgap of a multilayer structure. Prelim. Resp. 43–44. For example,
Exhibits 2004 and 2005 indicate that strain, piezoelectric effects, and
hybridization effects can affect the bandgap of such structures. Ex. 2004,
6336 (stating that “electric fields induced by the piezoeffect dramatically
change the band diagram of GaN-AlGaN and GaInN GaN superlattices”);
Ex. 2005, 19 (indicating that the bandgap can be “dominated by the
hybridization effect” which can “increase[]” the bandgap); Prelim. Resp. 43–
44.
Petitioner bears the burden of demonstrating that the prior art
discloses a “spacer layer including a plurality of layers . . . and having a
bandgap smaller than that of the barrier layer,” and has not presented
evidence sufficient to satisfy that burden. In view of this, we determine that
Petitioner has failed to demonstrate adequately that Sanga discloses all
limitations of claim 1, and, as a result, Petitioner has not shown a reasonable
likelihood that it would prevail with respect to its argument that Sanga
anticipates claim 1.
Similar to claim 1, independent claim 9 requires a spacer layer that
includes a first and second semiconductor layer and has a bandgap smaller
than that of the barrier layer and greater than that of the quantum well layer.
Ex. 1001, 15:44–16:9. Petitioner relies on the same arguments for the
bandgap limitation in claim 9 as it did for claim 1, which we do not find
persuasive. Pet. 42–43. Accordingly, for the reasons discussed above, we
determine Petitioner has not shown a reasonable likelihood that it would
prevail with respect to its argument that Sanga anticipates claim 9.
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Claims 3 and 4 each depend from claim 1, and, therefore, include all
of the limitations of claim 1. Ex. 1001, 14:59–65; see 37 C.F.R. § 1.75(c)
(“Claims in dependent form shall be construed to include all the limitations
of the claim incorporated by reference into the dependent claim.”). Claims
10, 12, 14, 18, 19, 21, and 22 depend, directly or indirectly, from claim 9,
and, therefore, include all of the limitations of claim 9. Ex. 1001, 16:10–17,
16:22–24, 16:37–42, 16:47–52. In view of our determination that Petitioner
fails to establish that Sanga discloses all limitations of claims 1 and 9, we
reach the same result for claims 3, 4, 10, 12, 14, 18, 19, 21, and 22.
D. Claims 3, 4, 9, 10, 12, 14, 18, 19, 21, and 22 — Alleged
Obviousness over Sanga
Petitioner contends claims 3, 4, 9, 10, 12, 14, 19, 21, and 22 are
unpatentable as obvious in view of Sanga. Pet. 46–55. Petitioner directs us
to portions of Sanga that purportedly teach or suggest all the limitations of
the challenged claims, and also relies on the Pattison Declaration to support
its arguments.
In its obviousness challenges, Petitioner does not present new
arguments regarding the spacer layer and bandgap limitations in claims 1
and 9, instead relying on the arguments it previously made in asserting that
Sanga anticipates claims 1 and 9. Because none of Petitioner’s obviousness
arguments address the deficiencies identified above, we determine that
Petitioner has failed to demonstrate adequately that Sanga teaches or
suggests all limitations of claims 1 and 9, and, as a result, Petitioner has not
shown a reasonable likelihood that it would prevail with respect to its
argument that claims 3, 4, 9, 10, 12, 14, 18, 19, 21, and 22 are unpatentable
as obvious over Sanga.
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III. CONCLUSION
For the foregoing reasons, Petitioner has not demonstrated a
reasonable likelihood that at least one challenged claim of the ’210 patent is
unpatentable over the prior art of record. Accordingly, we decline to
institute inter partes review.
IV. ORDER
It is hereby
ORDERED that the Petition is denied, and no trial is instituted.

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For PETITIONER:

Heath J. Briggs
Barry J. Schindler
Andrew Sommer
GREENBERG TRAURIG, LLP
briggsh@gtlaw.com
schindlerb@gtlaw.com
sommera@gtlaw.com

For PATENT OWNER:

Charles H. Sanders
Jonathan M. Strang
LATHAM & WATKINS LLP
charles.sanders@lw.com
jonathan.strang@lw.com