Seoul Viosys Co., Ltd.

Patent Trials and Appeals Board

Sep 16, 2020

IPR2020-00655 (P.T.A.B. Sep. 16, 2020)

Trials@uspto.gov Paper 7
571-272-7822 Date: September 16, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SATCO PRODUCTS, INC.,
Petitioner,
v.
SEOUL VIOSYS CO., LTD.,
IPR2020-00655
Patent 9,627,435 B2

Before ERICA A. FRANKLIN, JEFFREY W. ABRAHAM, and
ELIZABETH M. ROESEL, Administrative Patent Judges.
FRANKLIN, 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 requesting an
inter partes review of claims 1, 2, 6, and 7 of U.S. Patent No. 9,627,435 B2
(Ex. 1001, “the ’435 patent”). Paper 2 (“Petition” or “Pet.”). Seoul Viosys
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 (2020). For the reasons provided below, we
exercise our discretion under 35 U.S.C. § 314 to deny institution of an inter
partes review.
A. Real Parties-in-Interest
Petitioner identifies Satco Products, Inc. as the real party-in-interest.
Pet. 1. Patent Owner identifies Seoul Viosys Co., Ltd. as the real party-in-
interest. Paper 3, 1.
B. Related Proceedings
Petitioner and Patent Owner provide notice of a district court litigation
involving the ’435 patent: Seoul Semiconductor Co., Ltd. v. Satco Products,
Inc., No. 2:19-cv-04951 (EDNY). Pet. 1; Paper 3, 1. Patent Owner also
notes that the ’435 patent is among other patents asserted in Seoul
Semiconductor Co. Ltd. et al. v. Service Lighting and Electrical Supplies,
Inc. d/b/a 1000bulbs.com, No. 2-18-cv-00386 (NDTX) and Semiconductor
Co. Ltd. et al. v. Archipelago Lighting, Inc., No. 5:17-cv-01890 (CDCA)
Paper 3, 1–2.
C. The ’435 Patent
The ’435 patent relates to a “nitride based semiconductor light
emitting device with enhanced luminous efficiency and brightness and a
method of manufacturing the light emitting device.” Ex. 1001, 1:27–32.
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The Specification explains that a “light emitting device” refers to “an
element in which minority carriers (electrons or holes) injected using a p-n
junction structure of a semiconductor are produced and certain light is
emitted due to recombination of the carriers.” Id. at 1:34–37. One of the
indexes indicating the performance of light emitting devices is the extraction
efficiency. Id. at 2:9–13. “The extraction efficiency is determined as a ratio
of electrons injected into the light emitting device to photons emitted to the
outside of the light emitting device.” In other words, the Specification
explains that “the light emitting device becomes bright as the extraction
efficiency becomes high.” Id. at 2:17–18. Importantly, the extraction
efficiency of the light emitting device is influenced by the shape and surface
pattern of a chip, the structure of a chip, and the packaging type. Id. at 2:17–
19. According to the Specification, careful attention, therefore, should be
paid to those factors when designing a light emitting device.
The Specification describes a problem with prior art light emitting
devices as follows,
Light produced from a light emitting layer of a light emitting
device is emitted from all the surfaces of a chip, and light
extraction efficiency is generally determined by a critical angle
of light. However, when the conventional light emitting device
is etched to expose an N-type semiconductor layer, side surfaces
of the P-type semiconductor layer and the active layer are
vertically processed such that a portion of light produced within
the light emitting device is totally reflected on the etched surface
that is processed vertically from a horizontal plane. Then, a
considerable amount of light to be totally reflected is not emitted
to the outside but dissipated within the light emitting device due
to the internal reflection. That is, there is a problem in that
luminous efficiency in which electric energy is converted into
light energy and the light is then emitted to the outside of a light
emitting device is low.
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Id. at 2:65–3:13. To solve that problem, the present invention provides “a
light emitting device wherein light produced from a side surface of a
semiconductor layer, which is not perpendicular to but included at a
predetermined slop[e] from a horizontal plane, is not totally reflected but
emitted to the outside of the light emitting device.” Id. at 3:42–46. The
Specification explains that the result device exhibits “more enhanced
characteristics of light extraction efficiency, external quantum efficiency,
luminous efficiency.” Id. at 3:47–49.
Figure 32 of the ’435 patent is set forth below.

Figure 32 is a sectional view illustrating a light emitting diode (“LED”) for
AC operation according to an embodiment of the invention. Id. at 17:1–3.
A plurality of light emitting cells 56 are disposed on substrate 51. A buffer
layer 53 may be disposed between light emitting cells 56 and substrate 51.
Id. at 17:31–32. The light emitting cells 56 include lower semiconductor
layer 55 and upper semiconductor layer 59. Id. at 17:9–11. The upper and
lower semiconductor layers may be N-type and P-type, respectively. Id. at
17:13–16. Active layer 57 is disposed between the upper and lower
semiconductor layers. Id. at 17:12–13.
The Specification explains,
Side surfaces of the light emitting cells 56 are formed to be
inclined with respect to an upper surface of the substrate 51 and
get narrowed toward upside. The inclination of the side surfaces
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improves emission efficiency of a light produced in the active
layers 57, and helps conformal deposition of the other layers
which will be formed on the light emitting cells 56.
Id. at 17:39–45. The entire surface of the light emitting cells 56 is covered
by insulation layer 69.
D. Illustrative Claim
Petitioner challenges independent claim 1 and dependent claims 2, 6,
and 7 of the ’435 patent. Independent claim 1, set forth below, is
illustrative.
1. A light-emitting device, comprising:
a substrate;
a first light emitting cell disposed on the substrate and a
second light emitting cell disposed on the substrate,
wherein the first and second light emitting cells comprise:
a first semiconductor layer and a second semiconductor
layer;
an active layer disposed between the first and the second
semiconductors layers; and
a first inclined surface;
a first conductive material disposed on the second semi-
conductor layer of the second light emitting cell;
a first insulation layer that overlaps the first conductive
material and the first and second light emitting cells;
a second conductive material that overlaps the first insu-
lation layer and electrically connects the first light
emitting cell and the second light emitting cell; and
a second insulation layer that overlaps the second con-
ductive material,
wherein both the first insulation layer and the second
insulation layer comprise a light transmitting material;
and
wherein the first inclined surface is continuous and has a
slope of approximately 20° to approximately 80° from
a horizontal plane of the substrate.
Ex. 1001, 21:2–27.
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E. Asserted Grounds of Unpatentability
Petitioner asserts that claims 1, 2, 6, and 7 would have been
unpatentable on the following grounds.
Claims Challenged 35 U.S.C. § Reference(s)
1, 2, 6, 7 103(a) 1 Yang2, Schubert,3 Aanegola4
1, 2, 6, 7 103(a) Yang, Van Zant,5 Hawrylo,6
Yukimoto7
1, 7 102 Salam8
2, 6 103(a) Salam

1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
2013. Because the application from which the ’435 patent issued has an
effective filing date prior to March 16, 2013, the pre-AIA version of § 103
applies.
2 Yang et al., US 2005/01790472 A1, published Aug. 18, 2005 (“Yang,”
Ex. 1004).
3 Schubert, Light-Emitting Diodes, 1st ed. New York: Cambridge University
Press 2003 (“Schubert,” Ex. 1007).
4 Aanegola et al., US 2005/0239227 A1, published Oct. 27, 2005
(“Aanegola,” Ex. 1008).
5 Van Zant, Microchip Fabrication: A Practical Guide to Semiconductor
Processing, 4th ed. Ch. 12, “Deposition,” New York: McGraw Hill 2000
(“Van Zant,” Ex. 1013).
6 Hawrylo et al., US 4,095,011, issued June 13, 1978 (“Hawrylo,” Ex. 1014).
7 Yukimoto, US 2003/0010989, published Jan. 16, 2003 (“Yukimoto,” Ex.
1020).
8 Salam, US 6,346,771 B1, issued Feb. 12, 2002 (“Salam,” Ex. 1005).
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We refer to the two grounds based on combinations including Yang as
the “Yang grounds,” and the two grounds based upon Salam as the “Salam
Grounds.”
Petitioner also relies on the Declaration of P. Morgan Pattison, Ph.D.
(Ex. 1003). Patent Owner relies on the Declaration of Daniel Feezell, Ph.D.
(Ex. 2001).
II. ANALYSIS
A. Person of Ordinary Skill in the Art
The level of skill in the art is a factual determination that provides a
primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v.
VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham v. John
Deere Co., 383 U.S. 1, 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950
F.2d 714, 718 (Fed. Cir. 1991)).
Petitioner asserts that a person of ordinary skill in the art at the time of
the invention would have had
A Ph.D. in chemical engineering, materials engineering, or
electrical engineering (with a focus on semiconductor materials),
or similar advanced post-graduate education in this area, as well
as at least 2 years of experience relating to LED design and
fabrication. (See, e.g., Ex-1003-Pattison at ¶¶21-25; Ex-1001 at
1:26-32 (describing the “Field of the Invention”).) 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 physics), could also qualify as a POSITA in the
field of the ’435 patent. (Ex-1003-Pattison at ¶¶26-27.)

Pet. 10. Patent Owner neither addresses Petitioner’s description of the level
of ordinary skill in the art, nor provides its own description in the
Preliminary Response.
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At this stage of the proceeding, we adopt Petitioner’s definition as we
find it is consistent with the level of skill in the art at the time of the
invention as reflected by the prior art and the ’435 patent. See Okajima v.
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific
findings regarding ordinary skill level are not required “where the prior art
itself reflects an appropriate level and a need for testimony is not shown”
(quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158,
163 (Fed. Cir. 1985))).
B. Claim Construction
The Board applies the same claim construction standard that would be
used to construe the claim in a civil action under 35 U.S.C. § 282(b).
37 C.F.R. § 42.100(b) (2020). Under that standard, claim terms “are
generally given their ordinary and customary meaning” as understood by a
person of ordinary skill in the art at the time of the invention. Phillips v.
AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “In
determining the meaning of the disputed claim limitation, we look
principally to the intrinsic evidence of record, examining the claim language
itself, the written description, and the prosecution history, if in evidence.”
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
(Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Extrinsic evidence is
“less significant than the intrinsic record in determining ‘the legally
operative meaning of claim language.’” Phillips, 415 F.3d at 1317.
Petitioner asserts that the claim terms in the challenged claims should
receive their plain and ordinary meanings and that no express constructions
of the terms is needed. Pet. 10–11. Patent Owner agrees that no claim terms
require construction. Prelim. Resp. 8–9.
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At this stage of the proceeding, we agree with the parties that express
construction of claim terms is unnecessary for purposes of rendering this
Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
(Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent
necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am.
Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
C. The Yang Grounds
Petitioner asserts that claims 1, 2, 6, and 7 are rendered obvious by
Yang in view of Schubert and/or Aanegola. Pet. 27–66. Petitioner asserts
also that claims 1, 2, 6, and 7 are rendered obvious by Yang in view of Van
Zant, and in further view of Hawrylo and/or Yukimoto. Id. at 66–73. Patent
Owner challenges both contentions. Prelim. Resp. 11–63.
1. Yang
Yang relates to an integrated light-emitting device including multiple
p-n diodes integrated monolithically on a single insulating substrate.
Ex. 1004 ¶ 7. In one embodiment of the light-emitting device, at least one
sidewall of the light-emitting diode is beveled. Id. ¶ 14. Beveling at least
one sidewall of the light-emitting device enhances light extraction. Id. ¶ 17.
The p-n diodes may have at least one beveled sidewall to enhance light
extraction out of the light-emitting diodes. Id. ¶¶ 15, 17.
Yang’s Figure 1 is set forth below.

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Yang’s Figure 1 shows a schematic cross-section of an integrated light-
emitting device that includes two p-n diodes on the same substrate isolated
from each other. Id. ¶ 18. The integrated device includes two p-n diodes
114, 116 over insulating substrate 110. Id. ¶ 38. P-n diode 114 includes
semiconductor layers 118 and 124, together forming p-n diode structure 119,
and electrodes 120 and 122. Id. P-n diode 116 includes semiconductor
layers 126 and 132, together forming p-n diode structure 127, and electrodes
128 and 130. Id. The semiconductor layers 118, 124, 126, and 132 are
monolithically grown over insulating substrate 110. Id.
Yang’s Figure 2 is set forth below.

Yang’s Figure 2 shows a schematic cross-section of an integrated light-
emitting device that includes two p-n diodes with electrodes from each diode
connected after device isolation. Id. ¶ 19. As in Figure 1, Figure 2 depicts
the device 100 including two p-n diodes 114, 116, over insulating substrate
110. Id. ¶¶ 38, 40. As shown in Figure 1, Figure 2 depicts P-n diode 114
includes semiconductor layers 118 and 124, together forming p-n diode
structure 119, and electrodes 120 and 122. Id. ¶ 38. P-n diode 116 includes
semiconductor layers 126 and 132, together forming p-n diode structure 127,
and electrodes 128 and 130. Id. The semiconductor layers 118, 124, 126,
and 132 are monolithically grown over insulating substrate 110. Id.
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Electrode 120 (anode) of p-n diode 114 is connected to electrode 128
(cathode) of p-n diode 116 via connection metal 134. Id. ¶ 40. Insulating
layer 136 is deposited between the p-n junction structures p-n diode 114 and
connection metal 134 to avoid shorting p-n diode 114 with connection metal
134. Id.
Yang’s Figures 6a and 6b are set forth below.

Figure 6a of Yang is a schematic top view of an integrated light-emitting
device of the invention with an array of four light-emitting diodes
monolithically integrated in series over a common substrate. Id. ¶ 23.
Figure 6b of Yang depicts an enlarged cross-section of the circled area in
Figure 6a, and shows the interconnection between two adjacent diodes. Id.
¶ 24. Light-emitting diodes 214b and 214c are interconnected through
electrodes 220b and 222c of opposite polarities. Id. ¶ 52. Semiconductor
layers 224b and 224c and 226b and 226c form p-n diode structures for light-
emitting diodes 214b and 214c. Id.
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Yang’s Figure 8 is set forth below.

Figure 8 of Yang is a schematic cross-section of a light-emitting device of
the invention with beveled sidewalls 240 and 242 of semiconductor layer
226. Id. ¶¶ 28, 63. P-n diode structure 218, including p-type semiconductor
layer 224 and a stack of p- and n-type semiconductor layers 226, is formed
on a substrate. Id. ¶ 63. “Preferably, the side wall is beveled to have a slope
of about between 10 and about 50 degrees, more preferably about 30
degrees, with respect to a line normal to a major plane of the substrate.” Id.
2. Analysis
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter 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 the
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 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 ordinary skill in the art; and (4) if in the record, objective
evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
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(1966). Consideration of the Graham factors “helps inform the ultimate
obviousness determination.” Apple Inc. v. Samsung Elecs. Co., 839 F.3d
1034, 1048 (Fed. Cir. 2016) (en banc).
For each of the Yang grounds, Petitioner asserts that Yang expressly
discloses every limitation of the challenged claims except for the limitations
requiring “a second insulation layer that overlaps the second conductive
material” and reciting that “the second insulation layer comprise[s] a light
transmitting material.” Pet. 27, 70. Petitioner asserts that those limitations
are conventional aspects of an LED package that were known in the art, as
evidenced by Schubert and/or Aanegola (ground 1) and Van Zant, Hawrylo,
and Yukimoto (ground 2). Id.
In the following discussion, we focus on Petitioner’s assertion in each
of the Yang grounds that Yang teaches “the first and second light emitting
cells comprise:” (a) “a first semiconductor layer” and “a second
semiconductor layer,” (b) “an active layer disposed between the first and the
second semiconductors layers,” and (c) “a first inclined surface,” wherein
“the first inclined surface is continuous and has a slope of approximately 20°
to approximately 80° from a horizontal plane of the substrate,” as recited by
independent claim 1. Pet. 32–61, 70; Ex. 1001, 21:6–12, 25–27.
We begin by referring to Petitioner’s annotated version of Yang’s
Figure 6b, along with Petitioner’s table identifying the first and second
semiconductor layers in the figure. Petitioner’s annotated version of Yang’s
Figure 6b and Petitioner’s table are set forth below.
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Petitioner’s annotated version of Yang’s Figure 6b includes dashed boxes
and two headings to identify what it alleges to be Yang’s first and second
light emitting cells. Pet. 36, 38. The annotated version of Yang’s Figure 6b
also depicts the “substrate” (210) with a blue color, the “first semiconductor
layer” (226b, 226c) of each light emitting cell with a light purple color, the
“second semi-conductor layer” (224b, 224c) of each light emitting cell with
an orange color, the “first conductive material” (220b) disposed on the
second semiconductor layer (224b) of the second light emitting cell (214b)
with a dark purple color, and a “second conductive material” (238b) with a
gold color. Id. at 35, 38, 44–46, 52.
Petitioner notes that Yang’s Figure 6b does not depict an active layer.
Id. at 39. Petitioner has not added a depiction of the active layer in its
annotated version of Yang’s Figure 6b. Petitioner asserts, however, that
Yang discloses the limitation “an active layer disposed between the first and
the second semiconductors layers,” as recited by claim 1, by teaching, in
reference to Figure 1, that “[i]n a preferred embodiment, semiconductor
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layers 118 and [126] include an active layer . . . .” Pet. 39 (quoting Ex. 1004
¶ 38 (brackets are Petitioner’s)).9 Petitioner asserts also that Yang explains
that “an active region can be sandwiched between the n-type and p-type
gallium nitride-based semiconductor layers.” Id. at 40 (quoting Ex. 1004 ¶
68).
For the “first inclined surface,” Petitioner initially refers to its
annotated version of Figure 32 of the ’435 patent, set forth below. Pet. 41.

Petitioner’s annotated version of Figure 32 of the ’435 patent adds dashed
boxes and headers to indicate the first and second light emitting cells, and
adds a different color to each component of the light emitting device,
wherein the “substrate” (50) is pink, the “first semiconductor layer” (55) is
light purple, the “active layer” (57) is red, and the “second semiconductor
layer” (59) is green. See Pet. 37, 41. The Petitioner’s annotated version of

9 When quoting Yang, Petitioner replaces reference numeral 125 with
reference numeral 126, correcting what appears to be a mistake in Yang.
Reference numeral 125 does not appear in Yang Figure 1, and elsewhere in
paragraph 38, Yang identifies the n-type semiconductor layer using
reference numeral 126. Ex. 1004 ¶ 38 (“In FIG. 1, semiconductor layers 118
and 126 represent n-type semiconductor layers.”). We note that the same
mistake appears a second time in Yang paragraph 38. Id. (“Alternatively,
semiconductor layers 118 and 124 [sic, 126] can be a stack of p-type and n-
type semiconductor layers . . . .”).
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Figure 32 of the ’435 also adds a gold circle around what Petitioner
considers to be the inclined surfaces of the light emitting cells. Id. at 41.
Of those identified inclined surfaces, Petitioner asserts that the “first
inclined surface” of the light emitting cells corresponds to the “longer
inclined surface on the left side of each respective light emitting cell shown
in Figure 32” of the ’435 patent. Id. Notably, the longer inclined surface on
the left side of each light emitting cell includes the surface of the first and
second semiconductor layers, and the active layer disposed therebetween.
Id. Similarly, for the limitation reciting that “the first inclined surface is
continuous and has a slope of approximately 20° to approximately 80° from
a horizontal plane of the substrate,” Petitioner identifies the left side of each
inclined surface as having such a continuous surface. Id. at 60.
Petitioner asserts that Yang discloses these same inclined surfaces by
teaching that the light-emitting diode can have at least one sidewall that is
beveled. Id. at 42 (citing Ex. 1004 ¶ 61). Petitioner also relies on Yang’s
Figure 8 as showing the use of beveled sidewalls 240 and 242 on the stack of
semiconductor layers 226, wherein, “[p]referably, the side wall is beveled to
have a slope of about 10 and about 50 degrees, more preferably about 30
degrees, with respect to a line normal to the major plane of the substrate.”
Id. at 42–43 (citing Ex. 1004 ¶ 63) (emphasis omitted). Petitioner asserts
also that it would have been obvious to use beveled sidewalls with the
embodiments of Yang illustrated in Figures 6a-6b per Yang’s express
suggestion to do so. Id. at 43. Further, Petitioner asserts it would have been
obvious to make such sidewalls continuous, as shown in Yang’s Figure 8.
Id. at 61.
Patent Owner argues, among other things, that Petitioner has failed to
demonstrate that Yang teaches “a first inclined surface” that is “continuous
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and has a slope of approximately 20° to approximately 80° from a horizontal
plane of the substrate,” as required by claim 1. Prelim. Resp. 36. Patent
Owner agrees with Petitioner that the ’435 patent depicts the first inclined
surface that is continuous as the longer inclined surface on the left side of
the light-emitting cell in Figure 32, comprising the first and second
semiconductor layers 55, 59 with the active layer 57 therebetween. Id. at
36–40, see Pet. 41. Patent Owner contends, however, that Petitioner has not
supported its assertion that Yang similarly discloses an inclined surface that
is continuous. Prelim. Resp. 37. Patent Owner recognizes that Yang’s
Figure 8 discloses an inclined surface in the light emitting cells, but asserts
that it does not disclose an inclined surface that is continuous. Id. Patent
Owner observes that only the sidewall of semiconductor layer 226 is beveled
and that such incline does not continue to include the sidewall of
semiconductor layer 224, or that of an active layer (not shown in Figure 8).
Id. at 38. Patent Owner asserts that “[t]he presence of the vertical sidewall
in the semiconductor layer 224 creates a step or transition from the beveled
sidewall of the semiconductor layer 226. It does not continue.” Id. Patent
Owner asserts that Petitioner’s declarant, Dr. Pattison, does not provide any
further explanation or analysis of how Yang discloses an inclined wall that is
continuous by stating that “[a]s shown above, the inclined surface is
continuous, as show in FIG. 8, and preferably has a slope of 30°.”). Id. at
40 (quoting Ex. 1003, 60).
Based upon our consideration of the arguments and evidence, we
agree with Patent Owner that Petitioner has not shown sufficiently for
institution that Yang teaches or suggests that its light emitting cells comprise
an inclined surface that is continuous, as required by independent claim 1.
As set forth above, Petitioner demonstrates with its annotated version of
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Figure 32 of the ’435 patent that for an inclined surface to be continuous, the
inclined surface must extend along a surface of the first and second
semiconductor layers, with the active layer disposed therebetween. See Pet.
41, 60. Referring to Yang’s Figure 6b, and what Petitioner labels as the first
and second light emitting cells, Petitioner identifies semiconductor layer
226b/c as the recited “first semiconductor layer” and semiconductor layer
224b/c as the recited “second semiconductor layer.” Pet. 38. Petitioner
relies on Yang’s teachings that an active layer may be sandwiched between
the semiconductor layers. Id. at 39–40. For example, Petitioner refers to
Yang’s teaching, in reference to Figure 1, that “semiconductor layers 118
and [126] include an active layer . . . .” Pet. 39 (quoting Ex. 1004 ¶ 38)
(emphasis omitted). Petitioner also relies on Yang’s teaching that “an active
region can be sandwiched between the n-type and p-type gallium nitride-
based semiconductor layers.” Id. at 40 (quoting Ex. 1004 ¶ 68).
We note that Yang teaches that semiconductor layers 118 and 126 in
Figure 1 may represent n-type semiconductor layers, or alternatively, each
may be a “stack of p-type and n-type semiconductor layers where the top
layer of the stack is an n-type semiconductor layer.” Ex. 1004 ¶ 38.
Similarly, Yang teaches, in reference to Figure 8, that p-n diode structure
218 includes p-type semiconductor layer 224 and a stack of p- and n-type
semiconductor layers 226. Id. ¶ 63. Thus, Yang’s teachings relating to the
placement of an active layer allow that active layer to be placed either within
the “stack” of p- and n-type semiconductor layers, or above those layers that
may be stacked.
Therefore, referring to Yang’s Figure 6b, the active layer may be
disposed within stacked semiconductor layers depicted as 226b, or the active
layer may be placed between semiconductor layers 226b and 224b. The
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same is true for Figure 8. In Yang’s Figure 8, the active layer may be
disposed within stacked semiconductor layers depicted as 226, or the active
layer may be between semiconductor layers 226 and 224. The challenged
claims limit the location of the active layer by requiring it to be “disposed
between the first and the second semiconductor layers.” Petitioner has
identified what it considers to be the first semiconductor and second
semiconductor layers in Yang’s Figure 6b: the “first semiconductor layer” is
226b/c, and the “second semiconductor layer” is 224b/c. Pet. 38. In Yang’s
Figure 8, Petitioner contends first semiconductor layer corresponds with
structure 226, and the second semiconductor layer corresponds with
structure 224. To meet the claim limitation for the active layer, the active
layer must be disposed between those first and second semiconductor layers,
i.e., between structures 226b/c and 224b/c, and not within structure 226b/c
for Figure 6b. The same is true with respect to Figure 8. In other words, to
read on claim 1, the active layer must be disposed between structures 226
and 224, and not within structure 226.
Based on that required positioning of the active layer, in view of
Petitioner’s identified first and second semiconductor layers, we agree with
Patent Owner that Petitioner has not shown that Yang’s Figure 8 depicts an
inclined surface that is continuous, as required by claim 1. Instead, Figure 8
shows only an inclined surface on what Petitioner considers to be the first
semiconductor layer. As discussed above, it is Petitioner’s own position that
for an inclined surface to be continuous as claimed, the incline must
continue along the first semiconductor layer, the active layer, and the second
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semiconductor layer. We do not see, nor has Petitioner shown, that Yang
discloses that feature.
Insofar as Petitioner asserts, in the alternative, that it would be
obvious to make the sidewalls in Yang’s Figures 6a-6b to have beveled
sidewalls that are continuous, Petitioner has failed to set forth its
obviousness rationale sufficiently for institution. Pet. 61. In particular,
Petitioner does not explain sufficiently how and why a person of ordinary
skill in the art would have modified Yang’s Figures 6a-6b embodiment to
have continuous sidewalls. What is missing from the Petition is, for
example, the identification of some teaching or suggestion in the prior art or
some knowledge in the art that it would have been obvious to modify Yang’s
structure to extend the inclined surface on the first semiconductor layer
upward along the surface of the upper active layer and further along the
surface of the second semiconductor layer, and to do so such that the
resulting incline is continuous and has a slope within the recited degree
range. Instead, Petitioner relies on an unsupported assertion that Yang
depicts a continuous sidewall in Figure 8. Pet. 61. Indeed, Petitioner’s
obviousness contention as to the required “continuous” feature of the first
inclined surface is presented in one sentence: “It would further be obvious to
make such sidewalls continuous, as shown in FIG. 8, and preferably with a
slope of 30.” Id. (citing Ex. 1004 ¶ 63, and Figs. 10–11).
To the extent that Petitioner relies upon Yang’s Figure 10 in that
citation, we note that Yang explains that Figure 10 is a cross-sectional
scanning electron microscope image of the light-emitting device in Figure 8.
Ex. 1004 ¶¶ 74, 80. Petitioner, nevertheless, relies on a modified version of
Yang’s Figure 10 (regarding dependent claim 7) wherein Petitioner indicates
that the inclined sidewall depicted comprises two semiconductor layers with
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an active layer disposed in between them. Pet. 64. Patent Owner provides
an annotated version of Yang’s Figure 8 and places it side-by-side with
Petitioner’s modified version of Figure 10, as set forth below.

Patent Owner’s side-by-side figures depict Petitioner’s modified
version of Yang’s Figure 10 on the left and Patent Owner’s annotated
version of Yang’s Figure 8 on the right. Prelim. Resp. 42. Petitioner
modifies Yang’s Figure 10 by adding light purple, red, and orange colored
sublayers to the beveled layer labeled “GaN epitaxial layers,” where no such
sublayers are shown in the original figure. Patent Owner asserts that
Petitioner relies on numerous incorrect assumptions and interpretations of
Yang’s teachings. Id. at 40. We agree. As can be appreciated from the
side-by-side annotated versions of Yang’s figures, Figure 10 depicts
semiconductor layer 226 as the etched sidewall with bevel. Below the
semiconductor layer is the substrate and above the semiconductor layer is
the LED cathode, as similarly depicted in Yang’s Figure 8. Yang’s Figure
10 does not include the portion of Yang’s Figure 8 depicting semiconductor
layer 224, which Petitioner has relied upon as the second semiconductor
layer. Nor does Yang’s Figure 10 depict an active layer, much less an active
layer disposed between semiconductor layers 224 and 226. Thus,
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Petitioner’s reliance on Yang’s Figure 10 as showing a continuous inclined
surface is unsupported and misplaced.
Further, as Patent Owner asserts, the testimony of Petitioner’s
declarant, Dr. Pattison, also fails to support either an express teaching or an
obviousness rationale regarding the continuous first inclined surface
limitation, as he merely states “[a]s shown above, the inclined surface is
continuous, as shown in FIG. 8, and preferably has a slope of 30°.” Prelim.
Resp. 39–40; Ex. 1003, 60.
Petitioner does not rely on any of the other cited art, in either Yang
ground, to address the continuous inclined surface limitation. Because
Petitioner has failed to show that Yang teaches or suggests a light emitting
device comprising a first inclined surface that is continuous, as required by
independent claim 1, we determine that Petitioner has not shown a
reasonable likelihood of prevailing on its assertion that independent claim 1
would have been rendered obvious by the combined teachings of Yang,
Schubert and/or Aanegola, or the combined teachings of Yang, Van Zant,
and Hawrylo and/or Yukimoto. For at least the same reasons, we also
determine that Petitioner has not shown a reasonable likelihood of prevailing
on its assertion that dependent claims 2, 6, and 7 would have been rendered
obvious by either of those combined teachings.
D. The Salam Grounds
Petitioner asserts that claims 1 and 7 are anticipated by Salam. Pet.
73–94. Petitioner asserts also that claims 2 and 6 are rendered obvious by
Salam. Id. at 94–96. Patent Owner challenges both contentions. Prelim.
Resp. 63–94.
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1. Salam
Salam relates to single-chip LED lamps that are up to 250 times more
powerful than a conventional single-chip LED lamp. Ex. 1005, 1:5–8.
Salam Figure 3 is set forth below.

Salam Figure 3 is a sectional view of a portion of an LED chip according to
an embodiment of the invention. Id. at 2:50. Figure 3 depicts an LED chip
mounted on metal support 3. Id. at 3:15. The chip comprises transparent
base 5 over which is formed layer 6 of n-type semiconductor material. Id. at
3:20–21. A layer of p-type semiconductor material 7 is formed over n-layer
6. Id. at 3:21–22. Semiconductor layer 8 comprises semiconductor layers 6
and 7. Id. at 3:24–25. The chip includes active region 10. Id. at 3:32–35.
Salam Figure 10 is set forth below.

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Salam Figure 10 illustrates an arrangement for a trench that can be used in
any of the embodiments of the invention. Id. at 9:42–43. “As shown, trench
14 cuts into substrate 5, and includes translucent dielectric 65 over the p-
layer portion of stepped sidewall 26.” Id. at 9:43–45. Salam teaches that “in
various arrangements discussed herein trench 14 may have a side-wall
profile that includes one or more steps.” Id. at 8:22–24.
2. Analysis
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Schering Corp. v. Geneva Pharms, 339 F.3d 1373, 1379
(Fed. Cir. 2003) (quoting Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814
F.2d 628, 631 (Fed. Cir. 1987)).
For its anticipation challenge of independent claim 1 and dependent
claim 7, Petitioner provides annotated versions of Salam’s Figures 3 and 5
along with a table identifying how those figures allegedly disclose each
limitation of the challenged claims. Pet. 46–47. Petitioner’s annotated
versions of Salam’s Figures 3 and 5 and Petitioner’s table are set forth
below.

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Petitioner’s annotated versions of Salam’s Figures 3 and 5 include color
coding for certain elements listed in the table. Petitioner explains that the
table shows the correspondence between the claim limitations and Salam
with reference to the annotated versions of Figures 3 and 5. Id. at 73.
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In its discussion of the claim limitations, Petitioner relies on another
annotated version of Salam’s Figure 3 that it refers to as an “alternative
embodiment” of Figure 3. Pet. 84. We refer to this figure as Petitioner’s
alternative version of Salam’s Figure 3, set forth below.

Petitioner’s alternative version of Salam’s Figure 3 has been created by
Petitioner to reflect features from Salam’s Figures 3 and 10. In this version,
trench 17 is modified to cut into substrate 5. Pet. 79–80. According to
Petitioner, Salam teaches that modification by disclosing that “FIG. 10
shows another arrangement for trench 14 that can be used in any of the chips
described herein. As shown, trench 14 cuts into substrate 5, and includes
translucent dielectric 65 over the p-layer portion of stepped side wall 26.”
Id. (quoting Ex. 1005, 9:42–47) (emphasis omitted). Petitioner’s alternative
version of Salam’s Figure 3 also modifies the trench 14 in an attempt to
remove the steps from the inner side-wall profile. Petitioner draws support
for that modification from Salam’s teaching that “in various arrangements
discussed herein, trench 14 may have a side-wall profile that includes one or
more steps.” Id. at 80 (quoting Ex. 1005, 8:17–24) (emphasis omitted).
According to Petitioner, because Salam teaches that the side-wall profile
“may” include one or more steps, those steps in Figure 3 may be removed.
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Id. at 80–81. Based on those modifications, Petitioner asserts that Salam
discloses a first inclined surface that is continuous. Id. at 84–85, 91–92.
Patent Owner challenges Petitioner’s anticipation ground because,
among other reasons, Petitioner relies on its own redrawn version of Salam’s
figures that are not supported by Salam’s disclosure to show anticipation.
Prelim. Resp. 73. In particular, Patent Owner asserts that in redrawing
Salam’s Figure 3, Petitioner attempts to hide the stepped structure of the n-
layer. Id. at 73–74. According to Patent Owner, Petitioner’s alternative
version of Salam’s Figure 3 (which combines features of Figure 10) still
includes a stepped structure on the first semiconductor (n-type layer) 6.
Petitioner’s annotated figures indicate this layer with a light purple color.
See Pet. 73. Patent Owner reproduces Petitioner’s alternative version of
Salam’s Figure 3 and adds annotations to show the stepped structure of the
n-layer. Patent Owner’s annotation of Petitioner’s alternative version of
Salam’s Figure 3 is set forth below.
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Patent Owner shows in its annotated version of Salam’s Figure 10 where the
stepped structure exists. As shown in Figure 10, that stepped structure runs
along the surface of n-layer 6, i.e., the first semiconductor layer. Prelim.
Resp. 74. Similarly, Patent Owner’s annotations of Petitioner’s alternative
version of Salam’s Figure 3 show that the stepped structure on the surface of
n-layer 6 remains. Id. at 74, 79. According to Patent Owner, Petitioner has,
therefore, not shown even in its alternative version of Salam’s Figure 3 that
Salam discloses a first inclined surface that is continuous.
Based upon our review of the arguments and evidence, we agree with
Patent Owner that Petitioner has not identified a disclosure in Salam wherein
the light emitting device comprises a first inclined surface that is continuous.
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Even if Petitioner had explained how a person of ordinary skill in the art
would have at once envisaged the chip depicted in Petitioner’s alternative
version of Salam’s Figure 3, Petitioner has not shown that such alternative
version of the chip includes a first inclined surface that is continuous.
Indeed, Petitioner’s alternative version does not even show that what it
refers to as the first semiconductor layer having a first inclined surface that
is continuous. As seen in Petitioner’s alternative version of Salam’s Figure
3, the first semiconductor layer 6 (colored light purple) has a step at side
wall 26 (colored red). Pet. 82; Prelim. Resp. 74; see also Ex. 1005, 9:46–47
(“Track 16 makes electrical contact with n-layer 6 at side wall 26.”).
Because Petitioner has failed to show that Salam discloses a light
emitting device comprising a first inclined surface that is continuous, as
required by independent claim 1, we determine that Petitioner has not shown
a reasonable likelihood of prevailing on its assertion that independent claim
1 is anticipated by Salam. For at least the same reasons, we also determine
that Petitioner has not shown a reasonable likelihood of prevailing on its
assertion that dependent claim 7 is anticipated by Salam.
For its obviousness challenge of dependent claims 2 and 6, Petitioner
again relies on Salam as disclosing the elements of claim 1, including the
first inclined surface that is continuous, as set forth in its anticipation
challenge. Pet. 94–96. Accordingly, we determine that Petitioner has not
shown a reasonable likelihood of prevailing in its challenge of claims 2 and
6 for at least the same reasons discussed regarding the challenge of the claim
1 from which claims 2 and 6 depend.

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III. CONCLUSION
For the foregoing reasons, we deny the Petition and decline to
institute the requested inter partes review.

IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that that Petitioner’s request for an inter partes review of
1, 2, 6, and 7 of the ’435 patent is denied.

For PETITIONER:

Heath Briggs
Andrew Sommer
Barry Schindler
briggsh@gtlaw.com
sommera@gtlaw.com
schindlerb@gtlaw.com

For PATENT OWNER:

Bing Ai
Miguel Bombach
Kevin Patariu
Michael Eisenberg
ai-ptab@perkinscoie.com
bombach-ptab@perkinscoie.com
patariu-ptab@perkinscoie.com
michael.eisenberg@hklaw.com