Seoul Viosys Co., Ltd.

Patent Trials and Appeals Board

Dec 2, 2020

IPR2020-00655 (P.T.A.B. Dec. 2, 2020)

Trials@uspto.gov Paper 9
571-272-7822 Date: December 2, 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 Petitioner’s Request for Rehearing
35 U.S.C. § 314

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I. INTRODUCTION
Satco Products, Inc. (“Petitioner”) requests a rehearing of the
Decision Denying Institution (“Decision”) of 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”) entered on September 16, 2020 (Paper 7, “Dec.”). Paper 8 (“Reh’g
Req.”).
In the Petition (Paper 2, “Pet.”) Petitioner raised the following
challenges to those claims:
Claims Challenged 35 U.S.C. § Reference(s)
1, 2, 6, 7 103(a) Yang1, Schubert,2 Aanegola3
1, 2, 6, 7 103(a) Yang, Van Zant,4 Hawrylo,5
Yukimoto6
1, 7 102 Salam7
2, 6 103(a) Salam

Petitioner also relied on the Declaration of P. Morgan Pattison, Ph.D. (Ex.
1003).

1 Yang et al., US 2005/01790472 A1, published Aug. 18, 2005 (“Yang,”
Ex. 1004).
2 Schubert, Light-Emitting Diodes, 1st ed. New York: Cambridge University
Press 2003 (“Schubert,” Ex. 1007).
3 Aanegola et al., US 2005/0239227 A1, published Oct. 27, 2005
(“Aanegola,” Ex. 1008).
4 Van Zant, Microchip Fabrication: A Practical Guide to Semiconductor
Processing, 4th ed. Ch. 12, “Deposition,” New York: McGraw Hill 2000
(“Van Zant,” Ex. 1013).
5 Hawrylo et al., US 4,095,011, issued June 13, 1978 (“Hawrylo,” Ex. 1014).
6 Yukimoto, US 2003/0010989, published Jan. 16, 2003 (“Yukimoto,” Ex.
1020).
7 Salam, US 6,346,771 B1, issued Feb. 12, 2002 (“Salam,” Ex. 1005).
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Seoul Viosys Co., Ltd. (“Patent Owner”) filed a Preliminary Response
to the Petition. Paper 6. Patent Owner relied on the Declaration of Daniel
Feezell, Ph.D. (Ex. 2001).
Upon consideration of the Petition, Preliminary Response, and
evidence of record, we determined that Petitioner failed to demonstrate a
reasonable likelihood that it would prevail in showing the unpatentability of
any challenged claim. Dec. 22, 29. In the Rehearing Request, Petitioner
seeks a reconsideration of that determination with regard to the two grounds
based on combinations including Yang. See Reh’g Req. 2 n.2 (“Although
Petitioner disagrees with the Board’s rationale for rejecting the Salam-based
grounds, in order to streamline this request for rehearing Petitioner focuses
on the Yang grounds.”).
II. DISCUSSION
“When rehearing a decision on petition, a panel will review the
decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of
showing a decision should be modified lies with the party challenging the
decision. The request must specifically identify all matters the party
believes the Board misapprehended or overlooked, and the place where each
matter was previously addressed in a motion, an opposition, or a reply.” Id.
§ 42.71(d). Because Petitioner has not met its burden, as discussed below,
the Rehearing Request is denied.
Independent claim 1 of the ’435 patent recites a light-emitting device
comprising a substrate and first and second light emitting cells disposed on a
substrate, wherein each light emitting cell comprises, among other elements,
first and second semiconductive layers, an active layer disposed between the
first and second semiconductive layers, and a first inclined surface.
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Ex. 1001, 21:2–12. Claim 1 also recites that “the first inclined surface is
continuous and has a slope of approximately 20⸰ to approximately 80⸰ from a
horizontal plane of the substrate.” Id. at 21:25–27.
In the Decision, we determined that Petitioner 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. Dec. 17–20.
In the Rehearing Request, Petitioner asserts that the Board erred in making
that determination. Req. Reh. 1. Specifically, Petitioner asserts that “[t]he
Board reached this conclusion based on an incorrect belief, put forward by
the Patent Owner, that Petitioner argued that the ‘continuous’ inclined
surface must encompass ‘all layers’ of the light emitting cell,” i.e., that the
continuous surface must extend along a surface of the first and second
semiconductor layers, with the active layer disposed therebetween. Id. at 1,
3 (citing Dec. 17–18). Petitioner asserts that it made no such argument. Id.
According to Petitioner, the Board, therefore, “misapprehended Petitioner’s
argument and the meaning of the word ‘continuous’.” Id. at 1. We disagree.
In the Petition, Petitioner did not expressly provide a proposed
construction for the term “continuous” or the phrase “the first inclined
surface is continuous.” See Pet. 10; Dec. 8. Instead, Petitioner relied on the
ordinary and customary meaning of the word. See Pet. 10; Dec. 8. We
found that Petitioner illustrated what it believed to be the recited first
inclined surface that is continuous in its annotated version of Figure 32 of
the ’435 patent, set forth below.
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As explained in the Decision, “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.” Dec. 15 (citing Pet. 37, 41). Petitioner codes the
“substrate” (50) pink, the “first semiconductor layer” (55) light purple, the
“active layer” (57) red, and the “second semiconductor layer” (59) green.
Id. We noted also that “Petitioner’s annotated version of Figure 32 of the
’435 patent also adds a gold circle around what Petitioner considers to be the
inclined surfaces of the light emitting cells.” Id. at 15–16 (citing Pet. 41).
Specifically, in the Decision, we relied upon Petitioner’s assertion 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. at 16 (quoting Pet. 41)
(emphasis added). As explained in the Decision, Petitioner identified in its
annotated version of Figure 32 precisely what it believes to be the first
inclined surface, i.e., the “longer inclined surface on the left side of each
respective light emitting cell,” which is unmistakably depicted in
Petitioner’s annotated version of Figure 32 as comprising the “first
semiconductor layer” (55) (light purple shading), the “active layer” (57) (red
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shading), and the “second semiconductor layer” (59) (green shading).
Dec. 16 (citing Pet. 41).
Additionally, we recognized Petitioner’s assertion that the left side of
each inclined surface circled in gold in its annotated version of Figure 32
represents a “continuous” surface. Id. at 16 (citing Pet. 60). Specifically,
Petitioner stated in the Petition, “This limitation requires that the ‘first
inclined surface’ . . . be continuous and have a slope within a wide range. In
annotated FIG. 32, the left side of each inclined surface has such an inclined
surface (circled gold).” Pet. 60 (emphasis added). Again, the left side of
each inclined surface that is circled in gold in Petitioner’s annotated version
of Figure 32 unmistakably includes the “first semiconductor layer” (55)
(light purple shading), the “active layer” (57) (red shading), and the “second
semiconductor layer” (59) (green shading). Dec. 17–18 (citing Pet. 41, 60).
Thus, as explained in the Decision, we based our determination that
Petitioner failed to show that Yang teaches or suggests a light emitting
device comprising a first inclined surface that is continuous on “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 semiconductor layer.” Id. at 19–20.
In the Rehearing Request, Petitioner asserts that it “identified the left
side of the inclined surface as a surface that is an example of the claimed
‘first inclined surface,’ but did not argue that ‘continuous’ invokes an ‘all
layer’ requirement.” Req. Reh. 5. Petitioner acknowledges that it did not
propose an express construction for the term “continuous,” but instead relied
on its ordinary and customary meaning and provided an annotated version of
Figure 32 of the ’435 patent to “show various features.” Id. at 2 (citing Pet.
10), 5. However, in the Rehearing Request, Petitioner asserts for the first
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time that it considers the ordinary and customary meaning of a “continuous”
surface in claim 1 to be “an uninterrupted surface.” Req. Reh. 5 (footnoting
“See, e.g., https://dictionary.cambridge.org/dictionary/english/continuous
(‘without a pause or interruption’).”).
Further, Petitioner asserts that it did not make an “all layers” argument
because “other continuous (uninterrupted) inclined surfaces in the cells of
FIG. 32 do not include any other layers.” Id. In support of that statement,
Petitioner sets forth in the Rehearing Request a different and new annotated
version of Figure 32 of the ’435 patent with circles around the right sidewall
of element 55 (the “first semiconductor layer”). Id. According to Petitioner,
its new annotated version of Figure 32 shows that “one light emitting cell
(56) includes a single layer (55) having a continuous (uninterrupted) inclined
sidewall. The same goes for the other cell. Cells having these uninterrupted
inclined sidewalls also meet the requirements of claim 1.” Id. Additionally,
Petitioner contends, for the first time, how its newly proposed ordinary and
customary meaning of the word “continuous” is allegedly supported by the
Specification, and in view of a comparison between the language of claims 1
and 7. See id. at 6–7.
In other words, Petitioner seeks to demonstrate that we
misapprehended Petitioner’s argument relating to the meaning of the word
“continuous” not based upon what it presented in the Petition, but instead
based upon newly raised arguments regarding what it asserts is the ordinary
and customary meaning of the term. That showing is misplaced as a
Rehearing Request does not provide an opportunity to raise additional
arguments or supplement information set forth in the Petition. Thus,
Petitioner has not shown that we have misapprehended any matter raised in
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the Petition regarding what constitutes a first inclined surface that is
continuous.
Moreover, we note that Petitioner’s rationale in the Rehearing Request
is deficient as Petitioner fails to consider that claim 1 does not merely recite
that a surface is “continuous,” but that “the first inclined surface is
continuous.” Ex. 1001, 21:25. Petitioner’s new argument regarding the
meaning of the term “continuous” focuses only on that term without
considering that it modifies the phrase “the first inclined surface.” Id.
Indeed, Petitioner asserts that surfaces other than the first inclined surface
have uninterrupted inclined sidewalls that also meet the requirements of
claim 1. Req. Reh. 5. However, that cannot be, as claim 1 expressly recites
that it is “the first inclined surface” that is “continuous,” not just any surface.
Petitioner’s new position in the Rehearing Request does not take into
account its earlier position that the “first inclined surface” corresponds to
“the longer inclined surface on the left side of each respective light emitting
cell shown in FIG. 32 . . . (circled in gold).” Pet. 41. As discussed above,
Petitioner depicts that portion of Figure 32 as including the first
semiconductor layer, the active layer, and the second semiconductor layer.
Dec. 17–18; Pet. 41. Therefore, even under Petitioner’s new argument that
the term “continuous” means “uninterrupted,” the uninterrupted surface
would still have to be present along the surface of the first semiconductor
layer, the active layer, and the second semiconductor layer, as Petitioner has
recognized that surface as the first inclined surface.
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III. CONCLUSION
Because Petitioner has not demonstrated that we misapprehended or
overlooked matters raised in the Petition, we conclude Petitioner has not
shown that the Board abused its discretion in denying institution of the
challenged claims. See 37 C.F.R. § 42.71(d).

IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner’s Request for Rehearing is denied.

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For PETITIONER:

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

For PATENT OWNER:

Bing Ai
Miguel Bombach
Kevin Patariu
PERKINS COIE LLP
ai-ptab@perkinscoie.com
bombach-ptab@perkinscoie.com
patariu-ptab@perkinscoie.com

Michael Eisenberg
HOLLAND & KNIGHT
michael.eisenberg@hklaw.com