Seoul Viosys Co. Ltd.

Patent Trials and Appeals Board

Sep 10, 2021

IPR2020-00608 (P.T.A.B. Sep. 10, 2021)

Trials@uspto.gov Paper 39
571-272-7822 Date: September 10, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SATCO PRODUCTS, INC.,
Petitioner,
v.
SEOUL VIOSYS CO., LTD.,
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Patent 9,343,631 B2

Before ERICA A. FRANKLIN, JEFFREY W. ABRAHAM, and
ELIZABETH M. ROESEL, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 314

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I. INTRODUCTION
This is a Final Written Decision in an inter partes review of claims 1,
5, 7, 8 and 13–15 (“the challenged claims”) of U.S. Patent No. 9,343,631 B2
(Ex. 1001, “the ’631 patent”). We have jurisdiction under 35 U.S.C. § 6,
and enter this Decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. §
42.73. For the reasons set forth below, we determine that Satco Products,
Inc. (“Petitioner”) has shown, by a preponderance of the evidence, that all of
the challenged claims are unpatentable. See 35 U.S.C. § 316(e).
Additionally, we deny Petitioner’s Motion to Exclude Evidence.
A. Procedural History
Petitioner filed a Petition requesting an inter partes review of claims
1, 5, 7, 8 and 13–15 of the ’631 patent. Paper 1 (“Petition” or “Pet.”).
Petitioner supported the Petition with the Declaration of Russell D. Dupuis,
Ph.D. (Ex. 1002).
Seoul Viosys Co., Ltd. (“Patent Owner”) filed a Preliminary Response
to the Petition. Paper 6 (“Prelim. Resp.”). Patent Owner relied on the
Declaration of Daniel Feezell, Ph.D. (Ex. 2001).
On September 16, 2020, pursuant to 35 U.S.C. § 314(a), we instituted
trial to determine whether any challenged claim of the ’631 patent is
unpatentable based on the three obviousness grounds raised in the Petition.
Paper 8 (“Inst. Dec.”). The following table sets forth those grounds asserted
for the challenged claims: 1

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 ’631 patent issued has an
effective filing date prior to March 16, 2013, the pre-AIA version of § 103
applies.
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Claims Challenged 35 U.S.C. § Reference(s)
1, 5, 13–15 103(a) Zhao2, Garbuzov3
7 103(a) Zhao, Garbuzov, Niu4
8 103(a) Zhao, Garbuzov, Slater5

Patent Owner filed a Patent Owner Response to the Petition. Paper 20
(“PO Resp.”). Patent Owner supported the Patent Owner Response with a
second Declaration of Dr. Feezell. Ex. 2013. Petitioner filed a Reply to the
Patent Owner Response. Paper 24 (“Pet. Reply”). Patent Owner filed a Sur-
reply to Petitioner’s Reply. Paper 30 (“PO Sur-reply”).
Petitioner filed a Motion to Exclude Evidence. Paper 34 (“Mot.”).
Patent Owner filed an Opposition to the motion. Paper 35 (“Mot. Opp.”).
Petitioner filed a Reply in support of the motion. Paper 36 (“Mot. Reply”).
On June 17, 2021, the parties presented arguments at an oral hearing.
Paper 33. The hearing transcript has been entered in the record. Paper 38
(“Tr.”).
B. Real Parties-in-Interest
Petitioner identifies Satco Products, Inc. as the real party-in-interest.
Pet. 61. Patent Owner identifies Seoul Viosys Co., Ltd. as the real party-in-
interest. Paper 3, 1.

2 Zhao et al., Efficiency Enhancement of InGaN/GaN Light-Emitting Diodes
with a Back-Surface Distributed Bragg Reflector, 32 (12) J. ELECTRONIC
MATERIALS 1523-1526 (2003) (“Zhao,” Ex. 1036).
3 Garbuzov et al., US 6,404,125 B1, issued Jun. 11, 2002 (“Garbuzov,”
Ex. 1038).
4 Niu et al., Enhancing the Light Extraction Efficiency of GaN-based LEDs,
6828 LIGHT-EMITTING DIODE MATERIALS AND DEVICES II: PROCEEDINGS OF
SPIE 682811-1–11 (2007) (“Niu,” Ex. 1035).
5 Slater et al., US 6,791,119 B2, issued Sep. 14, 2004 (“Slater,” Ex. 1039).
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C. Related Proceedings
Petitioner and Patent Owner provide notice of a district court litigation
involving the ’631 patent: Seoul Semiconductor Co., Ltd. v. Satco Products,
Inc., No. 2:19-cv-04951 (EDNY). Pet. 61; Paper 3, 1. Patent Owner also
notes that the ’631 patent is among other patents asserted in Seoul
Semiconductor Co. Ltd., Seoul Viosys Co., Ltd. v. Fry’s Electronics, Inc.,
No. 2-18-cv-00386 (EDTX). Paper 3, 1.
D. The ’631 Patent
The ’631 patent relates to a light emitting diode (“LED”) chip having
a distributed Bragg reflector (“DBR”) and a method of fabricating the same.
Ex. 1001, 1:24–27. The Specification explains that a gallium nitride-based
LED chip that emits blue or ultraviolet wavelength light may be used for
various applications, including LED packages that emit mixed color light.
For example such LED packages may emit white light for a backlit unit or
for general lighting. Id. at 1:29–34. The light output from the LED package
may depend on the light emission efficiency of the LED chip. Id. at 1:35–
36.
Attempts have been made to improve the light extraction efficiency of
the LED chip, such as forming a metal reflector or a DBR on a bottom
surface of a transparent substrate. Id. at 1:39–44. An example of such an
attempt is characterized in Figure 2 of the ’631 patent, set forth below.
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Figure 2 is a graph showing the reflectivity of a DBR reflector formed on the
bottom surface of a sapphire substrate of an LED chip emitting light having
a peak wavelength of 460 nm. Id. at 1:54–59, 3:3–4. As shown in Figure 2,
reflectivity in the LED using the DBR may reach approximately 100% in a
blue wavelength range, e.g., a wavelength of 400 to 500 nm. Id. at 1:59–62.
The Specification explains that the DBR, however, can only increase the
reflectivity for a part of the visible range. Id. at 1:63–64. As a result,
when mounting the light emitting diode chip using the DBR in a
[LED] package to emit white light, the DBR shows high
reflectivity for the light of the blue wavelength range emitted
from the [LED] chip but the DBR does not show efficient
reflection characteristics for light emitted in the green and/or red
wavelength ranges. Therefore, there is a limit in improving the
light emission efficiency of the [LED] package.

Id. at 2:3–10. According to the Specification, “[e]xemplary embodiments of
the present invention provide a [LED] chip capable of increasing the light
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emission efficiency of [LED] package implementing a mixed color light, for
example, white light,” and a “DBR having high reflectivity over a wide
wavelength range and a [LED] chip having the same.” Id. at 2:14–22. For
example, Figure 6, set forth below, illustrates an embodiment of the
invention.

Figure 6 is a cross-sectional view showing LED chip 20a having a plurality
of light emitting cells 30 on an upper surface of substrate 21. Id. at 8:1–6.
The light emitting structure includes a first conductive-type semiconductor
layer 25, a second conductive-type semiconductor layer 29, and an active
layer 27 positioned between those layers. Id. at 4:12–16. A phosphor
layer 43, positioned on LED chip 20a, converts the wavelength of light
emitted from the light emitting cells 30. Id. at 9:42–47. The LED chip has,
positioned on the lower surface of substrate 21, DBR assembly 45,
comprising first DBR 40 having high reflectivity for visible light of a
relatively long wavelength stacked with second DBR 50 having high
reflectivity for visible light of a relatively short wavelength. Id. at 4:58–5:3,
5:58–66, 7:42–67, 8:7–12. The Specification explains,
as compared to the case where the second [DBR] 50 is disposed
to be closer to the substrate 21 than the first [DBR] 40, the light
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loss in the [DBR] 45 may be further reduced in the case where
the first [DBR] 40 is disposed to be closer to the substrate than
the second [DBR] 50.
Id. at 6:15–21.
E. Illustrative Claim
Petitioner challenges independent claim 1 and dependent claims 5, 7,
8 and 13–15 of the ’631 patent. Independent claim 1, set forth below, is
illustrative.
1. A light-emitting diode chip configured to emit light of a
first wavelength range and light of a second wavelength range,
comprising:
a substrate;
a light-emitting structure disposed on a first surface of the
substrate, the light-emitting structure comprising an active
layer disposed between a first conductivity-type
semiconductor layer and a second conductivity-type
semiconductor layer, and configured to emit light of the
first wavelength range;
first and second distributed Bragg reflectors (DBRs) disposed
on a second surface of the substrate; and
a phosphor disposed on the light-emitting structure,
wherein:
the first DBR is disposed closer to the substrate than the
second DBR;
the first wavelength range comprises a blue wavelength range;
light of the second wavelength range is converted by the
phosphor;
the first DBR comprises a higher reflectivity for light of the
second wavelength range than for light of the first wavelength
range; and
the second DBR comprises a higher reflectivity for light of the
first wavelength range than for light of the second wavelength
range.
Ex. 1001, 14:12–37.
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II. PATENTABILITY ANALYSIS
A. Principles of Law
To prevail in its challenges to the patentability of all claims of the
’631 patent, Petitioner must demonstrate by a preponderance of the evidence
that the claims are unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d)
(2019). “In an [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid. Tech., Inc., 815 F.3d 1356, 1363
(Fed. Cir. 2016); see also 35 U.S.C. § 312(a)(3) (2012) (requiring inter
partes review petitions to identify “with particularity . . . the evidence that
supports the grounds for the challenge to each claim”). That burden of
persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l
Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015); see also In re
Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375–78 (Fed. Cir. 2016)
(discussing the burden of proof in inter partes review).
A claim is unpatentable for obviousness if, to one of ordinary skill in
the pertinent art, “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.” 35 U.S.C. § 103(a)
(2006); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). “If
a person of ordinary skill in the art can implement a predictable variation, §
103 likely bars its patentability.” Id. at 417.
The question of obviousness is resolved on the basis of underlying
factual determinations including the scope and content of the prior art, any
differences between the claimed subject matter and the prior art, the level of
ordinary skill in the art, and objective evidence of nonobviousness. Graham
v. John Deere Co., 383 U.S. 1, 17–18 (1966). “An obviousness
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determination requires finding both ‘that a skilled artisan would have been
motivated to combine the teachings of the prior art references to achieve the
claimed invention, and that the skilled artisan would have had a reasonable
expectation of success in doing so.’” CRFD Research, Inc. v. Matal, 876
F.3d 1330, 1340 (Fed. Cir. 2017) (quoting Intelligent Bio-Sys., Inc. v.
Illumina Cambridge Ltd., 821 F.3d 1359, 1367–1368 (Fed. Cir. 2016)).
We analyze Petitioner’s asserted grounds of unpatentability in
accordance with the above-stated principles.
B. 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
at least a master’s degree in chemical engineering, materials
engineering, electrical engineering, optics, or physics, or similar
advanced postgraduate education in at least one of these areas,
and two years of experience designing the structure and process
for manufacturing light emitting diode chips and packaging for
those chips.

Pet. 24 (citing Ex. 1002 ¶¶ 23–24; Ex. 1001, 1:24–27). Petitioner notes also
that “[a] person with less education but more relevant practical experience,
depending on the nature of that experience and degree of exposure to LED
design and fabrication techniques, could also qualify as a person of ordinary
skill in the field of the ’631 patent.” Id. at 24–25. In the Preliminary
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Response, Patent Owner did not address Petitioner’s description of the level
of ordinary skill in the art or provide its own description.
At the institution stage, we preliminarily adopted Petitioner’s
definition. Inst. Dec. 8. Patent Owner did not address the level of ordinary
skill in the art or provide its own description in its Response.
Accordingly, for this Decision we adopt the same definition, again
recognizing that this level of ordinary skill in the art is reflected in the prior
art of record. 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))).
We have reviewed the credentials of Petitioner’s declarant, Dr.
Dupuis, and Patent Owner’s declarant, Dr. Feezell, and consider each of
them to be qualified to provide their opinion on the level of skill in the art
and the knowledge of a person of ordinary skill in the art at the time of the
invention (“POSITA”). As discussed in the our Consolidated Trial Practice
Guide,
An expert witness must be qualified as an expert by knowledge,
skill, experience, training, or education to testify in the form of
an opinion. Fed. R. Evid. 702. There is, however, no
requirement of a perfect match between the expert’s experience
and the relevant field. SEB S.A. v. Montgomery Ward & Co., 594
F.3d 1360, 1373 (Fed. Cir. 2010). A person may not need to be
a person of ordinary skill in the art in order to testify as an expert
under Rule 702, but rather must be “qualified in the pertinent
art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d
1356, 1363–64 (Fed. Cir. 2008).

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Patent Trial and Appeal Board Consolidated Trial Practice Guide November
2019 (“CTPG”) (available at https://www.uspto.gov/sites/default/files/
documents/tpgnov.pdf), 34.
C. Claim Construction
Having defined the ordinarily skilled artisan, we now turn to 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) (2021). 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. 25. In the Preliminary Response, Patent Owner
agreed that no claim terms require construction. Prelim. Resp. 13. At the
institution stage, we agreed with the parties and determined that express
construction of claim terms was unnecessary for purposes of rendering an
institution decision. Inst. Dec. 9.
In the Patent Owner Response, Patent Owner again confirms its
position that “no construction is necessary for any term.” See PO Resp. 5.
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In view of the parties’ positions, and our consideration of the issues,
we determine that express construction of claim terms is unnecessary for
purposes of deciding whether Petitioner has shown that the challenged
claims are unpatentable over the cited art. 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)).
D. Obviousness over Zhao and Garbuzov
Petitioner asserts that claims 1, 5 and 13–15 are rendered obvious by
the combined teachings of Zhao and Garbuzov. Pet. 30–54; Pet. Reply 1–
26. Patent Owner disagrees. PO Resp. 1–85; PO Sur-reply 1–26.
1. Zhao
Zhao is a journal article describing the design and fabrication of a
double DBR mirror deposited on the backside of an InGaN/GaN LED chip
to increase external quantum efficiency for InGaN/GaN blue and green
LEDs. Ex. 1036, 1523–1525.6 Zhao explains that blue and green LEDs
based on the InGaN/GaN material system are commercially available, but
are “inherently inefficient because photons are generated through a
spontaneous emission process and emit in all directions. A large fraction of
light emitting downward toward the substrate and to the side does not
contribute to useable light output.” Id. at 1523. Zhao notes that “[f]or a blue
or green multiple quantum well (MQW) InGaN/GaN LED, 99% of the
emitted light lies within a bandwidth approximately 120-nm wide.” Id.

6 Our citation to the Petitioner’s exhibits refers to the original page numbers
of the exhibit and not those added by Petitioner.
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at 1524. To maximize the redirection of all emitted photons upwards, Zhao
describes combining two TiO2/SiO2 DBR stacks into a single DBR structure,
wherein each stack is optimized for a different peak wavelength, i.e., 470 nm
and 520 nm. Id. Zhao’s Figure 2 is set forth below.

Zhao’s Figure 2 is a schematic diagram of its fabricated LED structure. Id.
at 1524. According to Zhao, the DBR-enhanced LEDs with wavelengths
from 455 nm to 525 nm demonstrate a 65% improvement in emitted light
intensity at the chip level for blue LEDs, with comparable enhancements in
green LED emission. Id. at 1525–26.
2. Garbuzov
Garbuzov relates to methods and apparatus for performing
wavelength-conversion using phosphors with LEDs. Ex. 1038, 1:13–16.
Garbuzov explains that its apparatus comprises an active region, a phosphor
layer, and a substrate. Id. at 1:44–45. “The active region is configured to
emit light having a first band of wavelengths selected from a first group of
wavelengths.” Id. at 1:45–47. The phosphor layer includes a plurality of
wavelength-converting phosphors and is “configured to convert the first
band of wavelengths of light emitted from the active region to a second band
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of wavelengths.” Id. at 1:49–52. An embodiment of Garbuzov is depicted
in Figure 6, set forth below.

Figure 6 illustrates a light-emitting device having a reflective layer
according to an embodiment of Garbuzov. Id. at 8:34–35. Light-emitting
device 600 includes, in particular, phosphor layer 610, active region 630,
reflective layer 650, and substrate 660. Id. at 8:36–40. Garbuzov states that
“[r]eflective layer 650 is configured to reflect light having the first band of
wavelengths (e.g., light produced by active layer 632 of active region 630)
and light having a second band of wavelengths (e.g., light produced through
wavelength-conversion by phosphor layer 610).” Id. at 8:41–45.
3. Discussion
a) Independent Claim 1
Addressing claim 1 of the ’631 patent, Petitioner asserts that Zhao
teaches a commercial grade LED chip comprising a substrate, a light-
emitting structure disposed on a first surface of the substrate and comprising
an active layer disposed between a first conductivity-type semiconductor
layer and a second conductivity-type semiconductor layer, wherein the light-
emitting structure is configured to emit light of a first wavelength range.
Pet. 30–33 (citing Ex. 1036, 1523–1525, and Fig. 2; Ex. 1002 ¶¶ 102–109).
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Petitioner asserts that Zhao teaches a first wavelength range comprising a
blue wavelength range because Zhao discloses the light generated by its
LEDs “lies within a bandwidth of approximately 120-nm wide,” refers to its
LEDs as “blue and green LEDs,” and provides two examples of an LED
with a blue wavelength range, Samples A and B, in Table 1. Id. at 30–31, 39
(citing Ex. 1036, 1524, 1525, Table 1; Ex. 1002 ¶ 119).
Regarding the second wavelength range recited in claim 1, Petitioner
asserts, in one iteration of its argument, that Zhao’s disclosure of a spectral
range of 120 nm also teaches that its LEDs generate light in a second
wavelength range comprising a green wavelength range. Pet. 30. According
to Petitioner, a person having ordinary skill in the art would have understood
that a spectral range of 120 nm encompasses multiple wavelength ranges,
including a first blue wavelength range around 450 nm, and a second green
wavelength range around 550 nm. Id. at 30–31.
In an alternative argument, Petitioner considers claim 1 to require that
the second wavelength range is a phosphor-converted wavelength range.
Pet. 31. To reach that requirement, Petitioner relies on the combination of
Zhao and Garbuzov. Pet. 31, 34–35, 41–44. Petitioner asserts that “the use
of phosphors in LED design to convert light of a second wavelength range
based on light of a first wavelength range was well-known” in the art. Id.
at 35. As an example, Petitioner relies upon Garbuzov as teaching the use of
“a wavelength-converting phosphor to convert light emitted from the active
region into another, longer wavelength of light.” Id. (citing Ex. 1038,
Abstract, 2:18–23, 2:60–67, 3:27–33, 8:34–53). Petitioner asserts that
“Garbuzov provides a variety of phosphors that may be disposed on the light
emitting structures to convert light of various wavelengths ranging from
400 nm to 610 nm.” Id. (citing Ex. 1038, 3:1-20). According to Petitioner,
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adding such a known element, i.e., phosphor layer, on the device layers of
Zhao’s LED device would have been obvious to a skilled artisan because the
use of phosphors to convert blue light LEDs into other wavelengths,
including green, red, and yellow, had been done in the art, as evidenced by
Garbuzov. Id. at 41 (citing Ex. 1002 ¶ 134; Ex. 1038, 1:35–41, 3:1–20).
Further, Petitioner contends that modifying Zhao’s blue-light LED
was a predictable variation of Zhao that would have led to predictable
results, because: (a) Garbuzov was directed to blue InGaN/GaN LEDs
similar to those in Zhao, and (b) Garbuzov taught that depositing phosphors
on such an LED chip could convert some blue light into light of another
wavelength. Pet. 41. According to Petitioner, that modification amounts to
no more than the use of a known manner of improving one device to
improve a similar device in a similar way, which was within the skill in the
art to do. Id. at 43 (citing KSR, 550 U.S. at 417; Ex. 1002 ¶¶ 138–139).
For the DBR recitations in claim 1, Petitioner begins by asserting that
Zhao teaches that its LED chip has disposed on a second surface of its
substrate first and second DBRs, i.e., a “double quarter-wave stack design
composed of TiO2 and SiO2 layers.” Pet. 33–34 (citing Ex. 1036,
1523–1524, and Fig. 2; Ex. 1002 ¶¶ 110–112). Petitioner asserts also that
Zhao teaches that the first DBR has a peak reflectivity at 470 nm, i.e., in a
blue wavelength range, and the second DBR has a peak reflectivity at 520
nm, i.e., in a green wavelength range. Id. at 36 (citing Ex. 1036, 1524;
Ex. 1002 ¶ 116). According to Petitioner, those disclosures provide one
DBR having a higher reflectivity for the light of a second wavelength range
than the light of the first wavelength range, and another DBR having a
higher reflectivity for the light of the first wavelength range than for the light
of the second wavelength range. Id.
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As for the recited DBR arrangement in claim 1, Petitioner recognizes
that Zhao does not expressly teach that “the first DBR is disposed closer to
the substrate than the second DBR,” as recited in claim 1. Pet. 37.
Petitioner asserts, however, the claimed positioning of the first and second
DBRs in relation to the substrate “would have been a predictable variation of
Zhao’s implementation of a tandem backside DBR structure.” Id. at 44.7
According to Petitioner, a skilled artisan would have understood that there
were a finite number of predictable ways to implement Zhao’s tandem back-
surface DBRs. Specifically, Petitioner asserts that there would only be two
possible arrangements of the two DBRs stacks disclosed by Zhao, either
arrangement would have been obvious, and that swapping or rearranging the
order was well within the technical grasp of the artisan. Id. at 46 (citing Ex.
1002 ¶¶ 131, 137).
Further, referring to In re Japiske, 181 F.2d, 1019, 1023 (C.C.P.A.
1950), Petitioner asserts that “rearrangement of prior art components does
not render a claim nonobvious where the new arrangement does not modify
the operation of the device.” Id. at 44. According to Petitioner, “[h]ere,
regardless of the arrangement of the DBRs, the operation within the claimed
LED is not materially different.” Id. In support of that position, Petitioner
asserts that a skilled artisan would have known of simulation software that
could simulate the performance of optical thin-film devices, including

7 We understand Petitioner’s sentence on page 44 of the Petition stating that
“positioning the second DBR closer to the substrate than the first DBR also
would have been obvious” inadvertently refers to the second DBR as being
closer to the substrate, rather than the first DBR being closer to the substrate,
as required by claim 1. See Pet. 44. It also appears that Petitioner
mistakenly refers to Ex. 1002 ¶ 39 instead of Ex. 1002 ¶ 36 in support of that
assertion. See id.
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DBRs. Id. (citing Ex. 1002 ¶¶ 59, 121–130, 136–137; Ex. 1036, 1524).
According to Petitioner, a skilled artisan would have been able to use such
software to determine that the order of Zhao’s DBR stacks with respect to
the substrate had “virtually no difference in performance over wavelength
range 380nm-780nm.” Id. at 44–45 (citing Ex. 1002 ¶ 137). Petitioner
asserts that the literature suggests the same finding. Id. at 45 (citing
Ex. 1028,8 382); see also id. at 18 (citing Ex. 1028, 382) (“For stacks of the
reverse sequence where the thinnest pair is on the substrate, almost the same
reflective spectra are obtained.”). Petitioner contends that Dr. Dupuis
modeled the performance of Zhao’s DBRs using that type of software and
“concluded that inverting the DBRs of Zhao ‘has no significant effect on the
DBR performance at 0°, 30°, and 50°.’” Id. at 45 (citing Ex. 1002 ¶¶ 128,
131).
Patent Owner does not challenge Petitioner’s assertions that Zhao
teaches or suggests a LED chip configured to emit light of a blue wavelength
range comprising a substrate, a light-emitting structure disposed on a first
surface of the substrate, wherein the light-emitting structure comprises an
active layer disposed between two conductivity-type semiconductor layers,
and is configured to emit light of the blue wavelength range. See generally
PO Resp. 10–13. Nor does Patent Owner challenge Petitioner’s assertion
that Zhao’s LED comprises first and second DBRs disposed on a second
surface of the substrate. Id.
Patent Owner asserts, however, that Petitioner has not shown that
Zhao’s LEDs emit light of both a first (blue) and second (green) wavelength

8 Saka et al., Bragg Reflector of GaAlAs/AlAs Layers with
Wide Bandwidth Applicable to Light Emitting Diodes, 73(1) J. APPL. PHYS.
380–383 (1993).
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range. PO Resp. 77–83. Patent Owner also challenges Petitioner’s
combination of Zhao and Garbuzov, asserting that Petitioner has not
provided sufficient motivation for modifying Zhao’s LED to include
Garbuzov’s phosphor and a “matching” DBR. Id. at 20–42, 84–85.
Additionally, Patent Owner asserts that Petitioner has not demonstrated
persuasively that a skilled artisan would have had any motivation to arrange
Zhao’s DBR layers in the manner recited by claim 1. Id. at 42–77. Thus,
we focus our attention in the following discussion on those disputes.
(1) Zhao’s Disclosure of Light Emission
As noted above, Petitioner asserts, in one iteration of its argument,
that Zhao discloses the claim limitation requiring the LED chip “to emit
light of a first wavelength range and light of a second wavelength range” by
describing an LED chip configured to emit both blue and green light, i.e.,
light of first and second wavelength ranges. Pet. 30–31. Patent Owner
disagrees by asserting that Zhao does not describe a single LED that emits
light at both blue and green wavelength ranges, or any multi-colored LED.
PO Resp. 77. Rather, according to Patent Owner, Zhao is directed to LEDs
that output either a blue or a green light. Id. at 78; Ex. 2001 ¶¶ 38–42.
Petitioner does not respond to Patent Owner’s argument in the Reply
or to our preliminary finding in the Institution Decision, Inst. Dec. 16, that
Zhao does not disclose any LED emitting light at both a first and a second
wavelength range.
Having considered the record as a whole, we agree with Patent Owner
that Zhao does not disclose or describe an LED that additionally emits light
at a second wavelength range, as claimed. As Patent Owner notes, Zhao
discusses and exemplifies blue or green LEDs and does not mention or
suggest LEDs that emit light at more than a single wavelength range. PO
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Resp. 77–78 (citing Ex. 1036, 1523–1525; Ex. 2001 ¶¶ 38–42). Further,
consistent with Patent Owner’s arguments, we understand Zhao’s teaching
of a 120-nm wide emission bandwidth for its LEDs (Ex. 1036, 1524) refers
to an emission spectrum having a single peak wavelength and a single
wavelength range, not first and second wavelength ranges, as claimed. In
particular, Zhao explains that 99% of the emitted light lies within this
bandwidth and that “there can be a 20-nm variation in the peak emission
wavelength” depending on how the LED is fabricated. Id.
(2) Combining Garbuzov’s Phosphor with Zhao’s LED
As set forth above, Petitioner alternatively argues in the Petition that
the combination of Zhao and Garbuzov provides an LED chip that emits
light of a first wavelength range and light of a second wavelength range. In
this alternative argument, Petitioner proposes a modification of Zhao’s LED
chip to include a phosphor layer configured to convert a first band of
wavelengths of light emitted to a second band of wavelengths, i.e., to emit
light of a second wavelength, as taught by Garbuzov. Pet. 31, 35–36, 41–44.
Petitioner also relies on that modification to reach the claim limitation
reciting a “phosphor disposed on the light-emitting structure,” wherein “light
of the second wavelength range is converted by the phosphor.” See id.
Patent Owner challenges Petitioner’s proposed combination of Zhao
and Garbuzov for a number of reasons. Patent Owner’s arguments are
largely premised upon its contention that Petitioner’s modification of Zhao
with a phosphor, as taught by Garbuzov, must be compatible with Zhao’s
disclosure of only two DBRs, wherein one is optimized for maximum
reflection at 470 nm, while the other DBR has a peak reflectance at 520 nm.
PO Resp. 18–19 (citing Ex. 1036, 1524). Patent Owner asserts that because
Zhao discloses only those two DBRs, wherein one is tuned for blue and the
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other is tuned for green, “[t]here is no room in Zhao’s disclosure for any
other allegation than the ‘second wavelength range’ is green.”9 Id. at 19.
Further, Patent Owner notes that “[t]he Petition clearly identifies Zhao’s
green wavelength range as the claimed ‘second wavelength range’ for the
first DBR.” Id. (citing Pet. 33–34, 36). Patent Owner asserts that because
Petitioner relies on the “second wavelength range” being green for the first
DBR claim limitation, then it cannot rely on a different color range, e.g., red
or yellow, for the phosphor-converted “second wavelength range” limitation.
Id. at 19. However, according to Patent Owner, the Petition fails to present a
rationale for why a skilled artisan would have added a “green-converting
phosphor” to Zhao. Id. at 2, 21–28.10
Further, Patent Owner asserts that neither Zhao nor Garbuzov
provides any motivation to add a green-converting phosphor to Zhao’s LED.
PO Resp. 21–34. For example, Patent Owner contends that if a person of
ordinary skill in the art looking at Zhao wanted a green LED, the artisan
would have simply used the green active layer, provided by Zhao. Id. at 24.
Patent Owner asserts also that Garbuzov suggests that a phosphor is not
needed if an active layer provides the desired color. Id. at 25 (citing Ex.
1038, 7:25–35; Ex. 2013 ¶ 55). Additionally, Patent Owner asserts that a
skilled artisan would not have been motivated to combine Garbuzov’s green-
converting phosphor with Zhao’s LED for reasons such as: (a) Garbuzov’s
green phosphor is designed to work in the ultraviolet to lower end of the

9 Petitioner’s position is that Zhao’s blue wavelength range at around 455
nm represents the recited “first wavelength range.” Pet. 33.
10 We understand Patent Owner’s reference to “green-converting phosphor”
as describing a phosphor that converts ultraviolet (UV) and shorter
wavelengths of blue light to green light. See PO Resp. 25 (describing
Garbuzov’s green-converting phosphor).
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blue-light spectrum and not the 454 nm to 473 nm wavelength region taught
by Zhao, id. at 25–26 (citing Ex. 1038, Table I; Ex. 2013 ¶ 58);
(b) Garbuzov’s green phosphor inefficiently converts only a fraction of light,
id.; and (c) green would not be effectively realized because Zhao’s DBR is
blue-shifted such that it is “most efficient in the blue wavelength region,”
and Zhao’s DBR exhibits “some loss of high-angle green photons,” id. at 26
(quoting Zhao 1524–1525).11
In the Reply, Petitioner asserts that Patent Owner “improperly limits
the Petition when it contends that the claimed ‘first DBR’ must be a green
DBR,” and “misinterpret[s] the Petition by limiting Petitioner’s theory to a
green second wavelength range.” Pet. Reply 3–4. Petitioner notes that the
Petition describes modifying Zhao by adding phosphors to Zhao’s DBR and
“ensuring that the DBRs were designed to reflect both light generated by the
device layers and the phosphors . . . .” Id. at 4 (quoting Pet. 38). In support
of that position, Petitioner also refers to portions of its Petition “explaining
why adding phosphors and designing the DBRs ‘with a peak reflectivity for
the light generated by the semiconductor device (e.g., blue light) and the
light emitted by the phosphor (e.g., red or yellow light)’ would have been
obvious.” Id. (citing Pet. 40–44).

11 Patent Owner also asserts that a skilled artisan “would not have been
motivated to add [Garbuzov’s] green-converting phosphor to provide a
mixed blue/green light to provide a cyanish output” because this color range
would not match the green color that the first DBR is optimized for and
would, thus, “fail to meet the claims they [sic] require that the phosphor-
converted ‘second wavelength range’ must match the ‘second wavelength
range’ that the ‘first DBR’ is tuned for.” Id. at 27. Based upon our review,
Patent Owner has not identified, nor do we see, any argument from
Petitioner that involves providing a cyanish output color. See id.
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Petitioner asserts also in the Reply that it “does not concede that
adding a green-converting phosphor to an LED with a blue active region
would have been nonobvious over Zhao in view of Garbuzov.” Id. at 4 n.1.
We view that issue differently. Because Petitioner has not substantively
addressed Patent Owner’s arguments and evidence that a person of skill in
the art would not have been motivated to combine a green-converting
phosphor with Zhao’s LED, see PO Resp. 21–34, we determine that
Petitioner has conceded that point. Accordingly, in view of Patent Owner’s
arguments and evidence, we find that Petitioner has failed to demonstrate
sufficiently that a skilled artisan would have been motivated to combine a
green-converting phosphor with Zhao’s LED.
Insofar as Petitioner asserts that its challenge of claim 1 is not limited
to combining green-converting phosphors, we agree. As recognized by
Patent Owner, Petitioner describes the use of red, yellow, and orange
phosphors in the Petition. See PO Resp. 2; Pet. 1, 6, 40. When describing
its proposed modification of Zhao, Petitioner asserts that a person of
ordinary skill “would have found the addition of phosphors to the active
device layers of Zhao to be an obvious modification to allow Zhao’s device
to produce different colors of light, including, for example, white light.”
Pet. 40. Additionally, Petitioner asserts that “[p]hosphors had been added to
blue light LEDs to convert that light into other wavelengths including green,
red, and yellow.” Id. at 41 (citing Ex. 1002 ¶ 134; Ex. 1038, 1:35–41,
3:1–20). In that regard, the Petition relies on Garbuzov as disclosing “a
variety of phosphors that may be disposed on light emitting structures to
convert light of various wavelengths ranging from 400 nm to 610 nm,” id.
at 35 (citing Ex. 1038, 3:1–20, Table 1), and teaching the placement of a
phosphor layer on the device layers of blue LEDs, similar to the LEDs
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disclosed in Zhao, id. at 41 (citing Ex. 1002 ¶ 134; Ex. 1038, 2:30–46,
1:25–30; 8:34–40).
Insofar as Petitioner asserts that its challenge of claim 1 is not limited
to Zhao’s DBR design comprising a green active layer, we again agree. In
the Petition, Petitioner explains that its modification of Zhao includes not
only adding a phosphor layer, but also modifying Zhao’s stacked DBR
configuration to “ensur[e] that at least one DBR was designed to reflect
phosphor-converted light,” which Petitioner contends would have been a
predictable variation of Zhao. Id. at 42, see also id. at 40 (asserting that the
skilled artisan “would have found it obvious to design a DBR structure in
which the first and second DBRs were . . . designed with a peak reflectivity
for the light generated by the semiconductor device (e.g., blue light) and the
light emitted by the phosphor (e.g., red or yellow light).”).
Thus, we next consider whether Petitioner has established that it
would have been obvious to a person of ordinary skill in the art to make
those two proposed modifications of Zhao. According to Patent Owner,
Petitioner’s proposed use of white, orange or yellow phosphors would have
been “untenable with Petitioner’s prior art combination” because Garbuzov
does not teach the use of white, orange, or yellow phosphors. PO Resp. 39.
Patent Owner acknowledges that Garbuzov teaches the use of red phosphors.
Id. However, Patent Owner asserts that use of red phosphors in Petitioner’s
prior art combination also would have been untenable because doing so
would require a red-reflecting DBR and Zhao does not teach a red-reflecting
DBR. Id. Patent Owner contends that “Petitioner cannot satisfy its burden
with a general premise that phosphors or (DBRs) existed, when the actual
DBRs or phosphors advocated for have no explicit teaching in the prior art
actually presented. Id. at 41 (citing 35 U.S.C. § 312 (a)(3)).
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In the Reply, Petitioner asserts that Patent Owner’s arguments
improperly attack the prior art individually, rather than considering their
combined teachings as presented in the Petition. Pet. Reply 5. In particular,
Petitioner reiterates that its combination involves modifying Zhao’s DBR
structure such that it is “designed with a peak reflectivity for the light
generated by the semiconductor device (e.g., blue light) and the light emitted
by the phosphor (e.g., red or yellow light).” Id. at 5–6 (quoting Pet. 40).
According to Petitioner, the obviousness of its proposed modification of
Zhao in this manner stands unrebutted. Id. at 6 (citing Pet. 40–44).
In its Sur-reply, Patent Owner asserts that Petitioner has not provided
any evidence that a person of ordinary skill in the art would have made any
modifications to Zhao, beyond a conclusory opinion from its expert. PO
Sur-reply 2. According to Patent Owner, “Petitioner must demonstrate, and
articulate a compelling reason that a POSITA would have added a phosphor
from Garbuzov that emits light at a specific wavelength—that Zhao’s DBRs
were designed to have a higher reflectivity for—to Zhao.” Id. Patent Owner
contends, “[t]o the extent that Petitioner attempts to provide a reasoned
motivation, it provides nothing more than a thin veneer for the fact that
Petitioner merely seeks to recreate the ’631 Patent itself, without relying on
the [sic] its own prior art.” Id. In that respect, Patent Owner asserts that
Petitioner’s modification is based on impermissible hindsight bias. Id.
Based on our review of the record as a whole, we find that Petitioner
has persuasively articulated sound reasoning for combining the teachings of
Zhao and Garbuzov to provide a modified version of Zhao’s LED that
includes a red phosphor and a “matching” DBR layer designed to comprise a
higher reflectivity for light converted by the phosphor, i.e., light of the
second wavelength range. In particular, Petitioner demonstrates how
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Garbuzov teaches adding phosphors to blue light LEDs to convert that light
into other wavelengths. Pet. 41 (citing Ex. 1038, 1:35–41, 3:1–20; Ex. 1002
¶ 134). In view of that teaching, we find that Petitioner reasonably asserts,
and Dr. Russel credibly testifies, that a person of ordinary skill in the art
would have been motivated to add a phosphor layer to Zhao’s LED “to
convert light from blue to some other wavelength such as red light,” and that
such an addition to Zhao’s LED would have been a “predictable use of
phosphor layers in semiconductor devices as disclosed by Garbuzov.” See
Pet. 42; Ex. 1002 ¶ 138; see also Pet. 43 (asserting that “the addition of a
phosphor layer to an LED designed according to Zhao would have been
nothing more than the use of a known improvement used to improve a
similar device in similar ways,” and “[a]pplying Garbuzov’s teachings to
Zhao’s devices was nothing more than the common and well-understood use
of phosphors in connection with blue-light LED devices to produce light of a
different wavelength.”).
We address Petitioner’s modification of Zhao’s DBR in the next
sections.
(3) Tuning Zhao’s DBR to Match the Added Phosphor
We next consider whether Petitioner has established that it would
have been obvious to a person of ordinary skill in the art to modify Zhao’s
stacked DBR configuration to ensure “that at least one DBR was designed to
reflect phosphor-converted light” and “the DBR stack could reflect both
light from the phosphor and light from the semiconductor device using a
stacked DBR configuration.” Pet. 42. Patent Owner and Dr. Feezell
challenge the combination of Garbuzov’s red phosphor with Zhao’s LED
because Zhao does not explicitly teach or suggest tuning any of its DBRs to
match the color of the phosphor-converted wavelength. See, e.g., PO
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Resp. 22, 39–42; Ex. 2013 ¶ 62. That challenge is not compelling, however,
because Petitioner does not rely only on Zhao for that suggestion. Petitioner
notes that Zhao discloses stacked DBRs, wherein one of the DBRs “has ‘a
higher reflectivity for light of the second wavelength range than for the light
of the first wavelength range,’ and another DBR that has a higher reflectivity
for ‘light of the first wavelength rang[e] than for light of the second
wavelength range.’” Pet. 36 (citing Ex. 1036, 1524; Ex. 1002 ¶ 116).
However, Petitioner then refers to Garbuzov’s teaching the use of a reflector
to reflect both light emitted by the semiconductor device and light emitted
by a phosphor layer on the device. Id. at 37 (citing Ex. 1038, 8:34–53).
Specifically, Garbuzov discloses,
Reflective layer 650 is configured to reflect light having the
first band of wavelengths (e.g., light produced by active layer
632 of active region 630) and light having a second band of
wavelengths (e.g., light produced through wavelength-
conversion by phosphor layer 610). In other words, light
produced by active layer 632 can propagate in the direction of
reflective layer 650 and light produced through wavelength-
conversion in phosphor layer 610 can also be propagated in the
direction of reflective layer 650. Light having either of these
bands of wavelengths are reflected by reflective layer 650 are
redirected towards phosphor layer 610 where the light can
ultimately exit light emitting 600.
Ex. 1038, 8:41–53 (emphasis added). From that teaching in Garbuzov, we
find that Petitioner persuasively demonstrates why, in view of the prior art, a
person of ordinary skill in the art would have had a reason to similarly
configure Zhao’s DBRs structure, “ensuring that at least one DBR was
designed to reflect phosphor-converted light,” and understanding that doing
so would have been a predictable variation of Zhao. See Pet. 38–42;
Ex. 1002 ¶¶ 134, 140. Because Patent Owner’s arguments and Dr. Feezell’s
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testimony in this regard do not consider that Petitioner’s proposed
combination involves designing one of Zhao’s DBRs to reflect the
phosphor-converted light, i.e., to “match” the added phosphor, and that
Garbuzov provides the suggestion to do so, we agree with Petitioner that
those arguments are misdirected.
(4) Ordering Zhao’s Modified DBR Stacks
Claim 1 requires that the first DBR is disposed closer to the substrate
than the second DBR. We refer to this as the claimed “DBR ordering
limitation.” The first DBR in claim 1 “comprises a higher reflectivity for
light of the second wavelength range,” and the “light of the second
wavelength range is converted by the phosphor.” The second DBR in
claim 1 “comprises a higher reflectivity for light of the first wavelength
range” and the “first wavelength range comprises a blue wavelength range.”
In our analysis of Petitioner’s combination, the first DBR is the one tuned to
match the red phosphor added to Zhao’s LED, and the second DBR is tuned
to the blue color that the active layer emits. Thus, to read on the claimed
DBR ordering limitation, Petitioner must demonstrate that it would have
been obvious to a person of ordinary skill in the art to arrange Zhao’s DBR
stack such that the “red DBR” layer is disposed closer to the substrate than
the “blue DBR” layer.
As noted above, Petitioner asserts and Dr. Dupuis testifies that the
claimed positioning of the first and second DBRs in relation to the substrate
would have been a predictable variation of Zhao’s tandem DBR structure
because a skilled artisan would have understood that there would only be
two possible ways to stack the two DBRs, and that swapping or rearranging
the order was within the skill of the artisan. Id. at 44, 46 (citing Ex. 1002
¶¶ 131, 137). Additionally, as noted above, Petitioner relies on Dr. Dupuis’
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testimony that inverting the DBRs of Zhao did not have a significant effect
on the DBR performance. Id. at 45 (citing Ex. 1002 ¶¶ 128, 131).
Patent Owner challenges Petitioner’s assertion that arranging Zhao’s
DBR layers in the manner recited by claim 1, such that the first DBR is
disposed closer to the substrate than the second DBR, would have been
obvious. PO Resp. 42–73. Specifically, Patent Owner contends that: (a) a
skilled artisan would have understood Zhao’s DBRs are arranged in the
opposite manner as is recited in claim 1; (b) the claimed DBR arrangement
matters and provides an unexpected and material benefit; (c) Petitioner’s
red-reflecting DBR is not taught in the prior art; and (d) Petitioner’s
evidence is demonstrably unreliable. Id. at 43. We consider those
challenges, in turn.
To begin, Patent Owner asserts that a skilled artisan would have
understood Zhao’s DBRs are arranged in the opposite manner as is recited in
claim 1 because Zhao refers to its blue-reflective DBR as the “first DBR
stack.” PO Resp. 44. According to Patent Owner and Dr. Feezell, a skilled
artisan would have considered Zhao’s use of the term “first DBR stack” as
referencing the order of formation on the substrate and, thus, would have
understood “Zhao’s ‘first DBR’ (i.e., the blue-reflective DBR) to be the
closest to the substrate.” Id. (quoting Ex. 2013 ¶ 48). In further support of
that position, Patent Owner refers to the deposition testimony of Petitioner’s
declarant, Dr. DuPuis. Id. When asked during his deposition why Zhao uses
the term “first DBR stack,” Dr. DuPuis responded, “I assume they mean it’s
the first set of layers they deposited on the back side of the sapphire
substrate.” Ex. 2014, 39:6–11. Accordingly, we determine that Patent
Owner has persuasively demonstrated that a person of skill in the art would
have understood that Zhao’s blue-reflecting DBR stack is closer to the
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substrate than its green-reflecting DBR stack. In any event, Petitioner does
not allege that Zhao’s DBRs are arranged as recited by claim 1. Rather,
Petitioner asserts that because there are only two possible arrangements for
the two DBRs in its modified DBR design, the recited order merely
represents a predictable variation of the other. Pet. 44–46.
Patent Owner disagrees with Petitioner, asserting that “a POSITA
would have thought that Zhao’s arrangement with the blue-DBR on top
would generally be advantageous and thus preferred” because “Zhao’s
DBRs are made of alternatively stacked SiO2 and TiO2 layers . . . and TiO2
has a higher extinction coefficient for shorter wavelength lights (and absorbs
more light) than it does for longer wavelengths.” PO Resp. 45–46 (citing
Ex. 2013 ¶¶ 36–40). Patent Owner asserts that “[u]nder this design in Zhao,
TiO2 will absorb more blue light than it will absorb green or red light.” Id.
at 46. Patent Owner asserts that a skilled artisan “would have also
understood scattering to be more pronounced for shorter wavelength light,”
and that “typically, having a blue DBR on top would result in less
scattering.” Id. at 48 (citing Ex. 2013 ¶¶ 36, 40).
Although Dr. Feezell testifies that “the extinction coefficient and
scattering . . . confirms that a POSITA would have expected the blue-
reflective DBR on top of the green-reflective DBR to be preferable (and
expected) in view of Zhao,” see Ex. 2013 ¶¶ 34–43, 50, he then clarifies and
qualifies that testimony a number of times. For example, in his declaration,
Dr. Feezell clarifies that consideration of the DBR’s extinction coefficient
and scattering being higher for blue only means that “[a] starting point
position for a POSITA would be to put a blue DBR first.” Id. ¶ 42
(emphasis added). According to Dr. Feezell, “particular design
considerations, considering particular materials and designs may result in
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different configurations.” Id. (emphasis added). Further he describes the
blue DBR on top in Zhao as being “the supposed optimal DBR
configuration,” and confirms that “optimal DBR ordering depends on
materials used.” Id. ¶ 43. Additionally, during his deposition, Dr. Feezell
admitted that “in a vacuum given no other tools that I would likely select
putting the blue DBR before the green DBR for these reasons,” but that
initial selection may change based on additional considerations such as light
source and materials involved. See Ex. 1048, 78:4–79:21.
Based on the foregoing, we find that Dr. Feezell’s testimony
recognizes not only that there are options for layering the DBR stacks, but
also that either of those layering options may be selected by a skilled artisan
as the optimal arrangement, depending on the circumstances.
Although Dr. Feezell’s testimony addresses the order of a blue DBR
and a green DBR, Petitioner’s proposed modification of Zhao’s LED
includes a phosphor layer and a matching DBR layer, which could be a red
or yellow DBR. Pet. 40–44. However, we do not see that Dr. Feezell has
addressed or accounted for those modifications in his testimony that the blue
DBR would be positioned closer to the substrate. In any event, we agree
with Petitioner that Dr. Feezell’s testimony supports finding that, based on
known variables, such as the spectrum of the light source and the DBR
materials used, “an optimal design might cause the DBR ordering to be
flipped.” Pet. Reply 2 (citing Ex. 1048, 79:6–21). In other words, a skilled
artisan would have understood that the “optimal configuration” of the DBR
order is a function of certain design choices involved. Accordingly, based
on the evidence as a whole, we agree with Petitioner that choosing the best
or optimal order for the DBRs for a particular application would have been
routine and predictable. Pet. 44; Pet. Reply 2, 20.
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We are not persuaded otherwise upon considering the simulations
discussed by Petitioner and Patent Owner. Petitioner and Patent Owner each
submit expert testimony describing simulations modeling the performance of
Zhao’s DBRs using software such as the TFCalc software mentioned in
Zhao. See Ex. 1036, 1524; Ex. 1002 ¶¶ 122–137; Ex. 2013 ¶¶ 19–34.
Petitioner asserts that a person of skill in the art would have known that such
simulation software existed “for simulating the performance of optical thin-
film devices such as filters and reflectors, including DBRs.” Pet. 44 (citing
Ex. 1002 ¶¶ 59, 121–130, 136–137; Ex. 1036, 1524). Petitioner asserts also
that by “[u]sing such software, a [POSITA] would have easily been able to
determine that the order of the DBR stacks with respect to the substrate had
produced ‘virtually no difference in performance over [the] wavelength
range 380nm-780nm.’” Id. at 44–45.
In support of those assertions, Petitioner relies on the testimony of
Dr. Dupuis. Id. (citing Ex. 1002 ¶ 137). Dr. Dupuis used a thin-film
modeling application from Filmetrics to perform his evaluations of Zhao’s
DBRs to determine if their ordering had any material impact on the
operation or performance of Zhao’s LED. Ex. 1002 ¶¶ 121, 122. In
particular, Dr. Dupuis modeled the dual-mirror structure described in Zhao
using the optical properties of TiO2, SiO2, and polyacrylate from the
Filmetrics website. Id. ¶ 125. He performed modeling for angles of
incidence of 0°, 30°, and 50°. Id. Using the output from the Filmetrics
database, Dr. Dupuis created “plots of the performance of Zhao’s dual-DBR
structure when the blue DBR is closer to the substrate and when the blue
DBR is further from the substrate.” Id. (citing Ex. 1002, App’x B). Based
upon those results, Dr. Dupuis testified that the performance of the two filter
layers is materially the same. Id. ¶¶ 126, 128, 129.
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Dr. Dupuis explains that “[s]imulations such as these were well within
the skill level of someone of ordinary skill in the art as of November 2009,
and would have been a tool available to the POSITA when designing a
system according to the teachings of Zhao.” Id. ¶ 131. According to
Dr. Dupuis, his simulations demonstrate that a person of ordinary skill in the
art “would [have] seen that the order of the DBR stacks with respect to the
substrate produced virtually no difference in performance over the
wavelength range 380nm-780nm.” Id. ¶ 137. Dr. Dupuis explains that
“[s]wapping the order of the DBRs certainly was an option that a POSITA
had available and could have easily done; it was a relatively simple and
obvious experiment to both simulate and to perform experimentally.” Id.
Patent Owner challenges Dr. Dupuis’ DBR simulations asserting that
they “bear no resemblance to Zhao and are unreliable.” PO Resp. 55. In
particular, Patent Owner asserts that Dr. Dupuis’ simulations assumed zero
light scattering and loss. Id. Patent Owner asserts that light loss and
scattering are a “material property of a DBR that must be considered.” Id.
Patent Owner also takes issue with assumptions Dr. Dupuis made regarding
Zhao’s indices of refraction and the epoxy used by Zhao. Id. at 57 (citing
Ex. 2001 ¶ 67; Ex. 1002 ¶¶ 123, 124). Patent Owner also criticizes Dr.
Dupuis for not giving consideration to the DBR thicknesses in different
embodiments of Zhao. Id. (citing Ex. 1002 ¶¶ 121–131).
Additionally, Patent Owner questions Dr. Dupuis’ use of rutile TiO2
based on Dr. Feezell’s explanation that Zhao’s double DBR mirror was
evaporated from TiO2 and SiO2 sources on the back surface of the sapphire
which would likely result in amorphous TiO2 instead. Id. (citing Ex. 2013
¶ 18). According to Patent Owner, Petitioner’s simulated DBRs are
materially different from Zhao’s DBRs and do not provide any reliable
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indication that a skilled artisan would have considered the DBR ordering in
Zhao as being irrelevant. Id. at 68.
Patent Owner contends that its expert provided more accurate
simulations using TFCalc and Filmetrics software. Id. at 69 (citing Ex. 2013
¶¶ 19–33). Patent Owner asserts that Dr. Feezell “made his best attempt to
closely match Zhao’s DBRs” and used amorphous TiO2 instead of rutile
TiO2. Id. According to Patent Owner, “Dr. Feezell found that there is a
wide variety of reflectance results depending on the order of the DBRs, and
the TiO2/SiO arrangements.” Id. at 70 (citing Ex. 2013 ¶¶ 19–33). Patent
Owner asserts that “the materials chosen (and order) makes a significant
difference in the DBR reflectivity for longer wavelength regions . . . for light
at a normal incidence.” Id. In particular, Dr. Feezell testifies that “[i]t is
clear that the arrangement of the DBRs and materials used does have a
significant effect on the reflectance spectrum. Whether one design (as
opposed to another) would be more optimal, depends on the materials used
and the spectrum of the output desired.” Ex. 2013 ¶ 24.
Referring to the an embodiment in the ’631 patent wherein the DBR
for the shorter wavelength range is centered at blue and the DBR for the
longer wavelength range is centered at red, Dr. Feezell explains that he also
performed a number of blue and red DBR simulations using TFCalc.
Ex. 2013 ¶ 26. Based on those simulations, Dr. Feezell testifies,
It is my opinion that it is not obvious which of the two
configurations a designer would prefer without knowledge of the
specific LED spectrum the designer was aiming to reflect. For
some active region and phosphor combinations, the red-blue
arrangement may be preferred and for other active region and
phosphor combinations, the blue-red arrangement may be
preferred.
Id. ¶ 30.
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In the Reply, Petitioner asserts that Dr. Dupuis’ simulations are
reliable and do not suffer the flaws that Patent Owner itemized. Pet.
Reply 6. In addition to addressing those items, Petitioner directs us to
Dr. Feezell’s deposition testimony confirming that his only disagreement
with Dr. Dupuis’ simulations was his use of rutile TiO2. Id. at 7 (citing
Ex. 1048, 44:1–7). Specifically, when asked about Dr. Dupuis’ simulations
during the deposition, Dr. Feezell explained that he had “no reason to
believe there’s a fundamental issue with the simulations other than the rutile
selection.” Ex. 1048, 44:1–7. Petitioner asserts that Dr. Dupuis used rutile
TiO2 because that was the form of TiO2 available in Filmetrics. Pet. Reply 8
(citing Ex. 2014, 82:16–20). According to Petitioner, that selection did not
impact the conclusion that DBR ordering would have no significant impact
on performance or that Dr. Dupuis’ simulations simply confirmed what the
prior art suggests. Id.; see also id. at 8 n.2 (referring to the reference to
Exhibit 1028 in the Petition “as confirming that ‘the placement of the DBRs
with respect to the substrate does not impact device performance.’”).
Further, Petitioner asserts that Dr. Feezell’s simulations actually
support Petitioner’s contentions, as revealed in his deposition testimony. Id.
at 9–15. Specifically, Petitioner asserts that “Zhao’s longer-wavelength
DBR is designed for a peak reflection of 520 nm—well outside of the red
circle” emphasized in Dr. Feezell’s plot and relied upon by Patent Owner as
showing that DBR ordering “makes a significant difference in DBR
reflectivity for longer wavelength regions.” Id. at 9–10 (citing PO
Resp. 70–71; Ex. 1036, 1524). The plot referenced by Petitioner is Figure 6
in Dr. Feezell’s Supplemental Declaration (Ex. 2013) and is set forth below:
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Ex. 2013, Fig. 6; Pet. Reply 9; PO Resp. 71. Figure 6 is Dr. Feezell’s
“TFCalc simulations of the reflectance spectrum at 0 degree incidence for
four interpretations of Zhao DBR configuration.” Id. The figure shows a
plot of the reflectance percentage (y-axis) at certain wavelengths between
380 nm and 780 nm (x-axis). Id. Dr. Feezell states in his declaration that
“Figure 6 shows that the reflectance characteristics are quite different in the
red region of the spectrum from about 590–650 nm.” Id. ¶ 22. He states
also that Figure 6 shows that “some configurations of the DBR arrangements
interpreted from Zhao would lead to either better or worse reflectance in the
red region.” Id. He notes that “some small differences in the reflectance
spectra are observed in the violet/blue region from about 410-440 nm, which
would affect the efficiency of reflecting blue light.” Id. He notes also that
“Zhao does not explicitly teach a DBR that is optimally tuned for the red
wavelength range, it only explicitly teaches DBRs tuned for 470 and 520
nm.” Id.
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Petitioner asserts that Dr. Feezell admitted in his deposition that this
figure does not depict a DBR designed to reflect light at 630 nm within the
red circle. Pet. Reply 10 (citing Ex. 1048, 71:9–18). Instead, Dr. Feezell
testified that to reflect light at that wavelength, “I think they would design a
different DBR for that purpose.” Ex. 1048, 71:9–14. Petitioner asserts that,
“[i]n essence, Patent Owner has shown that the performance of DBRs at
wavelengths they were not designed to reflect might be order-dependent,”
and not “that any one particular DBR order would have been better at the
wavelengths the DBRs were designed to be used at.” Pet. Reply 10–11.
Additionally, Petitioner asked Dr. Feezell at his deposition about
differences in DBR performance at wavelengths Zhao was designed to
reflect, e.g., 455 nm and 471 nm. Id. at 11 (citing Ex. 1036, 1525).
Petitioner asserts that it based its inquiries on Dr. Feezell’s earlier testimony
that: (a) 70% of the light emitted by a blue LED will be found in a 20 nm
band around its center wavelength; (b) a “blue LED does not have any useful
amount of light that extends into the green region;” and (c) green is around
520 or 530 nm. Id. (quoting Ex. 2001 ¶ 48 (emphasis added by Petitioner);
Ex. 1048, 82:23–83:9). According to Petitioner, “the question of which
DBR order performs better—if any—involves looking at the regions around
the peak LED wavelength as Dr. Feezell admits.” Id. During the deposition
of Dr. Feezell, Petitioner presented to him illustrations showing Zhao’s 455
nm emission, as set forth below.
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Ex. 1049, 4; Pet. Reply 12 (referring to a wavelength of 455 nm, as in
Zhao’s Sample A of its experiment to determine “the intensity enhancement
caused by the backside DBR for LEDs obtained from different fabrication
runs with peak emission wavelengths from 455 nm to 525 nm at an applied
current of 20 mA.” (Ex. 1036 at 1524, 1525, Table 1)). Petitioner’s
illustration is Figure 4 from Dr. Feezell’s Supplemental Declaration
(Ex. 2013 ¶ 20) and includes a dark blue vertical line placed at
approximately 455 nm and a light blue box centered on it to indicate about
20 nm added by Petitioner for use at Dr. Feezell’s deposition. Pet. Reply 12
(citing Ex. 1048, 55:22–56:1, 57:5–13). Referring to the illustration,
Petitioner asked Dr. Feezell “which DBR is best for reflecting light within
the 20-nanometer band, which of the three on your graph?” Id. (citing
Ex. 1048, 60:1–8). Dr. Feezell responded that “[i]t appears that within that
particular narrow band of wavelengths that all three of the DBRs have
simple [sic similar] reflectance characteristics.” Id. Petitioner notes that Dr.
Feezell responded similarly for Petitioner’s illustration highlighting 471 nm
for 0 degree angle of incidence in Zhao’s sample B, and for Petitioner’s
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illustrations highlighting 455 nm and 471 nm for the 30 angle of incidence in
Zhao’s samples A and B, confirming that “all of the DBRs have similar
reflectance characteristics,” id. at 13 (quoting Ex. 1048, 60:21–61:1), and
that “the blue and green appear to be right on top of each other . . . you could
pick either blue or green,” id. at 14 (quoting Ex. 1048, 63:21–64:10).
Based on the foregoing, we agree with Petitioner, that Dr. Feezell’s
conclusions support Petitioner’s assertion and Dr. Dupuis’ testimony that, at
least for “DBRs designed to reflect light in a particular wavelength band, the
order of those DBRs does not make a substantial difference in overall
performance of the reflector and resulting device.” Pet. Reply 14 (citing
Pet. 45–46). More broadly, we agree with Petitioner that the experts agree
that a person of skill in the art “would have known how to determine which
ordering of DBRs (if any) was optimal for a particular application.” Id.
at 20 (citing Pet. 44–46; Ex. 1002 ¶¶ 122–131; Ex. 2013 ¶ 24). In other
words, we determine that, based on the record as a whole, the knowledge
and use of the simulation software exemplified by the experts provided a
tool to predict the results of alternative ordering of DBRs for specific
applications, in view of the materials used.
Accordingly, having considered the evidence and the arguments, and
for the reasoned discussed above, we determine that Petitioner has shown by
a preponderance of the evidence that based on the combined teachings of
Zhao and Garbuzov, along with the knowledge and skill in art, a person
having ordinary skill in the art would have had a reason to combine
Garbuzov’s red phosphor with Zhao’s LED chip and to modify Zhao’s DBR
structure to include a DBR stack designed to reflect the light of the second
wavelength range converted by the phosphor, i.e., to include a matching
DBR. Further, based on the foregoing, we also determine that the
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preponderance of the evidence demonstrates that the skilled artisan would
have known that there were only two options for ordering the DBR stacks in
relation to their position on the substrate, either the blue-reflecting DBR
disposed closer to the substrate, or the alternative order with the red-
reflecting DBR disposed closer to the substrate, and that the latter order
embodied a predictable variation that was within the skill in the art to
implement and to optimize to achieve a desired and predictable result. See
KSR, 550 U.S. at 416–417.
(5) Secondary Considerations
Patent Owner asserts that “[t]he claimed DBR arrangement provides a
material benefit (which is unexpected): placing the longer-wavelength DBR
on top of the blue DBR reduces light loss, and this benefit is specifically
described as a novel aspect of the ’631 Patent.” PO Resp. 46 (citing
Ex. 1001, 6:15–21); see also id. at 43 (asserting that the ’631 Patent provides
an unexpected and material benefit”). Referring to the ’631 patent, Patent
Owner asserts that “putting a longer wavelength DBR on top of the blue-
reflecting DBR actually improves light efficiency.” Id. at 50 (citing Ex.
1001, 6:15–21; Ex. 2001 ¶ 58; Ex. 2013 ¶ 43). Dr. Feezell describes this as
a “specific benefit” of the claimed ordering. Ex. 2001 ¶ 58.
Petitioner asserts that Patent Owner has not supported its claim of
unexpected results with sufficient evidence. Pet. Reply 24. In particular,
Petitioner asserts that the “Patent Owner offers nothing to corroborate the
statement in the patent that the light loss in the DBRs is reduced by the
claimed ordering.” Id. at 26.
The description in the ’631 referenced by parties is set forth below:
In addition as compared to the case where the second distributed
Bragg reflector 50 is disposed to be closer to the substrate 21 than
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the first distributed Bragg reflector 40, the light loss in the
distributed Bragg reflector 45 may be further reduced in the case
where the first distributed Bragg reflector 40 is disposed closer
to the substrate than the second distributed Bragg reflector 50.
Ex. 1001, 6:15–21. We do not see any indication in that description that the
reduction in light loss based on the first DBR being disposed closer to the
substrate was an unexpected or surprising result. Nor do we find that Patent
Owner has adequately argued that such result would have been unexpected
or surprising. Instead, the alleged effect of the recited ordering of the DBRs
is described in the challenged patent, by Patent Owner, and by Dr. Feezell in
terms of the degree of the reduction in light loss, or the degree of light
efficiency. The ’631 patent recites that the light loss may be “further
reduced.” Id. Patent Owner and Dr. Feezell assert light loss in a similar
manner, or light efficiency as being improved, or as noted below, in terms of
the percentage of improvement. In other words, Patent Owner’s alleged
unexpected results amount to a difference in the degree rather than a
difference in kind. As our reviewing Court has explained, “[unexpected
results that are probative of nonobviousness are those that are ‘different in
kind and not merely in degree from the results of the prior art.’” Galderama
Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 739 (Fed. Cir. 2013) (quoting Iron
Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004)).
Additionally, the Court has specifically described “results which
differ by percentages are differences in degree rather than kind, where the
modification of the percentage is within the capabilities of one skilled in the
art at the time.” Id. (citing In re Harris, 409 F.3d 1339, 1344 (Fed. Cir.
2005) (finding increased efficiency, measured by percentages, to be a
difference in degree and not of kind)). That is precisely the form of the
evidence, i.e., percentages of reflectance based on the recited ordering of
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DBRs, presented by Dr. Feezell and relied upon by Patent Owner to support
its assertion of unexpected results based on the recited ordering of DBRs.
Accordingly, we do not find that Patent Owner has demonstrated
unexpected results sufficient to support nonobviousness of the challenged
claim.
(6) Conclusion as to Obviousness
We base our final determination regarding obviousness upon an
analysis of the foregoing arguments and evidence. We have considered each
of the Graham factors and determine that Petitioner has met its overall
burden of proving obviousness for the challenged claims. As part of that
analysis, we have considered the asserted secondary considerations of
nonobviousness and, as explained above, we determined that Patent Owner
has not demonstrated unexpected results in a manner sufficient to outweigh
our determination that Petitioner has shown by a preponderance of the
evidence that claim 1 of the ’631 patent would have been obvious over the
combination of Zhao and Garbuzov.
b) Dependent Claims 5 and 13–15
Petitioner has also addressed the additional limitations in dependent
claims 5 and 13–15 by demonstrating persuasively how the teachings of
Zhao and Garbuzov, alone or in combination, teach or suggest those
limitations. See Pet. 47–54. Patent Owner challenges Petitioner’s showing
for those claims for the same reasons argued regarding claim 1. See PO
Resp. Patent Owner does not address the additional limitations of the
challenged dependent claims. Id.
Accordingly, for the same reasons discussed regarding the challenge
of claim 1, from which claims 5 and 13–15 depend, along with the
arguments and evidence that Petitioner has set forth for the additional
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limitations of those dependent claims, we conclude that Petitioner has shown
by a preponderance of the evidence that claims 5 and 13–15 of the ’631
patent would have been unpatentable as obvious over the combination of
Zhao and Garbuzov.
E. Additional Obviousness Grounds
In its remaining two obviousness grounds, Petitioner asserts that:
dependent claim 7 is rendered obvious over a combination of Zhao,
Garbuzov, and Niu; and dependent claim 8 is rendered obvious over a
combination of Zhao, Garbuzov, and Slater. Pet. 54–61. For each of those
grounds, Petitioner relies upon the combination of Zhao and Garbuzov, as
applied to claim 1. Pet. 57, 60. Petitioner relies on the teachings of Niu to
reach the additional limitations of claim 7, and relies on Slater for the
additional limitations of claim 8. Id. at 54–61.
Patent Owner challenges Petitioner’s showing for those claims for the
same reasons argued regarding claim 1. See PO Resp. Patent Owner does
not address the additional limitations of challenged dependent claims 7 and
8, or Petitioner’s evidence demonstrating a person of ordinary skill in the art
would have had reason to combine the teachings of Niu and Slater with Zhao
and Garbuzov with a reasonable expectation of success. Id.
Accordingly, for the same reasons discussed regarding the challenge
of claim 1, from which claims 7 and 8 depend, along with the arguments and
evidence that Petitioner has set forth for the additional limitations of those
dependent claims and the combination of the teachings of the references, we
conclude that Petitioner has shown by a preponderance of the evidence that
claim 7 and of the ’631 patent would have been unpatentable as obvious
over the combination of Zhao, Garbuzov, and Niu, and that claim 8 of
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the’631 patent would have been unpatentable as obvious over the
combination of Zhao, Garbuzov, and Slater.
III. PETITIONER’S MOTION TO EXCLUDE
Petitioner moves to exclude portions of the Patent Owner’s Response
and portions of Dr. Feezell’s declarations that allegedly rely on the ’631
patent for what Petitioner deems to be improper hearsay purposes.
Mot. 1–7; Mot. Reply 1–5. Patent Owner opposes the motion. PO
Opp. 1–7. As the moving party, Petitioner has the burden of proof to
establish that it is entitled to the requested relief. 37 C.F.R. § 42.20(c).
Petitioner alleges that Patent Owner refers to the following description
in the ’631 patent for improper hearsay use:
In addition as compared to the case where the second distributed
Bragg reflector 50 is disposed to be closer to the substrate 21 than
the first distributed Bragg reflector 40, the light loss in the
distributed Bragg reflector 45 may be further reduced in the case
where the first distributed Bragg reflector 40 is disposed closer
to the substrate than the second distributed Bragg reflector 50.
Ex. 1001, 6:15–21; Mot. 1. We refer to this at the “reduced light loss
statement.” Petitioner asserts that Patent Owner relies upon that statement
as evidence of its truth, i.e., that light loss in the DBR may be further
reduced when the first DBR is disposed closer to the substrate than the
second DBR, as recited in claim 1 of the patent. Mot. 1. In particular,
Petitioner asserts that Patent Owner improperly relies on that statement in
the Patent Owner Response at pages 6, 46, and 50, and that Dr. Feezell
improperly relies on the statement in his first declaration, Ex. 2001 ¶ 28, and
his supplemental declaration, Ex. 2013 ¶ 98. Mot. 1. Petitioner contends
that the ’631 patent “does not present any corroborating data, plots, or other
support” for the reduced light loss statement. Id. Additionally, Petitioner
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contends that the Patent Owner has not “presented any witness testimony
from a person with first-hand knowledge of the supposed benefit provided
by the ’631 patent.” Id.
Patent Owner asserts that the reduced light loss statement in the ’631
patent “describe[s] a material benefit to a POSITA—which a POSITA can
verify and prove—and does not constitute hearsay.” Mot. Opp. 1. Patent
Owner asserts that even if it is considered hearsay, it would fall under the
residual exception of FRE [Federal Rule of Evidence] 807 because Patent
Owner’s expert, Dr. Feezell “proved the trustworthiness” of the statement.
Id. at 5. Additionally, Patent Owner asserts that even if FRE 807 does not
apply, Patent Owner’s expert is allowed to rely on it under FRE 703. Id.
at 6.
Petitioner responds by asserting that Patent Owner incorrectly
characterizes Petitioner’s motion as seeking to exclude a portion of the
challenged patent. Mot. Reply 1 (citing Mot. Opp. 1, 3). Petitioner
reiterates that its motion seeks to exclude Patent Owner’s reliance on the
’631 patent for an improper hearsay use and not any portion of the patent
itself. Id. (citing Mot. 1, 7). Additionally, Petitioner reiterates its position
that Patent Owner relies on the reduced light loss statement as hearsay
because it contends that the statement is true, i.e., that the claimed subject
matter, in fact, “provides a material benefit,” and “actually improves light
efficiency.” Id. at 1–2 (quoting PO Resp. 46, 50).
Hearsay is a statement that (1) the declarant does not make while
testifying at the current trial or hearing; and (2) a party offers in evidence to
prove the truth of the matter asserted in the statement. Fed. R. Evid. 801(c).
Such a statement includes a “written assertion.” Id. 801(a). Hearsay is not
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admissible unless an exception applies. Id. 802. The “Residual Exception”
provides:
(a) In General. Under the following conditions, a hearsay
statement is not excluded by the rule against hearsay even if the
statement is not admissible under a hearsay exception in Rule
803 or 804: under which a hearsay statement is not excluded by
the rule against hearsay if the :
(1) the statement is supported by sufficient guarantees of
trustworthiness—after considering the totality of
circumstances under which it was made and evidence, if any,
corroborating the statement; and
(2) it is more probative on the point for which it is offered
than any other evidence that the proponent can obtain
through reasonable efforts.
(b) Notice. The statement is admissible only if the proponent
gives an adverse party reasonable notice of the intent to offer the
statement—including its substance and the declarant's name—
so that the party has a fair opportunity to meet it. The notice must
be provided in writing before the trial or hearing—or in any form
during the trial or hearing if the court, for good cause, excuses a
lack of earlier notice.
Id. 807.
Our Rules address the admissibility of a specification or drawing of a
United States patent. 37 C.F.R. 42.61(c) is set forth below:
(c) Specification and drawings. A specification or drawing of a
United States patent application or patent is admissible as
evidence only to prove what the specification or drawing
describes. If there is data in the specification or a drawing upon
which a party intends to rely to prove the truth of the data, an
affidavit by an individual having first-hand knowledge of how
the data was generated must be filed.
As Petitioner explains, it does not seek to exclude the reduced light loss
statement in the ’631 patent from the record in this proceeding. Indeed,
Petitioner does not contend that the ’631 patent has generally been submitted
in this proceeding to prove the truth of the matter asserted in it. Rather,
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Petitioner alleges that Patent Owner has misused a particular statement in the
patent as evidence to prove the truthfulness of the following assertions in the
Patent Owner Response:
This arrangement of the first and second DBRs improves the
optical reflectivity across the spectrum of the mixed color light,
and thus provides optimal light emission for while light out of
the LED chip.
PO Resp. 6 (citing to Ex. 1001, 2:14–19, 6:8–21; Ex. 2001 ¶ 28).
The claimed DBR arrangement provides a material benefit
(which is unexpected): placing the longer-wavelength DBR on
top of the blue DBR reduces light loss, and this benefit is
specifically described as a novel aspect of the ’631 patent.
Id. at 46 (citing to Ex. 1001, 6:15–21).
The inventors of the ’631 patent found that putting a longer
wavelength DBR on top of the blue-reflecting DBR actually
improves light efficiency.
Id. at 50 (citing Ex. 1001, 6:15–21; Ex. 2001 ¶ 58; Ex. 2013 ¶ 43).
Additionally, Petitioner contends that the following statement appearing in
Dr. Feezell’s declarations constitute hearsay:
The ’631 Patent further states that its DBRs are positioned in
order to improve light performance. Id. at 6:15-21. The first
DBR 40 (annotated green) is positioned on top of the second
DBR 50 (annotated blue) so that it is closer to the substrate 21
(annotated light blue). Id. at 6:15-21. Also provided is a
reflective metal layer 51 (grey). See, e.g., id. at 3:63-67. This
structure provides optimal light emission for white light. See,
e.g., id. at 2:14-19. The whole excerpt of 6:15-21 is provided
below:
“In addition, as compared to the case where the second
distributed Bragg reflector 50 is disposed to be closer to
the substrate 21 than the first distributed Bragg reflector
40, the light loss in the distributed Bragg reflector 45 may
be further reduced in the case where the first distributed
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Bragg reflector 40 is disposed to be closer to the substrate
than the second distribute Bragg reflector 50.”
Ex. 2001 ¶ 28; Ex. 2013 App’x.
Based on our consideration of the evidence and the arguments, we do
not find that the above-noted statement in Dr. Feezell’s declarations
constitutes an improper hearsay use of the reduced light loss statement.
Instead, Dr. Feezell directly sets forth what the ’631 patent states. Indeed,
he begins by stating, “The ’631 Patent further states . . . .” Ex. 2001 ¶ 28.
The above-noted statements in the Patent Owner Response are more
difficult to decipher. Based upon our review, one may consider them merely
to be presenting what is in the Specification and relying on them as
statements that exist in the Specification, and not for their truthfulness.
Read differently, those statements may appear to rely on the reduced light
loss statement to prove the truth of the matter asserted in the statement.
Patent Owner’s Opposition is largely misdirected, as it argues that the
’631 patent itself should not be excluded. However, to the point of whether
the Patent Owner Response improperly relies on the reduced light loss
statement for hearsay purposes, Patent Owner asserts that it relies on
reduced light loss limitation “as evidence that the ’631 Patent describes a
material benefit.” Mot. Opp. 3. According to Patent Owner, the challenged
statements are admissible as evidence only to prove what the Specification
describes. Id. (citing 37 C.F.R. § 42.61(c)).
Petitioner’s argument that the challenged statements should be
excluded is essentially based on the following assertion:
Patent Owner offers the statement as proof that the claimed DBR
ordering: (1) “improves the optical reflectivity,” POR, 6; (2)
“provides optimal light emission for white light out of the LED
chip,” id.; (3) “provides a material benefit (which is
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unexpected),” id., 46; (4) “reduces light loss,” id.; and (5)
“actually improves light efficiency.” POR, 50. This is hearsay.
Mot. 5. The motion does not offer additional rationale for considering the
challenged statements to have improperly relied on the reduced light loss
statement for hearsay purposes. Here, in view of Petitioner’s burden, we
find that assertion to be insufficient to demonstrate that the challenged
statements should be excluded. For purposes of this proceeding, and
consistent with our patentability analysis above, we consider the challenged
statements in Patent Owner’s Response to merely refer to what the ’631
patent describes and not as evidence to prove the truth of the matter asserted
therein.
IV. CONCLUSIONS
For the foregoing reasons, we conclude that Petitioner has shown by a
preponderance of the evidence that claims 1, 5, 7, 8 and 13–15 of the ’631
patent are unpatentable.12 Additionally, we deny Petitioner’s Motion to
Exclude.

12 Should Patent Owner wish to pursue amendment of the challenged
claims in a reissue or reexamination proceeding subsequent to the
issuance of this decision, we draw Patent Owner’s attention to the April
2019 Notice Regarding Options for Amendments by Patent Owner
Through Reissue or Reexamination During a Pending AIA Trial
Proceeding. See 84 Fed. Reg. 16,654 (Apr. 22, 2019). If Patent Owner
chooses to file a reissue application or a request for reexamination of
the challenged patent, we remind Patent Owner of its continuing
obligation to notify the Board of any such related matters in updated
mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
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In summary:

V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that based on a preponderance of the evidence claims 1,
5, 7, 8 and 13–15 of the ’631 patent are unpatentable;
FURTHER ORDERED Petitioner’s Motion to Exclude is denied; and
FURTHER ORDERED because this is a final written decision, the
parties to this proceeding seeking judicial review of our Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

Claims
35
U.S.C.
§
References
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1, 5, 13–15 103(a) Zhao, Garbuzov 1, 5, 13–15
7 103(a)
Zhao,
Garbuzov,
Niu
7
8 103(a)
Zhao,
Garbuzov,
Slater
8
Overall
Outcome
1, 5, 7, 8, 13–15
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For PETITIONER:

Andrew Sommer
Barry Schindler
Heath Briggs
GREENBERG TRAURIG LLP
sommera@gtlaw.com
schindlerb@gtlaw.com
briggsh@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
STEPTOE & JOHNSON LLP
meisenberg@steptoe.com