LED Wafer Solutions, LLC

Patent Trials and Appeals Board

Mar 15, 2022

IPR2021-01516 (P.T.A.B. Mar. 15, 2022)

Trials@uspto.gov Paper 10 571-272-7822 Entered: March 15, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD SEOUL SEMICONDUCTOR, CO. LTD., Petitioner, v. LED WAFER SOLUTIONS, LLC, Patent Owner. IPR2021-01516 Patent 8,941,137 B2 Before LYNNE E. PETTIGREW, JEFFREY W. ABRAHAM, and TERRENCE W. McMILLIN, Administrative Patent Judges. ABRAHAM, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 35 U.S.C. § 314 IPR2021-01516 Patent 8,941,137 B2 2 I. INTRODUCTION A. Background and Summary Seoul Semiconductor, Co. Ltd. (“Petitioner”) filed a Petition requesting inter partes review of claims 1-4, 7, and 8 of U.S. Patent No. 8,941,137 B2 (Ex. 1001, “the ’137 patent”). Paper 1 (“Pet.”). LED Wafer Solutions, LLC (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). With our authorization, Petitioner filed a Reply to the Preliminary Response (Paper 8) and Patent Owner filed a Sur-reply (Paper 9). We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, upon considering the Petition, Preliminary Response, Reply, Sur-Reply, and the evidence of record, we determine the information presented in the Petition fails to establish a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we deny the Petition, and do not institute an inter partes review. B. Related Proceedings The parties identify LED Wafer Solutions LLC v. Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc., No. 6:21-cv-292 (W.D. Tex.) (“the District Court litigation”) as a related matter. Pet. 62; Paper 5, 1. The parties also identify IPR2021-01506, also involving the ’137 patent. IPR2021-01516 Patent 8,941,137 B2 3 Pet. 62; Paper 5, 1. Patent Owner further identifies the following related matters in which additional patents owned by Patent Owner are challenged: IPR20201-01479, IPR2021-01491, IPR2021-01504, IPR2021-01526, and IPR2021-01554. Paper 5, 1. C. The ’137 Patent The ’137 patent is titled “Light Emitting Diode Package and Method of Manufacture.” Ex. 1001, code (54). The ’137 patent explains that a light emitting diode (LED) is a semiconductor device configured to receive electrical power and output electromagnetic radiation, and that “[t]he output energy or light is determined by the band gap of the semiconductor materials and operating conditions of the LED.” Ex. 1001, 1:19-27. The ’137 patent explains that LEDs “compare favorably to other sources of light,” and provide advantages such as energy efficiency and long-lasting designs, but “conventional LED devices can be relatively costly to manufacture by some metrics when compared to other light sources” due to their exacting package requirements. Ex. 1001, 1:28-43. The ’137 patent provides an LED device and packaging for the same in which “the LED is manufactured by epitaxial growth or other chemical or physical deposition techniques of a plurality of layers” and has certain layers which “act to promote mechanical, electrical, thermal, or optical characteristics of the device.” Ex. 1001, 1:66-2:4. According to the ’137 patent, its device “avoids design problems, including manufacturing complexities, costs and heat dissipation problems found in conventional LED devices.” Ex. 1001, 2:4-6. Figure 6 of the ’137 patent, reproduced below, shows an exemplary LED device. Ex. 1001, 4:47-48. IPR2021-01516 Patent 8,941,137 B2 4 Figure 6 depicts LED device 60 having GaN LED layer 600, carrier layer 620, metallic interface 625, metal pad 630, optically transparent or transmissive adhesive layer 640, region 645 containing phosphor and/or quantum dot material, alignment marks 650, cover substrate 655, and lens 660. Ex. 1001, 4:47-5:17. The ’137 patent explains “[i]n operation, photons emitted from LED layer 600 travel through said optically transparent adhesive layer 640 and the region containing the phosphor and/or quantum dots 645. This causes color (wavelength) control and emission of selective desired light out of the LED device.” Ex. 1001, 5:3-8. The ’137 patent further explains that cover substrate 655 provides “structural presence and mechanical coupling for elements of the LED device 60,” and IPR2021-01516 Patent 8,941,137 B2 5 optical lens 660 “can act to spread, diffuse, collimate, or otherwise redirect and form the output of the LED.” Ex. 1001, 5:9-22. D. Challenged Claims Petitioner challenges claims 1-4, 7, and 8 of the ’137 patent. Pet. 6-7. Claim 1 is the only independent claim challenged, and is reproduced below. 1. A light emitting device, comprising: a semiconductor LED including doped and intrinsic regions thereof; a conducting support layer disposed proximal to a first surface of said semiconductor LED and separated therefrom by a metallic interface with no additional intervening layers, said conducting support layer is no more than 50 microns in thickness; an optically permissive layer proximal to a second surface of said semiconductor LED, said first and second surfaces of said semiconductor LED being on opposing faces thereof; an optically definable material proximal to or within said optically permissive layer that affects an optical characteristic of emitted light passing therethrough; an optically permissive flat cover substrate covering at least a portion of the above components; and a metal pad between said semiconductor LED and said optically permissive layer, wherein, said first surface of said semiconductor LED, said metallic interface and said conducting support layer are all electrically coupled to one another. Ex. 1001, 8:15-36. E. The Asserted Grounds Petitioner asserts that claims 1-4, 7, and 8 of the ’137 patent would have been unpatentable based on the following challenges: IPR2021-01516 Patent 8,941,137 B2 6 Claims Challenged 35 U.S.C. § Reference(s)/Basis 1-3, 7 103(a)1 Herrmann, 2 Schubert,3 Nakamura,4 Lee5 4 103(a) Herrmann, Schubert, Nakamura, Lee, Hashimoto6 8 103(a) Herrmann, Schubert, Nakamura, Lee, Rothschild7 1, 7 103(a) Beeson, 8 Schubert, Nakamura, Toshiba,9 Herrmann Pet. 6-7. Petitioner supports its showing of unpatentability of the challenged claims of the ’137 patent with the Declaration of Steven P DenBaars, Ph.D. (Ex. 1014). 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 285-88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013. Because the challenged patent claims priority to applications filed before March 16, 2013, we refer to the pre-AIA version of § 103. Our opinions on the present record would not change if the AIA version of § 103 were to apply. 2 Petitioner contends Herrmann refers to “two substantially identical references,” US 2010/0276706 A1, published Nov. 4, 2010 (Ex. 1003) and WO2009/003442, published Jan. 8, 2009 (Ex. 1004). See Pet. 6, n.14. For purposes of this Decision, we cite only Ex. 1003. 3 E. Fred Schubert, Light-Emitting Diodes, 2d ed., CAMBRIDGE UNIVERSITY PRESS, 2006 (Ex. 1005). 4 US 5,777,350, issued July 7, 1998 (Ex. 1006). 5 US 2008/0023721 A1, published Jan. 31, 2008 (Ex. 1013) 6 US 2004/0012958 A1, published Jan. 22, 2004 (Ex. 1007). 7 US 2006/0104855 A1, published May 18, 2006 (Ex. 1008). 8 US 2009/0140272 A1, published Jun. 4, 2009 (Ex. 1009). 9 JP 2008-091831 A, published Apr. 17, 2008 (Ex. 1010). IPR2021-01516 Patent 8,941,137 B2 7 II. ANALYSIS A. Claim Construction Petitioner asks us to construe the claim term “intrinsic.” Pet. 4-6. Patent Owner argues that the claim terms should be given their plain and ordinary meaning. Prelim. Resp. 10-12. Claim construction in this proceeding is governed by 37 C.F.R. § 42.100(b), which provides: In an inter partes review proceeding, a claim of a patent, or a claim proposed in a motion to amend under §42.121, shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. Under the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312- 19 (Fed. Cir. 2005) (en banc), claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. See Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365-66 (Fed. Cir. 2012). There is a “heavy presumption,” however, that a claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted). We only construe terms to the extent necessary to determine the dispute between the parties. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) IPR2021-01516 Patent 8,941,137 B2 8 (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner asserts that the term “intrinsic” as used in the claims of the ’137 patent should be construed as “undoped or not-doped.” Pet. 5 (“[T]he term ‘intrinsic’ when used to characterize a semiconductor means undoped or not-doped.”). In support of this construction, Petitioner cites the Specification of the ’137 patent (Ex. 1001, 2:11-13), two technical dictionaries (Exs. 1011 and 1012),10 and the DenBaars Declaration (Ex. 1014 ¶ 27). Pet. 4-6. As noted previously, Patent Owner requests that we adopt the ordinary and customary meaning of the claim terms as understood by a skilled artisan. Prelim. Resp. 11. However, Patent Owner fails to provide any argument or evidence as to the ordinary and customary meaning of “intrinsic” in the context of the claims of the ’137 patent or to otherwise provide any explanation regarding the meaning of the term “intrinsic.” See generally Prelim. Resp. 11. Based on this record, for the purposes of this Decision, we adopt Petitioner’s construction of “intrinsic” as meaning “undoped or not-doped.” We determine that it is not necessary to discuss or construe any additional claim terms to make a determination as to whether trial should be instituted. B. Legal Standards A patent claim is unpatentable as obvious if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a 10 Petitioner incorrectly cites to Exhibits 1007 and 1008 when discussing the technical dictionaries. See Pet. 5, footnotes 10-12. On this record, the dictionaries appear as Exhibits 1011 (Modern Dictionary) and 1012 (Wiley). IPR2021-01516 Patent 8,941,137 B2 9 person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) when presented, objective evidence of non- obviousness.11 Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). With regard to combining the teachings of multiple references, an articulated reason with some rational underpinning to combine the known elements in the fashion claimed must be provided to support a conclusion of obviousness. See KSR, 550 U.S. 418; see also In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (It is the petitioner’s “burden to demonstrate 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.”) (citation and internal quotation omitted). “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) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Petitioners cannot satisfy their 11 The parties have not asserted or otherwise directed our attention to any objective evidence of nonobviousness. IPR2021-01516 Patent 8,941,137 B2 10 burden of proving obviousness by employing “mere conclusory statements.” Magnum Oil, 829 F.3d at 1380. C. Level of Ordinary Skill in the Art With regard to the level of ordinary skill in the art, Petitioner contends that “[a] person of ordinary skill at the time of the invention of the ’137 Patent would have had a Bachelor’s Degree in electrical engineering, materials science, physics or a similar discipline, with one to two years of experience in the field of LED packaging design.” Pet. 3. Patent Owner states that “[b]ecause the proposed level of ordinary skill does not affect the ultimate analysis, Patent Owner takes no position with respect to Petitioner’s proposed level of skill.” Prelim. Resp. 17. Petitioner’s undisputed proposal is consistent with the technology described in the Specification of the ’137 patent and the cited prior art. In order to determine whether Petitioner has demonstrated a reasonable likelihood of showing the unpatentability of at least one of the challenged claims, we adopt Petitioner’s proposed level of skill in the art. D. Consideration of Alleged Obviousness Based on Herrmann or Beeson in view of Schubert or Nakamura Our institution decision is based on consideration of Petitioner’s arguments and evidence regarding the combination of Herrmann with Schubert or Nakamura and Beeson with Schubert or Nakamura. See Pet. 6- 7 (every asserted ground in the Petition relies on Herrmann or Beeson in view of Schubert or Nakamura). We start with a description of the disclosures of Herrmann, Beeson, Schubert, and Nakamura, and then consider the arguments and evidence. IPR2021-01516 Patent 8,941,137 B2 11 1. Herrmann (Ex. 1003) Herrmann is titled “Method for the Production of a Plurality of Optoelectronic Components, and Optoelectronic Component,” and published on November 4, 2010. Ex. 1003, codes (43), (54). Herrmann explains that production of optoelectronic devices, such as printed circuit boards, “often necessitates a series of individual processing steps that have to be carried out individually by each device,” which are “cost-intensive and complex in comparison with processing steps which can be carried out simultaneously for a multiplicity of devices.” Ex. 1003 ¶ 2. In view of this, Herrmann aims to provide a simplified method of producing a plurality of optoelectronic devices. Ex. 1003 ¶ 3. Herrmann’s method involves first “providing a connection carrier assemblage having a plurality of device regions, wherein at least one electrical connection region is provided in each of the device regions.” Ex. 1003 ¶ 5. Next, Herrmann discloses providing a semiconductor body carrier “on which a plurality of separate semiconductor bodies connected to the semiconductor body carrier are arranged, wherein the semiconductor bodies each have a semiconductor layer sequence having an active region.” Ex. 1003 ¶ 5. According to Herrmann, the connection carrier assemblage and the semiconductor body carrier are arranged relative to one another so that the semiconductor bodies face the device regions, and the semiconductor bodies are mechanically and electrically connected to the connection carrier assemblage in a mounting region of a device region assigned to the respective semiconductor body. Ex. 1003 ¶¶ 6-7. The semiconductor bodies are then separated from the semiconductor body carrier, and the connection carrier assemblage can be divided into a plurality of separate optoelectronic devices. Ex. 1003 ¶¶ 7-8. IPR2021-01516 Patent 8,941,137 B2 12 Herrmann states that its method is advantageous because “[t]he electrical and mechanical connection of the semiconductor bodies can . . . be carried out in one process step simultaneously at a plurality of semiconductor bodies,” such that “[i]ndividual processing steps, for example a pick and place process or a separate wire bonding connection, i.e. a wire bonding connection to be implemented individually for each semiconductor body, can be reduced or avoided.” Ex. 1003 ¶ 9. 2. Beeson (Ex. 1009) Beeson is titled “Solid-State Light Source,” and was published on June 4, 2009. Ex. 1009, codes (43), (54). Beeson aims to eliminate the deficiencies of conventional solid-state light sources, and to provide less expensive light sources with higher optical output. Ex. 1009 ¶ 4. Beeson discloses a light source containing at least one stack of light emitting elements that includes an inorganic LED chip and a wavelength conversion chip. Ex. 1009 ¶ 2. Beeson explains that the inorganic LED chip includes a first doped layer, a second doped layer, and an active region interposed between the first doped layer and second doped layer. Ex. 1009 ¶ 36. 3. Schubert (Ex. 1005) Schubert is titled “Light-Emitting Diodes.” Ex. 1005, title. Schubert discloses that “[d]oping of the active region and confinement layers plays a crucial role in the efficiency of double heterostructure (DH) LEDs.” Ex. 1005, 116. Schubert explains that “[t]he active region of III-V arsenide and phosphide DH LEDs must not be heavily doped” and that “[h]eavy doping with either p-type or n-type dopants would place the p-n junction effectively at the edge of the DH well region, i.e. at the active/confinement interface, thereby promoting carrier spill-over into one of the confinement regions.” Ex. 1005, 116. According to Schubert, “[d]iffusion of carriers IPR2021-01516 Patent 8,941,137 B2 13 into the cladding region decreases the radiative efficiency.” Ex. 1005, 116. Schubert further discloses that “[t]herefore it is required that the active region is either doped at a level lower than the doping concentration in the confinement regions or left undoped” and that “[f]requently the active layer is left undoped.” Ex. 1005, 116. Schubert also explains that “[t]he displacement of the p-n junction from its intended location into the cladding layer can be a significant problem in DH LED structures” and that “[u]sually, the lower confinement layer is n-type, the upper confinement layer is p-type, and the active region is undoped or lightly doped with n- or p-type dopants.” Ex. 1005, 118. 4. Nakamura (Ex. 1006) Nakamura is titled “Nitride Semiconductor Light-Emitting Device.” Ex. 1006, code (54). Nakamura “relates to a semiconductor light-emitting device such as a light-emitting diode (LED) or a laser diode (LD).” Ex. 1006, 1:7-9. Nakamura explains that “when the active layer of the quantum well structure is a non-doped layer, a band-to-band emission of narrow half band width, [sic] an exciton emission or a inter-quantum well level emission may be obtained.” Ex. 1006, 15:33-36. 5. Motivation to Combine Herrmann and Schubert or Nakamura Independent claim 1 of the ’137 patent is directed to a semicondcuctor LED including doped and intrinsic regions. Ex. 1001, 8:16-17. For this limitation, Petitioner relies on the teachings of Herrmann in view of Schubert or Nakamura. Pet. 11-15. Patent Owner argues that “Petitioner has not met its burden in establishing that Her[r]mann discloses or teaches an ‘intrinsic region’ as required by all challenged claims,” and “fails to establish why or how Nakamura or Schubert would render an active region IPR2021-01516 Patent 8,941,137 B2 14 to be considered as an intrinsic region, or why an intrinsic region would be combined with Her[r]mann.” Prelim. Resp. 30. Petitioner contends that Herrmann discloses a semiconductor LED that includes an active region arranged between two semiconductor layers. Pet. 11. Petitioner contends the semiconductor layers of Herrmann are doped for different conduction types (n-conducting and p-conducting). Pet. 11-12. Petitioner asserts that “based on Herrmann’s disclosure of a pair of oppositely doped layer[s] sandwiching the active region . . ., Herrmann discloses or at least suggests that active region would be undoped.” Pet. 12 (citing Ex. 1014 ¶ 34). Dr. DenBaars states that “the use of . . . undoped light emitting layers [w]as entirely conventional at the relevant time.” Ex. 1014 ¶ 34. Dr. DenBaars also states that “[e]ven if [Herrmann] were alone found insufficient to render the use of an undoped light emitting layer obvious, the Schubert book (Ex. 1005) and Nakamura patent (Ex. 1006) both confirm that a person having ordinary skill in the art would have found it obvious to utilize an intrinsic light emitting layer.” Ex. 1014 ¶ 35. Petitioner addresses the differences between independent claim 1 and the cited art in a section of the Petition that provides as follows: 2. Differences Between Claim 1 and the Cited Art Petitioner asserts that there are no specific differences between Herrmann and claim 1 of the ’137 patent. Instead, the sole issue is the level of detail provided by Herrmann regarding the doping in the disclosed layers. Indeed, the fact that the layers both above and below the light emitting layer are expressly described as doped, the silence regarding doping of the light emitting layer is consistent with the light emitting layer of Herrmann being undoped and alone suggests that characteristic. Pet. 14. IPR2021-01516 Patent 8,941,137 B2 15 Although Dr. DenBaars contends that an intrinsic, light emitting layer was conventional, the evidence in the Petition consisting of two references describing that the use of such a layer was known is inadequate to establish that such use was conventional. See Pet. 13 (discussing the disclosures of Schubert and Nakamura). And, to the extent Petitioner contends that the failure in Herrmann to state whether the light emitting layer is undoped or doped in light of the disclosure that the adjoining layers are doped “is consistent with” or “suggests” the light emitting layer is undoped, we find inadequate support for such a determination in Herrmann or elsewhere in the record. Specifically, Petitioner identifies, and we discern, no teaching or suggestion in Herrmann that its light emitting layer is an intrinsic region or layer or is undoped or not doped. We determine that in Herrmann an intrinsic region or layer is neither shown nor described. To the contrary, Patent Owner directs us to two instances where Herrmann discloses that an active region can include dopants. Prelim. Resp. 29-30 (citing Ex. 1003 ¶¶ 287-288). With regard to the “Disclosure in S[c]hubert,” the Petition states, “Schubert’s oft-cited book Light Emitting Diodes (2d ed. 2006) explains that the active (i.e., the light emitting) region of a light emitting diode should have either low doping or be ‘left undoped.’ The reference further explains that ‘[f]requently the active layer is left undoped.’” Pet. 13 (citing Ex. 1005, 116-117). Schubert, however, is not uniform in recommending that LEDs include undoped layers. The cited pages of Schubert also state the following: “[p]-type doping of the active region is more common than n-type doping of the active region”; “p-type doping of the active region ensures a more uniform carrier distribution throughout the active region”; “light p-type IPR2021-01516 Patent 8,941,137 B2 16 doping of the active region is preferable over light n-type doping. Therefore, most active layers of LEDs and lasers are lightly doped with acceptors”; “[i]ntentional doping of the active region can have advantages as well as disadvantages”; and “[a]n example of a material whose luminescence efficiency increases with doping concentration is Be-doped GaAs. It is well known that the radiative efficiency of Be-doped GaAs increases with the Be doping level in the moderate doping concentration range.” Ex. 1005, 116- 117. Far from uniformly teaching the use of an intrinsic (undoped) active or light emitting layer, Schubert teaches that doping the active or light emitting layers of LEDs is “more common,” “preferable,” and “can have advantages.” Ex. 1005, 116-117. And, to the extent Schubert provides an indication as to the level of doping that is most commonly used, Schubert teaches light p-type doping is most common. Ex. 1005, 117 (“Therefore, most active layers of LEDs and lasers are lightly doped with acceptors.”). Put differently, considering the teachings of Schubert as a whole, Petitioner has not shown that a skilled artisan would have understood this reference to recommend the use of an intrinsic (undoped) active or light emitting layer in an LED. With regard to Nakamura, Petitioner cites the following passage in the Petition as “emphasiz[ing] the benefits of an undoped active layer”: [S]ince the active layer should ideally emit a strong light through a band-to-band emission according to the present invention, the employment of a non-doped InGaN as material for the active layer is most desirable. Speaking in other way, if an active layer is doped with an impurity, the crystallinity of the resultant layer is more likely to be deteriorated as compared with a non-doped active layer. Moreover, a light-emitting device where a non- doped InGaN is employed as an active layer is advantageous in lowering Vf (forward voltage) value as compared with a light- emitting device doped with an impurity. IPR2021-01516 Patent 8,941,137 B2 17 Pet. 13-14 (citing Ex. 1006, 15:57-16:1).12 However, this passage in Nakamura is immediately preceded by the following passage that discusses doping the active layer to intensify light emission: Alternatively, the active layers 126 and 136 may be doped with a donor impurity and/or an acceptor impurity. If the crystallinity of an active layer doped with an impurity can be controlled to the same quality as that of non-doped active layer, it is possible, through the doping with a donor impurity, to further increase the band-to-band light-emitting intensity as compared with the non- doped active layer. It is possible, through the doping with an acceptor impurity, to shift a peak wavelength toward the lower energy side by a magnitude of about 0.5 eV from the peak wavelength of the band-to-band emission, but the half band width will be enlarged in such a case. If doping with both acceptor impurity and donor impurity is performed on an active layer, the light-emitting intensity of the active layer will be further intensified as compared with an active layer doped only with an acceptor impurity. If an active layer doped with an acceptor impurity is to be formed, the conductivity type of the active layer should preferably be turned into n-type by doping it with a donor impurity such as Si together with the doping of the acceptor impurity. Ex. 1006, 15:38-57. Here again, the cited reference is far from uniform in recommending the use of intrinsic (undoped) regions or layers in LEDs. And, while establishing intrinsic (undoped) regions or layers were known, Nakamura does not show that the light emitting layers of LEDs were conventionally or commonly undoped. Indeed, Nakamura, like Schubert, 12 Schubert states in the passage cited in the Petition that “[d]uring the growth of InGaN, for example, a marked improvement of crystal quality has been found upon doping with silicon (Nakamura et al., 1996, 1998)” in discussing processes for making LEDs. See Ex. 1005, 117 (emphasis added). The Nakamura et al. reference relied on by Petitioner in this proceeding issued in 1998. Ex. 1006, code (45). IPR2021-01516 Patent 8,941,137 B2 18 indicates that doping is more common. Ex. 1006, 1:29-30 (under “Description of the Related Art,” stating “[t]he active layer is doped with a donor impurity such as Si or Ge and/or an acceptor impurity such as Mn or Mg.”). With regard to combining the relevant teachings of Herrmann and either Schubert or Nakamura, the entire presentation in the Petition states as follows: 3. Person Having Ordinary Skill in the Art The person having ordinary skill in the art is discussed in Section III above. The ’137 patent and Herrmann both assume that the creation of semiconductor layers for use in a light emitting diode was within the level of ordinary skill in the art. That assumption would encompass the deposition of layers having a desired level of doping, i.e., to include no doping. Moreover, the prior art is a proper consideration in determining the level of ordinary skill. See In re GPAC, 57 F.3d 1573, 1579 (Fed. Cir. 1995). The assumption regarding the capabilities of the skilled artisan to form the layers of a light emitting diode, therefore, directly inform the level of ordinary skill. 4. Reasons Supporting Obviousness With respect to leaving the light emitting region of Herrmann undoped (i.e., intrinsic), Schubert explains that dopants within the active region can result in “spill-over into one of the confinement regions.” That undesirable result “decreases the radiative efficiency.” Based on that explanation, Schubert concludes that “[f]requently the active layer is left undoped.” Similarly, Nakamura explains that the excluding dopants from the active layer can improve band-to-band emission, can improve crystallinity, and can advantageously lower the forward voltage. A person having ordinary skill in the art would have had reason to implement an intrinsic light emitting layer in Herrmann based at least on the teachings of Schubert and/or Nakamura. That feature, therefore, should be deemed obvious. IPR2021-01516 Patent 8,941,137 B2 19 Pet. 14-15 (citing Ex. 1014 ¶¶ 34-37). We determine this presentation is vague and conclusory as to why or how a skilled artisan would have combined the teachings of Herrmann and either Schubert or Nakamura to arrive at the invention recited in any claim of the ’137 patent and fails to consider and account for all the teachings of the asserted combination of references.13 With regard to the “assumption” that “creation of semiconductor layers for use in a light emitting diode was within the level of ordinary skill in the art” and “[t]hat assumption would encompass the deposition of layers having a desired level of doping, i.e., to include no doping,” we note that “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). And, the view of the cited art set forth in the Petition is too narrowly focused and does not reconcile or take into account in any way the complete teachings of the cited references as to doping the light emitting layer. In particular, although the references establish that the use of an undoped, light emitting layer was known, the references provide reasons why a skilled artisan might choose to use a doped, light emitting layer. Petitioner, however, fails to identify any specific reason for combining the relevant teachings of the cited references to arrive at the claimed invention. And, the disclosures in the cited references as to the level of doping of the active or 13 In making this determination, we have considered the declaration testimony of Dr. DenBaars in cited (but unexplained) paragraphs 34-37 of Exhibit 1014. We find that, like the presentation in the Petition, this testimony fails to discuss or account for the teachings in both Schubert and Nakamura relating to doping the active or light emitting layer. IPR2021-01516 Patent 8,941,137 B2 20 light emitting layer of LEDs do not establish that intrinsic (undoped) layers were conventional or most commonly used. It is Petitioner’s burden to provide an articulated reason with some rational underpinning to combine the known elements from the cited art in the fashion claimed in order to support a conclusion of obviousness. See KSR, 550 U.S. 418. The Petition provides no adequate explanation as to why a skilled artisan would have chosen to use an undoped layer as the light emitting layer of an LED based on the collective teachings of the cited references. We determine that the Petition does not sufficiently support a determination that a skilled artisan would have been motivated to use an undoped (i.e., intrinsic) region in an LED as claim 1 of the ’137 patent requires. Based on this record, we determine that Schubert and Nakamura establish that it was known in the prior art to use an intrinsic (undoped) region or layer in an LED. However, we further determine that Petitioner has not adequately shown in the Petition a motivation to combine with a reasonable expectation of success the teachings of Herrmann as to a light emitting layer with the teachings of either Schubert or Nakamura as to the use of an intrinsic (undoped) region or layer in an LED in light of the teachings in both Schubert and Nakamura relating to the use of doped, light emitting layers. 6. Motivation to Combine Beeson with Schubert or Nakamura For two of its patentability challenges, Petitioner relies on the combination of Beeson with Schubert or Nakamura as disclosing the “intrinsic region” limitation of claim 1. Pet. 47-51. For its unpatentablitliy challenges based on Beeson, Petitioner relies on arguments that are nearly identical to those based on Herrmann. Compare Pet. 11-15 (arguments for IPR2021-01516 Patent 8,941,137 B2 21 challenges based on Herrmann) with Pet. 47-51 (arguments for challenges based on Beeson). For example, Petitioner contends that Beeson discloses or suggests an intrinsic layer based on its disclosure of a pair of doped layers sandwiching an active region, either alone or in combination with Schubert and Nakamura for the same reasons discussed above, and relies on similar statements from Dr. DenBaars. Pet. 47-51 (citing Ex. 1014 ¶¶ 74-77). Petitioner does not direct us to anything in Beeson or the declaration of Dr. DenBaars that cures the deficiencies discussed above in its challenges based on Herrmann. As a result, we determine Petitioner has not shown adequately in the Petition a motivation to combine with a reasonable expectation of success for the same reasons discussed above. 7. Summary We deny institution because we determine that Petitioner has failed to show a reasonable likelihood of establishing, based upon the relied-upon teachings in Herrmann, Beeson, and either Schubert or Nakamura, that a skilled artisan would have been motivated to combine the cited prior art references with a reasonable expectation of success such that the LED device disclosed in Herrmann or Beeson would include an intrinsic region as recited in independent claim 1 of the ’137 patent. III. CONCLUSION We determine that Petitioner has not demonstrated a reasonable likelihood of showing at least one of the claims challenged in the Petition would have been unpatentable. Accordingly, for the reasons stated herein, we deny the Petition. IPR2021-01516 Patent 8,941,137 B2 22 IV. ORDER In consideration of the foregoing, it is: ORDERED that the Petition is denied and no inter partes review as to any claim of the ’137 patent is instituted. IPR2021-01516 Patent 8,941,137 B2 23 FOR PETITIONER: Michael Eisenberg Thomas Yebernetsky STEPTOE & JOHNSON LLP meisenberg@steptoe.com tyebernetsky@steptoe.com FOR PATENT OWNER: Brad Liddle Seth A. Lindner Scott Breedlove Michael Pomeroy CARTER ARNETT PLLC bliddle@carterarnett.com slindner@carterarnett.com sbreedlove@carterarnett.com mpomeroy@carterarnett.com