The Solaria Corporation

Patent Trials and Appeals Board

Sep 24, 2021

IPR2021-00095 (P.T.A.B. Sep. 24, 2021)

Trials@uspto.gov Paper 17
571-272-7822 Date: September 24, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

CANADIAN SOLAR INC. and
CANADIAN SOLAR (USA) INC.,
Petitioner,
v.
THE SOLARIA CORPORATION,
Patent Owner.

IPR2021-00095
Patent 10,522,707 B2

Before TERRENCE W. McMILLIN, JON M. JURGOVAN, and
MONICA S. ULLAGADDI, Administrative Patent Judges.
McMILLIN, Administrative Patent Judge.
DECISION

Granting Petitioner’s Request on Rehearing
37 C.F.R. § 42.71(d)
Granting Institution of Inter Partes Review
35 U.S.C. § 314

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I. INTRODUCTION
Canadian Solar Inc. and Canadian Solar (USA) Inc. (“Petitioner”)1
filed a Petition to institute an inter partes review of claims 1, 2, 6, 8–10, and
12–20 (the “challenged claims”) of U.S. Patent No. 10,522,707 B2
(Ex. 1001, the “’707 patent”) pursuant to 35 U.S.C. § 311 et seq. Paper 1
(“Petition” or “Pet.”). The Solaria Corporation (“Patent Owner”)2 filed a
Preliminary Response. Paper 7 (“Preliminary Response” or “Prelim.
Resp.”). With our authorization, Petitioner thereafter filed a Reply (Paper 9
(“Reply”)) and Patent Owner filed a Sur-reply (Paper 10 (“Sur-reply”)). The
Preliminary Response, Reply, and Sur-reply addressed only the issue of
discretionary denial of institution. On May 26, 2021, we entered a Decision
Denying Institution in which we exercised our discretion to deny institution
under 35 U.S.C. § 314(a) because the ’707 patent was the subject of a
parallel proceeding. (Paper 12 (“Decision Denying Institution” or “DDI”)).
Petitioner filed a timely Request for Rehearing. (Paper 14 (“Request
for Rehearing” or “Request”)). In its Request for Rehearing, Petitioner asks
that we reconsider our Decision Denying Institution because Patent Owner
moved to drop the ’707 patent from the parallel proceeding. Request 1–2.
After considering the Request for Rehearing and for the reasons set forth
below, we institute an inter partes review as to all of the challenged claims
of the ’707 patent on the grounds of unpatentability presented in the Petition.
We determine that the information presented in the Petition shows that
“there is a reasonable likelihood that the petitioner would prevail with

1 Petitioner identifies Canadian Solar Inc. and Canadian Solar (USA) Inc. as
the real parties-in-interest to this proceeding. Pet. 2.
2 Patent Owner identifies The Solaria Corporation as the real party-in-
interest. Paper 6, 2.
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respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
§ 314(a) (2018).
A. Related Proceedings
The parties identify the following related proceedings:
Certain Shingled Solar Modules, Components Thereof, and Methods
for Manufacturing the Same, Inv. No. 337-TA-1223 (US International Trade
Commission) (the “ITC investigation”); and
The Solaria Corporation v. Canadian Solar Inc., Case No. 4:20-cv-
02169 (N.D. Cal.) (the “District Court litigation”). Pet. 2–3; Paper 6, 2.
B. The ’707 Patent
The ’707 patent is titled “Tiled Solar Cell Laser Process.” Ex. 1001,
code (54). The patent is “directed to photovoltaic systems and
manufacturing processes and apparatuses thereof.” Id. at 1:13–14. The
patent describes that “[c]onventionally, solar cells are mechanically cut with
a saw. However, this technique has numerous disadvantages.” Id. at 2:19–
20.
The ’707 patent describes providing “a solar cell comprising either a
single crystalline silicon material or a polycrystalline solar cell, the solar cell
having a backside and a front side and a thickness, the backside having a
metal material,” and placing “the front side of the solar cell on a platen such
that the backside is facing a laser source.” Id. at 2:37–53. The laser source
is then “initiated” “to output a laser beam having a wavelength from 200 to
600 nanometers and a spot size of 18 to 30 microns,” thus “subjecting a
portion of the backside to the laser beam at a power level ranging from about
20 Watts to about 35 Watts to cause an ablation to form a scribe region
having a depth, width, and a length.” Id. The scribe region is then cut to a
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“depth being from 40% to 60% of a thickness of the solar cell, the width
being between 16 and 35 microns, and the length being equivalent to a
length of the solar cell.” Id. The patent also discloses “delivering a jet of
fluid within a vicinity of the ablation to carry away particulate material, and
capturing the particulate material using a vacuum.” Id. at 3:10–13.
Figure 29, reproduced below, shows an isometric view of a scribe
region of a solar cell.

Figure 29 depicts scribe region 2900, kerf 2902, backing material 2904, and
photovoltaic material 2906. Id. at 8:10–15.
C. Challenged Claims
Petitioner challenges claims 1, 2, 6, 8–10, and 12–20 of the ’707
patent. Pet. 1. Claim 1, the sole independent claim, is reproduced below.
1. A method comprising:
providing a solar cell comprising either a single crystalline
silicon material or a polycrystalline solar cell, the solar cell
having a backside and a front side and a thickness, the
backside having a metal material;
placing the front side of the solar cell on a platen such that the
backside is facing a laser source;
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initiating a laser source to output a laser beam;
subjecting a portion of the backside to the laser beam to cause an
ablation to form a scribe region having a depth, width, and
a length, the depth being from 40% to 60% of the thickness
of the solar cell, and the length being equivalent to a length
of the solar cell;
removing a vaporized material from a vicinity of the ablation;
and
capturing the vaporized material using a vacuum.
D. The Asserted Grounds
Petitioner challenges claims 1, 2, 6, 8–10, and 12–20 of the ’707
patent based on the grounds set forth in the table below.
Claim(s) Challenged 35 U.S.C. § References
1, 2, 6, 8, 9, 12–16 103 Jinno3,4, Suutarinen5
10 103 Jinno, Suutarinen, Liu6
13 103 Jinno, Suutarinen, Morad7
17, 18 103 Jinno, Suutarinen, Spectra-Physics8

3 JP 2008-60205 A, published Mar. 13, 2008 (Ex. 1005). Petitioner contends
this reference is prior art under 35 U.S.C. § 102(a). Pet. 15.
4 Petitioner refers to this reference as “Jinno-205,” to distinguish it from
Jinno ’604.
5 US 2008/0067160 A1, published Mar. 20, 2008 (Ex. 1006). Petitioner
contends this reference is prior art under 35 U.S.C. § 102(a). Pet. 17.
6 US 6,580,054 B1, issued June 17, 2003 (Ex. 1028). Petitioner contends
this reference is prior art under 35 U.S.C. § 102. Pet. 54.
7 US 2015/0349167 A1, published Dec. 3, 2015 (Ex. 1048). Petitioner
contends this reference is prior art under 35 U.S.C. § 102. Pet. 59 n.4.
8 “Laser Edge Isolation Scribing for Crystalline Silicon Solar Cell
Production,” published Oct. 25, 2012 (retrieved from
https://web.archive.org/web/20121025174411/http://assets.newport.com/
webDocuments-EN/images/Laser_Edge_Isolation_Scribing_SP.pdf)
(Ex. 1011). Petitioner contends this reference is prior art under 35 U.S.C.
§ 102. Pet. 67.
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Claim(s) Challenged 35 U.S.C. § References
19 103 Jinno, Suutarinen, Shamoun9
20 103 Jinno, Suutarinen, Shamoun, Daly10
Petitioner also relies on the Declaration of Dr. Stephen P. Shea (Ex. 1003,
“Shea Decl.”), which provides evidence in support of the contentions in the
Petition. At this stage, Patent Owner has not submitted a declaration or
other testimonial evidence of an expert and has not argued that any of the
cited references do not qualify as prior art. See generally Prelim. Resp.
II. ANALYSIS
A. Discretionary Denial of Institution and Request for Rehearing
Institution of inter partes review is discretionary. See Harmonic Inc.
v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is
permitted, but never compelled, to institute an IPR proceeding.”); 35 U.S.C.
§ 314(a) (2018). The Board has held that the advanced state of a parallel
proceeding is a factor that may weigh in favor of denying a petition under
§ 314(a). See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752,
Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential); Patent Trial and Appeal
Board, Consolidated Trial Practice Guide, 58 & n.2 (Nov. 2019) (available
at https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf). In its
Preliminary Response, Patent Owner contended we should exercise our
discretion to deny the Petition under § 314(a), “because the invalidity
arguments [Petitioner] raises here will be resolved in a pending ITC
Investigation before this proceeding will conclude.” Prelim. Resp. 1. We

9 US 2010/0155379 A1, published June 24, 2010 (Ex. 1017). Petitioner
contends this reference is prior art under 35 U.S.C. § 102. Pet. 71.
10 US 3,626,141, issued Dec. 7, 1971 (Ex. 1030). Petitioner contends this
reference is prior art under 35 U.S.C. § 102. Pet. 73.
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evaluated the factors set forth in Apple Inc. v. Fintiv, Inc., IPR2020-00019,
Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential), and determined that
discretionary denial was appropriate in view of the ITC investigation
involving the ’707 patent. See generally DDI. Specifically, we determined
that “[t]he fact that there is not a likelihood of a stay in the ITC
investigation, the ITC investigation is scheduled to be completed
substantially before our final written decision, and the high level of
investment in the ITC investigation outweigh the facts that support declining
to exercise discretion.” DDI 15.
In the Request for Rehearing, Petitioner “submit[s] that the Board
misapprehended the nature and fragility of Patent Owner’s assertion of the
’707 Patent in the ITC Investigation and the corresponding likelihood that
the ITC Investigation would yield a final invalidity determination before a
final written decision is this proceeding, and further that the facts as they
stand today do not support the Board’s Decision.” Request 2. We do not
agree that the Board misapprehended anything. Our Decision Denying
Institution was appropriate under the facts as they existed at the time. We do
agree that the facts as they stand today do not support our Decision Denying
Institution and, in light of the changed facts, we modify our earlier decision
that exercised our discretion to deny institution.
The parallel proceeding that served as our basis for exercising our
discretion to deny institution no longer involves the ’707 patent. On
June 28, 2021, the ITC Investigation was terminated with respect to the ’707
patent. Ex. 1063, 2. Petitioner argues that, “Patent Owner’s decision to
terminate the ’707 Patent from the ITC Investigation eliminates the factual
basis for the Board’s denial of institution.” Request 4. We agree. In
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weighing the Fintiv factors, we relied on the involvement of the ’707 patent
in an ITC investigation as the basis for our weighing 4 of 6 factors and for
our holistic assessment of the factors in favor of our exercising our
discretion to deny institution. DDI 9 (factor 1), 10 (factor 2), 11 (factor 3),
14 (factor 5), 15 (holistic assessment). However, the ITC investigation no
longer provides any basis for exercising our discretion to deny institution.11
We possess the inherent authority to reconsider our Decision Denying
Institution. See GTNX, Inc. v. INTTRA, Inc., 789 F.3d 1309, 1313 (Fed. Cir.
2015). In light of the termination of the ITC investigation with respect to the
’707 patent, we no longer exercise our discretion to deny institution.
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,

11 As referenced above, the ’707 patent is the subject of another parallel
proceeding, the District Court litigation. We considered the District Court
litigation in our Decision Denying Institution but did not rely on the District
Court litigation in exercising our discretion to deny institution. See
generally DDI. In its Preliminary Response, Patent Owner argued that the
District Court litigation should not be considered when analyzing the Fintiv
factors. Prelim. Resp. 5 (“Because the District Court Case is behind the
[ITC] Investigation, [Patent Owner] submits that the [ITC] investigation
should be analyzed when assessing whether the Fintiv factors warrant
denying institution.”). The ’707 patent is still being asserted in the District
Court litigation. Request 2. Petitioner argues that consideration of the
District Court litigation weighs in favor of institution for the reasons stated
in our Decision Denying Institution. Id. at 9–10. We agree and determine
that the District Court litigation (still) does not support the exercise of our
discretion to deny institution for the reasons previously stated, including that
there is no indication on the record that there has yet been significant
investment in the litigation or that a trial date has been set by the court. DDI
8–15.
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as a whole, would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which 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) objective evidence of non-obviousness.12 Graham v.
John Deere Co., 383 U.S. 1, 17–18 (1966).
“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”)). Petitioner cannot satisfy its
burden of proving obviousness by employing “mere conclusory statements.”
In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
C. Claim Construction
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.

12 In its Preliminary Response, Patent Owner does not present objective
evidence of non-obviousness. See generally Prelim. Resp.
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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 are also guided by the principle that we only construe claim terms
if, and to the extent that, it is necessary for the purpose of the proceeding.
See, e.g., 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)).
The Petition states, “Petitioners do not presently believe construction
of any terms is necessary to resolve the issues presented in this Petition.”
Pet. 13. The Patent Owner does not address claim construction. See
generally Prelim. Resp. In this Decision, we give the claim terms their
ordinary and customary meanings.
D. Level of Ordinary Skill in the Art
With regard to the level of ordinary skill in the art, Petitioner
contends:
A person of ordinary skill in the art at the time of filing of
the 707 Patent or any of its related applications (“Skilled
Artisan”) would have had a bachelor’s degree in any engineering
or science field that addresses the design and fabrication of
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semiconductors (a category that includes solar cells), plus three
years of work experience in that field or equivalent academic
experience. A Skilled Artisan would, for example, have been
familiar with a variety of common semiconductor singulation
processes, including sawing, laser cutting, and laser scribing.
Pet. 5. (citing Ex. 1003 ¶¶ 39–40). Patent Owner does not address the level
of ordinary skill in the art. See generally Prelim. Resp.
Petitioner’s proposal is consistent with the technology described in the
Specification 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.
E. Cited References
1. Jinno (Ex. 1005)
Jinno, an unexamined Japanese patent application publication, is titled
“Solar Cell and Production Method Therefor.” Ex. 1005, code (54).13 Jinno
“relates to a solar cell obtained by cleaving a large-area solar cell along a
dividing groove and a method for producing this solar cell.” Id. ¶ 1. “A
solar cell module is produced by dividing a large-area solar cell consisting of
a semiconductor substrate into small-area solar cells, and connecting the
small-area solar cells using, for example, lead wires.” Id. ¶ 2. “In the
method disclosed . . . a dividing groove is formed in a solar cell using a laser
or dicing saw, and a solar cell is produced by cleaving the semiconductor
substrate using this dividing groove.” Id. ¶ 3. Jinno teaches a groove, made

13 Here and elsewhere, we cite the certified English translation of Jinno,
Exhibit 1005, 2–18.
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with an “energy beam,” to a depth of 35% to 65% of the thickness of the
solar cell, with the preferred depth of 35% to 50% of the thickness. Id. ¶ 7.
2. Suutarinen (Ex. 1006)
Suutarinen is titled “Systems and Methods for Laser Cutting of
Materials.” Ex. 1006, code (54). Suutarinen relates to “laser cutting
systems for cutting materials in a vacuum environment,” “laser singulation
of semiconductor wafers,” and “depaneling or singulation of printed circuit
boards.” Id. ¶ 2.
3. Liu (Ex. 1028)
Liu is titled “Scribing Sapphire Substrates With a Solid State UV
Laser.” Ex. 1028, code (54). Liu is directed to “scribing sapphire substrates
using solid state UV lasers, and separating the scribed sapphire substrate into
die.” Id. at 1:14–16. One function of Liu’s system is that a “groove is cut,
preferably about 40 microns deep, and more preferably greater than about ½
thickness of the sapphire substrate.” Id. at 5:18–20. “It is found that the
quality of the groove being formed is more V-shaped with parallel
polarization, and more U-shaped with polarization that is not aligned. V-
shaped grooves are preferred for more uniform and predictable breaking of
the substrate during separation of the die.” Id. at 3:23–28.
4. Morad (Ex. 1048)
Morad is titled “Shingled Solar Cell Module.” Ex. 1048, code (54).
Morad is directed to “to solar cell modules in which the solar cells are
arranged in a shingled manner.” Id. ¶ 2. Morad describes a standard
dimension silicon wafer as being 156 mm by 156 mm. Id. ¶ 101.
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5. Spectra-Physics (Ex. 1011)
Spectra-Physics describes a 532 nm laser for scribing solar cells.
Ex. 1011, 3. The brochure states that the laser has “excellent power and
performance at 120 kHz pulse repetition frequency and beyond.” Id.
Spectra-Physics further explains, the “shorter pulse widths coupled with low
energy / high rep[itition] rate laser output provides very clean and effective
isolation scribes.” Id.; see also Ex. 1003 ¶ 189.
6. Shamoun (Ex. 1017)
Shamoun is titled “Illumination Methods and Systems for Laser
Scribe Detection and Alignment in Thin Film Solar Cell Fabrication.”
Ex. 1017, code (54). Shamoun is directed to “feature detection using
combined illumination . . . to detect lines scribed in multi-layered substrates
used in thin-film multijunction solarcells.” Id. ¶ 5. Shamoun describes
using lasers to “ablate or otherwise scribe” “semiconductor wafers,” and
“substrate thickness sensors 306 useful in adjusting heights in the system to
maintain proper separation from the substrate due to variations between
substrates and/or in a single Substrate.” Id. ¶¶ 41, 42.
7. Daly (Ex. 1030)
Daly is titled “Laser Scribing Apparatus.” Ex. 1030, code (54). Daly
is directed to scribing semiconductor wafers. Id. at 1:2–4. Daly describes
prior art methods to cut wafers includes scoring and snapping, or sawing, but
that these methods may damage the wafer being cut. Id. at 1:20–43. Daly
describes laser cutting wafers by maintaining “a tolerance on the order of 0.1
mils.” Id. at 4:50–58.
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F. Obviousness Analysis
We determine that Petitioner has shown a reasonable likelihood of
establishing the obviousness of claim 114 and, on that basis, institute inter
partes review of all the challenged claims. See 37 C.F.R. § 42.108(a)
(“When instituting inter partes review, the Board will authorize the review
to proceed on all the challenged claims.”).
1. Claim 1
Petitioner presents a detailed analysis of the obviousness of claim 1
supported by citations to the asserted art, the Declaration of Stephen P. Shea,
Ph.D. (Ex. 1003 (“Shea Decl.”)), and other evidence. See Pet. 26–48. Our
element-by-element consideration of whether Petitioner has shown a
reasonable likelihood of establishing the obviousness of claim 1 is provided
below.15
A method comprising:
Although recognizing that the preamble is not limiting, Petitioner cites
Jinno as teaching a method. Pet. 26. Jinno is titled, “Solar Cell and
Production Method Therefor” and the Abstract states, “[t]o provide a solar
cell with excellent cell characteristics that can be produced with a high yield
and a method for producing this solar cell.” Ex. 1005, 2 (codes (54), (57)) .
Claim 4 of Jinno is directed to “[a] method for producing a solar cell.” Id.
at 4.

14 Patent Owner’s Preliminary Response and Sur-reply are limited to arguing
that institution should be denied under 35 U.S.C. § 314(a). As such, at this
stage, we do not have any arguments or evidence submitted by Patent Owner
to consider as to the obviousness of claim 1 (or any other challenged claim).
15 We adopt Petitioner’s parsing of claim 1 in order to follow the
presentation in the Petition.
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We determine that the preamble of claim 1 is not limiting. The
preamble recites the type of invention, “[a] method,” but does not recite any
limitations or provide the antecedent basis for any limitation or claim
element. However, we also agree with Petitioner that Jinno discloses a
method.
providing a solar cell comprising either a single crystalline
silicon material or a polycrystalline solar cell,
Petitioner cites Jinno for this limitation. Pet. 26–27. Jinno states,
“[t]he semiconductor substrate can use crystalline silicon such as single
crystal silicon or polycrystalline silicon.” Ex. 1005 ¶ 15. Petitioner
establishes a reasonable likelihood of showing Jinno teaches this
limitation.
the solar cell having a backside and a front side and a thickness,
the backside having a metal material;
Petitioner relies on Figures 1 and 10 and the related descriptions
of Jinno for this limitation. Pet. 27–30. Figure 1 of Jinno is reproduced
below.

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Figure 1 depicts “a cross-sectional view of the solar cell.” Ex. 1005 ¶ 41.
The detailed description of Figure 1 states, “[i]n the solar cell 10 shown in
FIG. 1, the primary light receiving surface is the lower surface” and “FIG. 1
shows the large-area solar cell before division with the dividing groove 8
formed from the other primary surface.” Id. ¶¶ 20, 22. Figure 1 has a label
“T” for the overall thickness of solar cell 10 (id. ¶ 22) and the detailed
description provides the following for the various layers:16 “i-type
amorphous silicon layer 2 (thickness: about 5 nm to about 20 nm),” “p-type
amorphous silicon layer 3 (thickness: about 5 nm to about 20 nm),”
“transparent conductive film 4 (thickness: about 30 nm to about 150 nm),”
“i-type amorphous silicon layer 5 (thickness: about 5 nm to about 20 nm),”
“n-type amorphous silicon layer 6 (thickness: about 5 nm to about 20 nm),”
and “transparent conductive film 7 (thickness: about 30 nm to about 150
nm)” (id. ¶¶ 20, 21). Figure 5 (x-axis) of Jinno provides a graphic depiction
of solar cell thickness. Id. ¶ 30 (“The horizontal axis denotes the thickness
of the solar cell.”). The description of Figure 5 states, “As shown in FIG. 5,
the solar cells had three different average cell thicknesses: 115 µm, 155 µm
and 200 µm.” Id.
With regard to “the backside having a metal material,” Petitioner cites
to Figures 7–10 and the related description in Jinno. Pet. 28–30. Jinno
states, “[i]n FIG. 7 (a) to FIG. 10 (a), a collector electrode 21 is formed on
the solar cell 20.” Ex. 1005 ¶ 39. Figure 10 is reproduced below.

16 The thickness of middle layer 1 is not given in Jinno. It is described as
“n-type single crystal silicon substrate 1.” Ex. 1005 ¶ 20.
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Figure 10 (a) depicts “the solar cell before cleaving and (b) shows the solar
cell after cleaving.” Id. ¶ 38. The Petition states, “[a]s noted above, Figure
1 and paragraphs [0020] and [0022] establish that the scribed side—also
shown as the top in Figure 1—is the back side of the cell. Therefore, the
collector electrodes depicted in Figure 10 are located on the back side.”
Pet. 28 (citing Ex. 1003 ¶ 96).
With regard to collector electrode 21 of Jinno being formed of metal,
Petitioner contends that “[a] Skilled Artisan would understand that the
collector electrodes disclosed in Jinno[ ] are made of metal” and “[t]o the
extent one might argue otherwise, it would have been obvious to make the
collector electrodes in Jinno[ ] out of metal.” Pet. 29–30 (citing Ex. 1003
(Shea Decl.) ¶¶ 93–95). Petitioner cites Dr. Shea to establish that “Jinno[ ]
describes a type of solar cell called heterojunction intrinsic thin film, or
HIT.” Id. at 29 (citing Ex. 1003 (Shea Decl.) ¶ 93). And, Petitioner cites
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two additional references, Ex. 1008 (Jinno ’604)17 and Ex. 1010 (Dao),18 to
establish that these HIT-type solar cells would have been understood to have
metallic-collecting electrodes. Id. at 29–30. Dr. Shea’s Declaration states
that, “[m]etal is the standard choice for collector electrodes” and “the metal
materials used for contacts are well-known and capable of performing
reliably over time.” Ex. 1003 ¶ 95. At least at this stage, we determine that
the contention that Jinno’s collector electrodes would be metal to be well-
supported.
Petitioner establishes a reasonable likelihood of showing Jinno
teaches this limitation.
placing the front side of the solar cell on a platen such that the
backside is facing a laser source;
Petitioner relies on both Jinno and Suutarinen for this limitation.
Pet. 30–36. Jinno states that, in Figure 1 (reproduced above), “the
primary light receiving surface is the lower surface.” Ex. 1005 ¶ 20.
Jinno also states that “the dividing groove 8 [is] formed from the other
primary surface.” Id. ¶ 22. And, Jinno states, “the dividing groove [is]
formed by laser processing.” Id. ¶ 27. Petitioner contends, “[t]herefore,
Jinno[ ] discloses ‘placing the front side of the solar cell . . . such that
the backside is facing a laser source.’” Pet. 32 (citing Ex. 1003 (Shea
Decl.) ¶ 100).
The Petition states, “[a] Skilled Artisan would have understood

17 Japanese Unexamined Patent Application Publication – JP 2008-235604A
to Jinno et al. (Certified Translation) (“Jinno ’604).
18 Dao, et al., High-Efficiency Heterojunction with Intrinsic Thin-Layer
Solar Cells: A Review, CURRENT PHOTOVOLTAIC, 1(2) 73-81 (2013).
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a ‘platen’ to mean ‘a flat plate’ or flat table.” Id. (citing Ex. 1001, 9:28
(“A [solar] cell 100 is located on a laser table 3810 at 53702.”), 10:17–
20; Fig. 37; Ex. 1003 (Shea Decl.) ¶ 102); Ex. 1013, 1525). Petitioner
relies on Figure 719 and the related description in Suutarinen as
“disclos[ing] a ‘platen’ on which the semiconductor wafer is placed.”
Id. at 32. Figure 7 of Suutarinen is reproduced below.

Figure 7 depicts “a laser cutting system for cutting a wafer.” Ex. 1006 ¶ 22.
The Petition states, “Suutarinen explains that a motion system can ‘provide
movement of vacuum chamber 720 and wafer 710 in both the X and Y
directions under laser system 740.’ In Figure [7], the motion system (780) is

19 The Petition says Figure 1. See Pet. 32–33. However, Figure 7 is
reproduced in the Petition and the descriptions of Figures 1 and 7 are cited.
Id. (citing Ex. 1006 ¶¶ 29, 44, 45). Figures 1 and 7 are similar, but Figure 7
is more detailed.
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shown to include a flat plate or platform.” Pet. 32 (citing Ex. 1003
¶¶ 103–106; quoting Ex. 1006 ¶ 44). And, Petitioner contends, “[a] Skilled
Artisan would further understand the motion system illustrated in Suutarinen
to include a ‘platen’ for supporting the wafer, as the wafer must rest on
something for support, the figure shows a flat surface beneath the wafer, and
a flat surface would provide uniform support to the rather fragile wafer.” Id.
at 33–34 (citing Ex. 1003 ¶ 106: Ex. 1006 ¶ 44).
Petitioner establishes a reasonable likelihood of showing the cited art
teaches this limitation.
initiating a laser source to output a laser beam;
Petitioner relies on both Jinno and Suutarinen for this limitation. Pet.
36. Jinno provides, “laser irradiation . . . [was] used for laser processing.”
Id. (citing Ex. 1005 ¶¶ 28–29). As noted above, Figure 1 of Suutarinen
shows laser cutting system 100 (Ex. 1006 ¶ 25) and Suutarinen states,
“[l]aser cutting system 100 . . . comprises a laser system 140 adapted to
direct a laser beam onto material 110” (id. ¶ 28). Petitioner establishes a
reasonable likelihood of showing the cited art teaches this limitation.
subjecting a portion of the backside to the laser beam to cause
an ablation to form a scribe region having a depth, width, and
a length,
Petitioner relies on Jinno and Suutarinen as teaching this limitation.
Pet. 39–41. Suutarinen states, “[t]hose skilled in the art will recognize that a
variety of material may be cut, scribed, scored, grooved, trenched, deplaned
or singulated using laser cutting system 100.” Ex. 1006 ¶ 30 (emphasis
added).
The Petition states, “Jinno[ ] teaches forming a ‘dividing groove’
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(‘scribe region’) by projecting the ‘laser beam’ on to a back face of a solar
cell.” Pet. 39 (citing Ex. 1005 ¶ 22, Fig. 1). Jinno states, “the depth of the
dividing groove is preferably from 35 to 65% of the thickness of the solar
cell. The width of the dividing groove is preferably from 10 to 50 µm.” Ex.
1005 ¶ 13. As shown above in Figure 10 of Jinno, “the dividing groove
extends the entire length of the solar panel.” See Pet. 40–41.
Petitioner establishes a reasonable likelihood of showing the cited art
teaches this limitation.
the depth being from 40% to 60% of the thickness of the solar
cell, and
Petitioner relies on Jinno as teaching this limitation. Pet. 41–45. As
noted with regard to the immediately preceding limitation, Jinno states, “the
depth of the dividing groove is preferably from 35 to 65% of the thickness of
the solar cell.” Ex. 2005 ¶ 13. The preferred range taught by Jinno is
broader than the range recited in claim 1 (40% to 60%) and, thus, Jinno
teaches the full scope of the recited range. Petitioner establishes a
reasonable likelihood of showing Jinno teaches this limitation.
the length being equivalent to a length of the solar cell;
The Petition states, “Jinno[ ] shows in Fig. 10(a) (left) and FIG. 10(b)
(right) [reproduced above] that the length of the scribe region is equivalent
to the length of the solar cell.” Pet. 45 (citing Ex. 1005 ¶¶ 38, 41).
Petitioner establishes a reasonable likelihood of showing Jinno teaches this
limitation.
removing a vaporized material from a vicinity of the ablation;
and
Petitioner relies on Suutarinen for this limitation. Pet. 45–46.
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Suutarinen states:
FIG. 4 illustrates a plasma cloud 402 generated when a
pulse of laser beam 142 hits material 110. Some materials 110
cut by laser system 140 may generate a short plasma cloud 402
near the surface of material 110 being cut when a pulse of the
laser beam 142 hits material 110. The cutting of material 110
may generate gaseous and particle debris near the surface of
material 110 being cut.

Ex. 1006 ¶ 36. Suutarinen also states, “[g]as supply channel 770 provides a
laminar gas flow in vacuum chamber 720 to assist the flow of plasma cloud
760 into vacuum system 730.” Id. ¶ 46. Petitioner establishes a reasonable
likelihood of showing Suutarinen teaches this limitation.
capturing the vaporized material using a vacuum.
Petitioner relies on Suutarinen as teaching this limitation. Pet. 47–48.
The Petition states, “[a]s explained above, Suutarinen teaches that ‘[w]hen
laser pulses hit the material, there is a short plasma cloud generated’ along
with ‘gaseous and particulate debris’—thus ‘vaporized material’ is
generated.” Id. at 47 (citing Ex. 1006 ¶¶ 8, 35, 36, 38, 41). As set forth in
the Petition (id. at 47–48), Suutarinen also teaches vacuum chamber 720
connected to vacuum system 730. See Ex. 1006 ¶¶ 40, 41, Fig. 7.
Suutarinen states, “[t]he vacuum system 730 may be further adapted to
remove process particles or gaseous debris from vacuum chamber 720.” Id.
¶ 41. Petitioner establishes a reasonable likelihood of showing Suutarinen
teaches this limitation.

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Motivation to Combine the Relevant Teachings of Jinno and
Suutarinen
Petitioner provides detailed and well-supported reasoning for
combining the relevant teachings of Jinno and Suutarinen. See Pet. 19–26.
The Petition states, “[a]s of the effective filing date of the 707 Patent, a
Skilled Artisan would have found it obvious to employ the laser ablation
scribing system of Suutarinen to implement the solar cell backside scribing
techniques of Jinno[ ].” Id. at 19. With specific regard to combining the
teachings of these references, the Petition provides:
[T]he two systems disclose analogous functionality, such
as ablation or laser scribing more generally, a Skilled Artisan
would understand combining their techniques to be an efficient
and common sense way to implement the combined system in
order to obtain the benefits of both, and therefore would have
been motivated to make the combination. EX1003,¶80.
Further, Jinno[ ], Suutarinen, and the 707 Patent are
analogous art because each is in the same field of endeavor—
i.e., laser scribing and singulation of semiconductor wafers.
See EX1005,Abstract,¶[0006]; EX1006,¶[0002];
EX1001,Abstract. Also, Jinno[ ] and Suutarinen are reasonably
pertinent to the particular problem the inventor of the 707
Patent was trying to solve—achieving singulation without the
drawbacks of mechanical sawing. See EX1001,2:19-20
(“Conventionally, solar cells are mechanically cut with a saw.
However, this technique has numerous disadvantages.”);
EX1005,[0005]; EX1006,¶[0005]; EX1003,¶81.
A Skilled Artisan would have further understood that the
combination of Jinno[ ] and Suutarinen as analyzed here is
merely an arrangement of old elements (backside laser scribing
of solar cells to a depth of half the solar cell thickness (Jinno[ ])
and blowing gas and vacuum exhaust during laser ablation
(Suutarinen)), with each performing the same function it had
been known to perform (singulation of semiconductor based
solar cells (Jinno[ ]), enhancing scribing via debris removal
(Suutarinen)), and yielding no more than what one would
expect from such an arrangement (laser ablation and singulation
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of solar cells with removal of gaseous material generated from
the laser processing). The combination could therefore have
been made with a reasonable expectation of success and
without undue experimentation. EX1003,¶82.

Id. at 21–23. We determine that Petitioner has provided a showing sufficient
to support institution as to why a skilled artisan would have been motivated
at the time of the invention to look to the laser ablation scribing system of
Suutarinen to implement the solar cell backside scribing techniques of Jinno,
with a reasonable expectation of success in meeting the limitations of the
claimed invention.
Summary as to Claim 1
Petitioner has shown a reasonable likelihood of showing that claim 1
of the ’707 patent would have been obvious in view of the combined
teachings of Jinno and Suutarinen.
2. Claims 2, 6, 8–10, and 12–20
Petitioner also contends that dependent claims 2, 6, 8–10, and 12–20
would have been obvious in view of a combination of the asserted
references. See Pet. 48–75. As noted previously, Patent Owner does not
address the merits of any portion of the Petitioner’s obviousness showing.
See generally Prelim. Resp. Thus, at this stage, Petitioner’s obviousness
showing as to claims 2, 6, 8–10, and 12–20 is undisputed.
We have determined that there is a reasonable likelihood that the
Petitioner will prevail with respect to at least one of the claims challenged in
the Petition pursuant to 35 U.S.C. § 314 and that inter partes review should
be instituted. Accordingly, we institute as to all the challenged claims and
all the challenges raised in the Petition. SAS Institute Inc. v. Iancu, 138 S.Ct.
1348, 1358 (2018); 37 C.F.R. §42.108 (a) (“When instituting inter
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partes review, the Board will authorize the review to proceed on all of the
challenged claims and on all grounds of unpatentability asserted for each
claim.”).
III. CONCLUSION
We determine that Petitioner has demonstrated a reasonable likelihood
of showing at least one of the claims challenged in the Petition would have
been obvious.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that an inter partes review is instituted on all challenged
claims under all challenged grounds; and
FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
partes review of the ʼ707 patent is hereby instituted commencing on the
entry date of this Decision, and pursuant to 35 U.S.C. § 314(c) and 37
C.F.R. § 42.4, notice is hereby given of the institution of a trial.

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For PETITIONER:

Joseph Micallef
Michael Franzinger
STEPTOE & JOHNSON LLP
jmicallef@sidley.com
mfranzinger@sidley.com

For PATENT OWNER:

John Caracappa
Katherine Cappaert
SIDLEY AUSTIN LLP
jcaracap@steptoe.com
kcappaert@steptoe.com