Takeaway: The Board may request the parties to provide claim interpretations for a claim term for the first time at the oral hearing.

In its Final Written Decision, the Board held that Petitioner had failed to demonstrate by a preponderance of the evidence that claims 1, 2, 4, 11-14, and 16 of the ’475 patent are unpatentable. Thus, none of the challenged claims were found unpatentable. The ’475 patent relates to a method for processing a III-Nitride epitaxial layer system on a substrate. The III-Nitrides being used for producing light-emitting devices including light-emitting diodes (LEDs) and lasers.

The instituted grounds for this proceeding were: (1) anticipation of claims 1, 2, 4, 11-14, and 16 under 35 U.S.C. § 102(a) by Akasaki; and (2) anticipation of claims 1, 2, 4, 11-14, and 16 under 35 U.S.C. § 102(b) by Sonobe.

The Board began with claim construction of the term “substrate,” which was present in all three independent claims. The term appears in the preamble of claim 1, and does not provide antecedent basis for any ensuing claim terms and is not a limitation, but appears in the claimed steps of the other two independent claims 11 and 13. The Board agreed with Patent Owner argument in its Preliminary Response that “substrate” means the substrate upon which epitaxial layers are supported. Based on its uncontested interpretation of “substrate” and “epitaxial layer” provided in the Decision on Institution, the Board construed “epitaxial layer system” as “at least one semiconductor layer having a crystalline relationship to the substrate on which it is grown.” Neither party contested the Board’s interpretation of “non-c-plane” in the Decision on Institution, thus the Board maintained that interpretation as well. In contrast, Patent Owner disputed the Board’s interpretation of “crystallographic etching” by arguing that the term should mean “etching (removal of material) that proceeds in directions dictated by the crystallographic planes of the material being etched at a rate which depends on the particular plane (defect-revealing etching is not crystallographic etching,” which included additional clarifications to the Board’s construction from the Decision to Institute. However, the Board did not change its interpretation, because the additions by Patent Owner were extraneous limitations unnecessary for the purpose of making sense of the claim. Finally, the Board did not construe the term “crystallographic plane surfaces” in the Decision to Institute, but requested a construction at final hearing. The Board agreed with Patent Owner that the language of claim 1 requires that “crystallographic plane surfaces” result from crystallographic etching, and thus construed “crystallographic plane surfaces” to mean “a smooth plane surface resulting from crystallographic etching.” Petitioner had alleged that the term means what was disclosed in the prior art references.

The Board then turned to the two anticipation grounds of unpatentability. It was agreed by both parties that the critical issue for both grounds was whether the wet etching of Akasaki and Sonobe discloses, expressly or inherently, the broadest reasonable interpretation of crystallographic etching. Both parties relied on expert testimony to supports their positions on this critical issue. Ultimately, the Board was persuaded that the wet etching of Akasaki and Sonobe did not, expressly or inherently, meet the interpretation of the term “crystallographic etching” determined by the Board.

OSRAM GmbH v. E. Fred Schubert, IPR2013-00459
Paper 28: Final Written Decision
Dated: January 21, 2015
Patent: 6,294,475 B1
Before: Jennifer S. Bisk, Gregg I. Anderson, and Matthew R. Clements
Written by: Anderson
Related Proceedings: E. Fred Schubert v. OSRAM GmbH., Case No. 12-cv-923-GMS (D. Del.) and E. Fred Schubert v. Koninklijke Philips Electronics N.V., Case No. 12-cv-924-GMS (D. Del.)