Nitride Semiconductors Co., Ltd. v. Rayvio Corporation

Filing 97

CLAIM CONSTRUCTION ORDER. Signed by Judge Edward J. Davila on 5/11/2018. (ejdlc2S, COURT STAFF) (Filed on 5/11/2018)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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NITRIDE SEMICONDUCTORS CO., LTD.,

Case No. 5:17-cv-02952-EJD

Plaintiff,
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CLAIM CONSTRUCTION ORDER

v.

Re: Dkt. No. 61

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RAYVIO CORPORATION,

United States District Court
Northern District of California

Defendant.
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Plaintiff Nitride Semiconductors Co., Ltd. (“Nitride”) brings this suit against Defendant

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RayVio Corporation (“RayVio”) for infringement of U.S. Patent No. 6,861,270 (the “’270

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patent”). Nitride currently asserts claims 1, 2, 5, 8, 9, and 12. Across these claims, the parties

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dispute the proper construction of eight terms. Upon consideration of the claims, specification,

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prosecution history, and other relevant evidence, and after hearing the arguments of the parties, the

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Court construes the contested language of the patents-in-suit as set forth below.

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I.

BACKGROUND
The ’270 patent generally relates to semiconductors used in light-emitting diodes (“LED”).

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In its simplest form, an LED consists of an “n-type” semiconductor (which has an excess of

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electrons) joined to a “p-type” semiconductor (which has vacancies or “holes” which could be

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filled by electrons). As electrons move from the n-type semiconductor to the p-type

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semiconductor, they recombine with “holes” and release energy in the form of light.

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A semiconductor generally consists of a crystalline structure or “lattice” of atoms, each of

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which contains a nucleus surrounded by electrons. These electrons exist at different energy levels

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or “energy bands.” Two energy bands in particular contribute to the conductivity of the

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semiconductor: a “valence band” of lower energy electrons that stay fixed to a particular atom;

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and a “conduction band” of higher energy electrons which move about the semiconductor. The

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difference between the energy level of the valence band and the conduction band is known as the

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“band gap.” The lower the “band gap,” the easier it is for electrons to move and the more

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conductive the semiconductor is. The size of the “band gap” varies based on which elements (e.g.,

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Ga, Al, Si) are used to form the semiconductor.

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The ’270 patent relates to LEDs that are made using gallium nitride (“GaN”) based

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semiconductors. ’270 patent, col. 1 ll. 15-18. These LEDs are created using a sapphire substrate,
upon which layers of n-type and p-type GaN semiconductors are added. Id., col. 1 ll. 18-20.

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However, because the spacing of the atoms in the sapphire substrate differs from the spacing of

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the atoms in the GaN semiconductor, a “lattice mismatch” occurs between the two layers. See id.

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This causes “dislocations” within the GaN semiconductor layer. Id., col. 1 ll. 19-20. When an

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electron recombines with a “hole” at a “dislocation,” it does not produce a visible photon, which

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reduces the efficiency of the LED. Id., col. 1 ll. 22-25.

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The ’270 patent addresses this problem by providing a “method for manufacturing a

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gallium nitride [GaN] compound semiconductor” which provides “improved light emitting

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efficiency.” Id., col. 1 ll. 9-12. The ’270 patent improves efficiency by introducing “spatial

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fluctuation in the band gap” at the point where the electrons and holes recombine. Id., col. 1 ll.

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55-58. In the physical LED, the “spatial fluctuation” is created by varying the materials which are

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used at those locations (since, as discussed above, the size of the “band gap” varies based for

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different atomic elements). Id., col. 1 ll. 27-38. According to the patent, if this variation can be

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tuned such that “the density of the light emitting points [where the electrons and holes recombine]

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can be set to exceed the density of the dislocations . . . degradation in the light emitting efficiency

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can be inhibited.” Id., col. 1 ll. 31-39.

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The ’270 patent discloses and claims three different methods of introducing “spatial

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fluctuation in the band gap.” The asserted claims cover two of these three:

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The first method involves forming: (1) a first GaN based semiconductor on a substrate, (2)

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composition material of the first GaN based semiconductor on areas of the surface of the first GaN

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based semiconductor, and (3) a second GaN based semiconductor on the first GaN based

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semiconductor onto which the composition material is formed. Figures 1A-1B illustrate this

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process:

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’270 patent, Figs. 1A, 1B.
Asserted claims 1, 2, 8, and 9 relate to this first method. For example, claim 1 recites:
1. A method for manufacturing a gallium nitride based
semiconductor, comprising the steps of:
(a) forming a first gallium nitride based semiconductor on a
substrate, the first gallium nitride based semiconductor having a
first surface;
(b) forming on less than a total area of the first surface a
composition material of the first gallium nitride based
semiconductor; and

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(c) forming a second gallium nitride based semiconductor on the
first gallium nitride based semiconductor on which the
composition material is formed; wherein a spatial fluctuation is
created in the band gap by variation in the compositional ratio in
the second gallium nitride based semiconductor created by the
composition material, and the second gallium nitride based
semiconductor is a light emitting layer.

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Id., col. 5 ll. 29-44.
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The other method (disclosed as the third embodiment in the specification) involves
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forming regions where “lattice mismatch is present” which are used to produce “a spatial
fluctuation” in the band gap. ’270 patent, col. 2 ll. 33-47. Figure 3 illustrates this process:

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Id., Fig. 3.
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Asserted claims 5 and 12 relate to this other method. For example, claim 5 recites:
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5. A method for manufacturing a gallium nitride based
semiconductor comprising the steps of:
(a) forming, on a substrate, a base layer having a lattice mismatch
layer formed on less than a total area of a surface of the base
layer; and
(b) forming the gallium nitride based semiconductor on the base
layer; wherein
a spatial fluctuation is created in the band gap of the gallium nitride
based semiconductor by the lattice mismatch, and the gallium
nitride based semiconductor is a light emitting layer.
Id., col. 6 ll. 1-12.

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II.

LEGAL STANDARDS
A.

Claim Construction
Claim construction is a question of law to be decided by the court. Markman v. Westview

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Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff’d 517 U.S. 370, 116 S. Ct.
1384, 134 L.Ed.2d 577 (1996). “[T]he interpretation to be given a term can only be determined

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and confirmed with a full understanding of what the inventors actually invented and intended to
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envelop with the claim.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (quoting
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Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)).
Consequently, courts construe claims in the manner that “most naturally aligns with the patent's

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description of the invention.” Id.
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In construing disputed terms, the court looks first to the claims themselves, for “[i]t is a
‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to which the
patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir.

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2005) (en banc) (internal quotation marks omitted). Generally, the words of a claim should be
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given their “ordinary and customary meaning,” which is “the meaning that the term[s] would have

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to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1312-13. In
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some instances, the ordinary meaning to a person of skill in the art is clear, and claim construction
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may involve “little more than the application of the widely accepted meaning of commonly

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understood words.” Id. at 1314.
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In many cases, however, the meaning of a term to a person skilled in the art will not be
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readily apparent, and the court must look to other sources to determine the term’s meaning. Id.

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Under these circumstances, the court should consider the context in which the term is used in an
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asserted claim or in related claims, bearing in mind that “the person of ordinary skill in the art is

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deemed to read the claim term not only in the context of the particular claim in which the disputed
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term appears, but in the context of the entire patent, including the specification.” Id. at 1313.
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Indeed, the specification is “‘always highly relevant’ “ and “‘[u]sually dispositive; it is the single
best guide to the meaning of a disputed term.’” Id. at 1315 (quoting Vitronics Corp. v.

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Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).

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The court may also consider the patent’s prosecution history, which consists of the

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complete record of proceedings before the United States Patent and Trademark Office and

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includes the cited prior art references. The court may consider prosecution history where it is in

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evidence, for the prosecution history “can often inform the meaning of the claim language by

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demonstrating how the inventor understood the invention and whether the inventor limited the

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invention in the course of prosecution, making the claim scope narrower than it otherwise would

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be.” Id. at 1317 (internal citations omitted).
Finally, the court is also authorized to consider extrinsic evidence in construing claims,

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such as “expert and inventor testimony, dictionaries, and learned treatises.” Markman, 52 F.3d at

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980 (internal citations omitted). Although the court may consider evidence extrinsic to the patent

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and prosecution history, such evidence is considered “less significant than the intrinsic record” and

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“less reliable than the patent and its prosecution history in determining how to read claim terms.”

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Id. at 1317-18 (internal quotation marks and citation omitted). Thus, while extrinsic evidence may

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be useful in claim construction, ultimately “it is unlikely to result in a reliable interpretation of

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patent claim scope unless considered in the context of the intrinsic evidence.” Id. at 1319.

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B.

Indefiniteness
Section 112 requires that “[t]he specification shall conclude with one or more claims

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particularly pointing out and distinctly claiming the subject matter which the inventor or a joint

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inventor regards as the invention.” 35 U.S.C. § 112, ¶ 2.1 In Nautilus, Inc. v. Biosig Instruments,

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Inc., the Supreme Court established the operative test: “a patent is invalid for indefiniteness if its

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claims, read in light of the specification delineating the patent, and the prosecution history, fail to

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inform, with reasonable certainty, those skilled in the art about the scope of the invention.” –––

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U.S. ––––, 134 S. Ct. 2120, 2128-29, 189 L. Ed. 2d 37 (2014). The Federal Circuit has cautioned

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The America Invents Act (“AIA”), Pub. L. No. 112–29, effective September 16, 2012, changed
the designation of 35 U.S.C. 112, ¶ 2 to 35 U.S.C. § 112(b). Because the asserted patent was filed
before the effective date of the AIA, the Court refers to the pre-AIA versions of this provision.
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that “the dispositive question in an indefiniteness inquiry is whether the ‘claims,’ not particular

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claim terms” fail this test. Cox Commc’ns, Inc. v. Sprint Commc’n Co. LP, 838 F.3d 1224, 1231

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(Fed. Cir. 2016). For that reason, a claim term that “does not discernably alter the scope of the

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claims” may fail to serve as a source of indefiniteness. Id.

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III.

CONSTRUCTION OF DISPUTED TERMS

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A.

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Nitride’s
Proposed
Construction
The claimed
steps are not
limited to a
particular
order.

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The Order of Steps in Method Claims 1 and 5
RayVio’s Proposed Construction

Court’s Construction

Method claim 1 requires performance
of the steps in the sequence recited in
the claim, namely step (a) is performed,
and then step (b) is performed, and then
step (c) is performed.

Method claim 1 requires performance
of the steps in the sequence recited in
the claim, namely step (a) is performed,
and then step (b) is performed, and then
step (c) is performed.

Method claim 5 requires performance
of the steps in the sequence recited in
the claim, namely step (a) is performed,
and then step (b) is performed.

Method claim 5 requires performance
of the steps in the sequence recited in
the claim, namely step (a) is performed,
and then step (b) is performed.

The parties dispute whether the steps of the asserted method claims must be performed in
the order recited in the claim. RayVio argues that the steps must be performed in the claimed
order, while Nitride disagrees.
“[A]s a general rule [a method] claim is not limited to performance of the steps in the order
recited, unless the claim explicitly or implicitly requires a specific order.” Baldwin Graphic Sys.,
Inc. v. Siebert, Inc., 512 F.3d 1338, 1345 (Fed. Cir. 2008). “However, a claim ‘requires an
ordering of steps when the claim language, as a matter of logic or grammar, requires that the steps
be performed in the order written, or the specification directly or implicitly requires’ an order of
steps.” Mformation Techs., Inc. v. Research in Motion Ltd., 764 F.3d 1392, 1398 (Fed. Cir. 2014)
(quoting TALtech Ltd. v. Esquel Apparel, Inc., 279 Fed. Appx. 974, 978 (Fed. Cir. 2008)).
Here, the Court agrees with RayVio that the claimed steps must be performed in the recited
order. Both claims 1 and 5 recite “a method of manufacturing a gallium nitride based
semiconductor” which involves the incremental process of adding one specific layer on top of
another. See ’270 patent, col. 5 ll. 29-44, col. 6 ll. 1-11. Varying the order in which the layers are
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added yields a physically different device. “As a matter of logic,” order matters. Mformation, 764

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F.3d at 1398.
As to which order should be required in this case, the plain language of the claims makes

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clear that the steps should be performed in the order they were written. For example, in claim 1,

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step (a), which forms the “first gallium nitride based semiconductor having a first surface,” must

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necessarily occur before step (b), which requires “forming on less than a total area of the first

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surface a composition material.” ’270 patent, col. 5 ll. 29-44 (emphasis added). Similarly, step

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(c), which requires “forming a second gallium nitride based semiconductor on the first gallium

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nitride based semiconductor on which the composition material is formed” must be performed

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after step (a), which creates the “first gallium nitride based semiconductor,” and step (b), which

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forms the “composition material.” Id. (emphasis added). The specification confirms that this is

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the correct order, as it also describes performing steps (a), (b), and (c) in that order. See id., col. 3

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ll. 34-44.
The same can be said of claim 5. Specifically, step (a), which requires “forming, on a

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substrate, a base layer,” must necessarily occur before step (b), which requires “forming the

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gallium nitride based semiconductor on the base layer.” Id., col. 6 ll. 1-12 (emphasis added).

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Written the other way, there would be no “base layer” upon which the “gallium nitride based

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semiconductor” could be formed. The specification confirms this is the correct order, as it also

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describes performing step (a) before step (b). See id., col. 4 ll. 54-59.
Accordingly, as a matter of logic, the steps of the asserted method claims must be

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performed in the order recited in the claim. The Court adopts RayVio’s position.
B.

“forming on” / “formed on” (claims 1, 5, 8, 12)

Nitride’s Proposed
Construction
“form(ing/ed) directly or
indirectly above”

RayVio’s Proposed
Construction
“form(ing/ed) in contact with
and above”

Court’s Construction
“form(ing/ed) in contact with
and above”

The parties dispute whether “forming on” permits forming structures “directly or indirectly
above” (i.e., allows for intervening layers), as Nitride proposes, or is limited to forming structures
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“in contact with and above” (i.e., excludes intervening layers), as RayVio proposes. The disputed

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phrases appear in each of the independent claims. For example, claim 1 recites:

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1. A method for manufacturing a gallium nitride based
semiconductor, comprising the steps of:
(a) forming a first gallium nitride based semiconductor on a
substrate, the first gallium nitride based semiconductor having a
first surface;
(b) forming on less than a total area of the first surface a
composition material of the first gallium nitride based
semiconductor; and
(c) forming a second gallium nitride based semiconductor on the
first gallium nitride based semiconductor on which the
composition material is formed; wherein a spatial fluctuation is
created in the band gap by variation in the compositional ratio in
the second gallium nitride based semiconductor created by the
composition material, and the second gallium nitride based
semiconductor is a light emitting layer.
’270 patent, col. 5 ll. 29-44 (emphasis added). As another example, claim 5 recites:

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5. A method for manufacturing a gallium nitride based
semiconductor comprising the steps of:
(a) forming, on a substrate, a base layer having a lattice mismatch
layer formed on less than a total area of a surface of the base
layer; and
(b) forming the gallium nitride based semiconductor on the base
layer; wherein
a spatial fluctuation is created in the band gap of the gallium nitride
based semiconductor by the lattice mismatch, and the gallium
nitride based semiconductor is a light emitting layer.
Id., col. 6 ll. 1-12.

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“Words of a claim are generally given their ordinary and customary meaning.” Phillips,
415 F.3d at 1312 (internal quotation marks and citation omitted). This is “the meaning that the

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term would have to a person of ordinary skill in the art in question at the time of the invention,”
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who, importantly, is “deemed to read the claim term not only in the context of the particular claim

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in which the disputed term appears, but in the context of the entire patent, including the
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specification.” Id. at 1312, 1313. Ultimately, the “construction that stays true to the claim

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language and most naturally aligns with the patent’s description of the invention will be, in the

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end, the correct construction.” Trustees of Columbia Univ. in City of N.Y. v. Symantec Corp., 811

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F.3d 1359, 1366 (Fed. Cir. 2016) (quoting Renishaw PLC v. Marposs Societa’ per Azioni, 158

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F.3d 1243, 1250 (Fed. Cir. 1998)).

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Applied here, these principles support RayVio’s position, not Nitride’s. The claims

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themselves are silent as to whether “form[ing/ed] on” permits intervening layers. However, read

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in light of the specification, it is clear that it does not. Nothing in the specification mentions

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intervening layers or suggests that the inventors contemplated that intervening layers could be

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introduced. See ’270 patent, col. 3 l. 28-col. 4 l. 7. Instead, the specification painstakingly
describes the introduction of each of the claimed layers in detail, and in ways that suggest that

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each layer should be added directly on top of each other. For example, the specification discloses

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that “an n type AlyGa1-yN layer is grown on a substrate.” Id., col. 3 ll. 34-35. It is hard to see how

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one layer could be grown on another, if some unnanmed intervening layer could exist between the

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two. The same can be said of other claimed layers, which are described in a similar way in the

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specification. Id., col. 3 ll. 41-42 (“undoped AlxGa1-xN layer 16 is grown”); id., col. 3 ll. 54-56

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(“After the undoped AlxGa1-xN layer 16 in which the spatial fluctuation is produced in the bad gap

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is grown, a p type AlyGa1-yN layer 18 is grown at a temperature of 1050° C. to produce a double

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hetero structure.”). The figures also support this conclusion, as they only show the claimed layers.

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See, e.g., id., Figs. 1A, 1B, 3. Nothing about the figures indicate that intervening layers could be

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added within the depicted layers.

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In addition to these specific disclosures, the overall character of the invention also supports

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RayVio’s position. See Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1324 (Fed. Cir. 2008)

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(construing claims so that they were “read in light of the specification’s consistent emphasis on [a]

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fundamental feature of the invention”); Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1313-14

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(Fed. Cir. 2007) (adopting construction which “most naturally aligns with the patent’s description

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of the invention”). As discussed in the background section above, the core of the invention is to

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increase light emitting efficiency by introducing “spatial fluctuation in the band gap.” This

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“spatial fluctuation” is created by varying the composition of the materials in the LED—e.g., by,

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in the first embodiment, adding droplets of Ga to be mixed in with the undoped AlxGa1-xN layer.

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Id., col. 3 ll. 38-55. Put simply, structure is important—it is the inventive crux of the claimed

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solution. The addition of unnamed intervening layers could change this structure and, as such, the

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very nature of the solution. As such, it does not make sense that “form[ing/ed] on” should be

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construed to permit such variation.
Nitride’s arguments to the contrary are unpersuasive. First, Nitride points to the patent’s

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disclosure that “AlGaN and AlGaN/GaN quantum well superlattices” “are formed on a sapphire

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substrate.” Opening Br. 7 (quoting ’270 patent, col. 1 ll. 15-21). However, although it is true that

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a superlattice can have multiple layers, this phrase simply refers to “superlattices” collectively and

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states that the collective whole is formed on a substrate. This is consistent with a meaning of

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“formed” which does not permit intervening layers. Moreover, this phrase appears in the

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“Background of the Invention” section and is used to make a general observation about the state of

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the art; nothing about its use there compels that “form[ing/ed] on” as used in the claims carries the

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same meaning. Second, Nitride refers to the examiner’s use of “form on” in discussing a prior art

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reference during prosecution. Opening Br. 7-8. However, this is extrinsic evidence which at most

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could illustrate “how one of skill in the art would understand the term.” 3M Innovative Props. Co.

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v. Tredegar Corp., 725 F.3d 1315, 1332 (Fed. Cir. 2013). As such, it does not justify a deviation

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from the intrinsic evidence, which supports RayVio’s position.
In sum, the Court adopts RayVio’s position and construes “form[ing/ed] on” as

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“form(ing/ed) in contact with and above.”
C.

“a light emitting layer” (claims 1, 5, 8, 12)

Nitride’s Proposed
Construction
“a thickness of material, which
may be made up of sub-layers,
that generates light”

RayVio’s Proposed
Construction
“a thickness of material having
unique electrical properties in
which light is generated”
During prosecution, the
applicant made a disclaimer
limiting “light emitting layer”

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Court’s Construction
“a thickness of material having
a varied compositional ratio,
which may be made up of sublayers, that generates light”
During prosecution, the
applicant made a disclaimer

to having a varying
compositional ratio within the
light emitting layer and
disclaimed compositional
differences between layers,
e.g., a super lattice layer
comprising first and second
layers which are nitride
semiconductors having a
different composition
respectively.

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limiting “light emitting layer”
to having a varying
compositional ratio within the
light emitting layer.

The parties dispute whether “light emitting layer” may be composed of sub-layers, as

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Nitride proposes, or must be a single layer of material, as RayVio proposes. The disputed phrases
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appear in each of the independent claims. For example, claim 1 recites:
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1. A method for manufacturing a gallium nitride based
semiconductor, comprising the steps of:
(a) forming a first gallium nitride based semiconductor on a
substrate, the first gallium nitride based semiconductor having a
first surface;
(b) forming on less than a total area of the first surface a
composition material of the first gallium nitride based
semiconductor; and

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(c) forming a second gallium nitride based semiconductor on the
first gallium nitride based semiconductor on which the
composition material is formed; wherein a spatial fluctuation is
created in the band gap by variation in the compositional ratio in
the second gallium nitride based semiconductor created by the
composition material, and the second gallium nitride based
semiconductor is a light emitting layer.

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’270 patent, col. 5 ll. 29-44 (emphasis added). As another example, claim 5 recites:

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5. A method for manufacturing a gallium nitride based
semiconductor comprising the steps of:

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(a) forming, on a substrate, a base layer having a lattice mismatch
layer formed on less than a total area of a surface of the base
layer; and
(b) forming the gallium nitride based semiconductor on the base
layer; wherein
a spatial fluctuation is created in the band gap of the gallium nitride
based semiconductor by the lattice mismatch, and the gallium
nitride based semiconductor is a light emitting layer.

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Id., col. 6 ll. 1-12.

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The plain language of the claims resolves the parties’ dispute. The final limitations of
claims 5 and 12 recite a “gallium nitride based semiconductor” or “gallium nitride based

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semiconductor layer” which is a “light emitting layer.” Id., col. 6 ll. 1-12, 52-62. Dependent

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claims 7 and 13, then, recite that this “gallium nitride based semiconductor” or “gallium nitride

5

based semiconductor layer” “has a superlattice structure.” Id., col. 6 ll. 15-17, 65-67. Thus, the

6

“gallium nitride based semiconductor” or “gallium nitride based semiconductor layer” of claims 5

7

and 12 must at least be this broad—i.e., it must be one that could, but is not required to, have a

8

superlattice structure. As both parties agree, a superlattice structure, by definition, has multiple

9

layers. Opening Br. 9 (“a superlattice by definition is composed of multiple layers”); Responsive

10

Br. 10 (“A superlattice by definition has multiple layers.”). The specification also states as much.

11
United States District Court
Northern District of California

2

’270 patent, col. 4 ll. 51-53 (“These layers are formed in a similar manner in a repetition of n

12

pitches (n can be set, for example, as 20) to obtain a superlattice structure.”). Thus, the light-

13

emitting layer may have multiple sub-layers.

14

That said, the claim language also makes clear that the light-emitting layer is not required

15

to have sub-layers. For example, claims 1 and 8 recite a “second gallium nitride based

16

semiconductor” which is a “light emitting layer.” Claims 2 and 9 require that this “second gallium

17

nitride based semiconductor” is AlGaN—i.e., a single layer. Thus, a “light emitting layer” could

18

also be a single layer.

19

Turning to prosecution history disclaimer, the Court agrees with RayVio in part. During

20

prosecution, the applicant distinguished one of the asserted pieces of prior art, Nagahama, on the

21

basis that it was “silent as to varying the compositional ratio within a light emitting layer” but

22

rather only disclosed a “different composition is between the layers” in a “super lattice comprising

23

first and second layers which are nitride semiconductors having a different composition

24

respectively.” Radke Decl., Ex. C (Nov. 4, 2003 Response), at 7-10. In other words, the applicant

25

distinguished Nagahama because it did not disclose a varied compositional ratio within the

26

superlattice, but rather simply disclosed a superlattice with uniform layers of alternating

27

composition. Accordingly, RayVio is correct that the applicant “made a disclaimer limiting ‘light

28

Case No.: 5:17-cv-02952-EJD
CLAIM CONSTRUCTION ORDER
13

1

emitting layer’ to having a varying compositional ratio within the light emitting layer.” However,

2

RayVio is not correct that the applicant also “disclaimed compositional differences between

3

layers, e.g., a super lattice layer comprising first and second layers which are nitride

4

semiconductors having a different composition respectively.” The dispositive difference during

5

prosecution was that the applicant varied the compositional ratio of a layer within the “light

6

emitting layer,” whereas Nagahama did not; whether and to what extent other layers (in the “light

7

emitting layer” or outside it) varied in relation to one another did not matter. Thus, the Court finds

8

that there was only prosecution history disclaimer to the extent that the applicant “made a

9

disclaimer limiting ‘light emitting layer’ to having a varying compositional ratio within the light

10

emitting layer.”
In sum, the Court agrees with Nitride that the “light emitting layer” is “a thickness of

United States District Court
Northern District of California

11
12

material, which may be made up of sub-layers, that generates light,” but also agrees with RayVio

13

that “light emitting layer” must be such that it contains a variation within the compositional ratio.

14

Thus, the Court adopts a hybrid of the two and construes “light emitting layer” to mean “a

15

thickness of material having a varied compositional ratio, which may be made up of sub-layers,

16

that generates light.”

17
18
19
20
21
22
23
24
25
26
27
28

D.

“a spatial fluctuation is created in the band gap by variation in the compositional
ratio in the second gallium nitride based semiconductor created by the
composition material” (claim 1)

Nitride’s Proposed
Construction
“continuous widening and
narrowing of the band gap
laterally within the second
gallium nitride based
semiconductor is created by
changes in the ratio of the
elements in the second gallium
nitride based semiconductor
created by the composition
material”

RayVio’s Proposed
Construction
This limitation is indefinite
rendering claim 1 invalid.
Alternative construction if
claim is not indefinite: “a
spatial fluctuation is created in
the band gap by variation in
the ratio of (1) the amount of
composition material to (2) the
amount of gallium nitride
based semiconductor material,
that is created by the
composition material, i.e.,
material consisting of discrete
area(s) of only a single
element”

Case No.: 5:17-cv-02952-EJD
CLAIM CONSTRUCTION ORDER
14

Court’s Construction
“continuous widening and
narrowing of the band gap
laterally within the second
gallium nitride based
semiconductor is created by
changes in the ratio of the
elements in the second gallium
nitride based semiconductor
created by the composition
material”
“Composition material is
construed to mean “material
composed of some, but not all,
of the elements of the first

1

“composition material” means
“material consisting of discrete
area(s) of only a single
element”

2
3
4
5
6
7
8
9
10

United States District Court
Northern District of California

11
12
13
14
15
16
17
18
19
20
21
22
23

“a second gallium nitride
based semiconductor layer
having changes in the ratio of
the elements within it”

During prosecution, the
applicant made a disclaimer
limiting “light emitting layer”
to having a varying
compositional ratio within the
light emitting layer and
disclaimed compositional
differences between layers,
e.g., a super lattice layer
comprising first and second
layers which are nitride
semiconductors having a
different composition
respectively.
This limitation is indefinite
rendering claim 8 invalid.
Alternative construction if
claim is not indefinite: “a
second gallium nitride based
semiconductor layer having a
variation in the ratio of (1) the
amount of composition
material to (2) the amount of
gallium nitride based material”

gallium nitride based
semiconductor.”
During prosecution, the
applicant made a disclaimer
limiting “light emitting layer”
to having a varying
compositional ratio within the
light emitting layer.

“a second gallium nitride
based semiconductor layer
having changes in the ratio of
the elements within it”

During prosecution, the
applicant made a disclaimer
limiting the claims to requiring
a varying compositional ratio
within the light emitting layer
and disclaimed compositional
differences between layers,
e.g., a super lattice layer
comprising first and second
layers which are nitride
semiconductors having a
different composition
respectively.
The parties dispute (1) whether the claim phrase is definite, (2) how it should be construed,

24

and (3) whether there was disclaimer during prosecution. The parties’ dispute as to disclaimer is

25

the same as that discussed in Section III.C; thus, the Court’s conclusions there apply with equal

26

force here. The Court thus turns to the remaining two disputes, addressing them in the same

27

piecemeal fashion used by the parties in their briefing.

28

Case No.: 5:17-cv-02952-EJD
CLAIM CONSTRUCTION ORDER
15

i.

1
2
3
4

“spatial fluctuation . . . in the band gap”

Nitride proposes that “spatial fluctuation . . . in the band gap” should be construed as
“continuous widening and narrowing of the band gap laterally within the second gallium nitride
based semiconductor.” RayVio does not appear to disagree with this proposed construction.
Responsive Br. 11. Accordingly, the Court adopts Nitride’s proposed construction of this phrase.

5
ii.

6

“composition material”

RayVio argues that “composition material” should be limited to “material consisting of

7
discrete area(s) of only a single element.” Responsive Br. 11-15. Nitride disagrees, and proposes
8
no construction for this phrase. Opening Br. 17-19. Thus, the parties dispute turns on two discrete
9
10

questions: (1) whether the “composition material” must be confined to discrete areas; and (2)
whether the “composition material” must consist of a single element. The Court addresses each in

11
United States District Court
Northern District of California

turn.
12

As to discrete areas, the Court disagrees with RayVio that the “composition material” must

13
be limited in its location to separate and distinct sub-parts. The claims require that the
14
15
16
17
18
19

“composition material” is formed “on less than a total area” of the “first surface” of the “first
gallium nitride based semiconductor.” ’270 patent, col. 5 ll. 34-36, col. 6 ll. 24-25. However,
“less than a total area” does not mean discrete. On the contrary, the specification provides some
indication that, at least in some embodiments, the “composition material” is sufficiently integrated
with the “second gallium nitride based semiconductor” such that it is not separate and distinct.
See id., col. 3:44-51 (“Here, in the regions where Ga droplets are present, the solid phase

20
composition of gallium within the undoped AlxGa1-xN layer 16 becomes high, and thus, a spatial
21
22
23

fluctuation is formed in the band gap of the undoped AlxGa1-xN layer 16.”) (emphasis added).
While is true that the specification also refers to the “composition material” as “discrete droplets”
in preferred embodiments, see, e.g., id., col. 1 ll. 51-53 (“forming of a composition material of the

24
first gallium nitride based semiconductor a discrete area on the first gallium nitride based
25
26

semiconductor”); id., col. 2 ll. 10-11 (“discretely formed composition material”), id., col. 3 ll. 3940 (“form . . . discrete gallium droplets 14 having a diameter of approximately 10˜500 nm”), this

27
28

Case No.: 5:17-cv-02952-EJD
CLAIM CONSTRUCTION ORDER
16

1

does not compel a contrary result. These excerpts describe how the “composition material” is first

2

formed on the “first surface” of the “first gallium nitride based semiconductor,” not how the

3

“composition material” exists in the fully formed device. See id. And, in any event, these are

4

merely descriptions of preferred embodiments. See Liebel-Flarsheim v. Medrad, Inc., 358 F.3d

5

898, 913 (Fed. Cir. 2004) (“[I]t is improper to read limitations from a preferred embodiment

6

described in the specification . . . into the claims absent a clear indication in the intrinsic record

7

that the patentee intended the claims to be so limited.”). Accordingly, the Court declines to

8

confine “composition material” to discrete areas.

9

As to single element, the Court disagrees that “composition material” should be so limited.
Only dependent claims 2 and 9 require that “composition material” be limited to single elements

11
United States District Court
Northern District of California

10

(namely, Ga or Al). See ’270 patent, col. 5 ll. 45-48, col. 6 ll. 33-36. Independent claims 1 and 8

12

must be broader in scope, and, as such, could include “composition material” of multiple

13

elements. Further, although the specification only discloses embodiments of “composition

14

material” that are single elements, see, e.g., id., col. 3 ll. 39-40 (“gallium droplets”); id., col. 3 ll.

15

43-44 (“Ga droplets (or micro-blocks of gallium)”), id., col. 4 ll. 1-7 (referring to “droplets” of Ga

16

or Al), these are merely preferred embodiments. See Liebel-Flarsheim, 358 F.3d at 913. Nothing

17

about the specification’s disclosure of the elements that can be “composition material” is so

18

repeated or consistent that limiting “composition material” in this way is warranted. Compare

19

GPNE, 830 F.3d at 1370 (limiting “node” to “pager” where “the specification repeatedly and

20

exclusively uses [‘pager’ or ‘paging system’] to refer to the devices in the patented system”).

21

Accordingly, the Court declines to limit “composition material” to a single element.

22

In sum, the Court finds that the “composition material” should neither be limited to

23

discrete areas nor a single element. Accordingly, the Court adopts Nitride’s position and

24

construes “composition material” to “material composed of some, but not all, of the elements of

25

the first gallium nitride based semiconductor.”

26
27
28

Case No.: 5:17-cv-02952-EJD
CLAIM CONSTRUCTION ORDER
17

1
2
3
4
5

iii.

“variation in the compositional ratio in the second gallium nitride based
semiconductor” (claim 1) / “a second gallium nitride based semiconductor
layer having a varied compositional ratio” (claim 8)
a. Indefiniteness

RayVio contends that the phrases “variation in the compositional ratio” in claim 1 and
“varied compositional ratio” in claim 8 are indefinite because they have no objective boundaries and
the ’270 patent provides no basis as to how the “variation” or “ratio” can be measured. Responsive Br.

6
15-17. Nitride disagrees. Reply Br. 10-12.

7

Section 112 requires that “[t]he specification shall conclude with one or more claims

8
particularly pointing out and distinctly claiming the subject matter which the inventor or a joint
9
10

inventor regards as the invention.” 35 U.S.C. § 112(b). In Nautilus, the Supreme Court
established the operative test: “a patent is invalid for indefiniteness if its claims, read in light of

11
United States District Court
Northern District of California

the specification delineating the patent, and the prosecution history, fail to inform, with reasonable
12
13
14
15
16
17
18
19

certainty, those skilled in the art about the scope of the invention.” 134 S. Ct. at 2128-29. The
Federal Circuit has cautioned that “the dispositive question in an indefiniteness inquiry is whether
the ‘claims,’ not particular claim terms” fail this test. Cox, 838 F.3d at 1231.
When claims involve terms of degree, the Federal Circuit has held that “[a]lthough
absolute or mathematical precision is not required, it is not enough . . . to identify ‘some standard
for measuring the scope of the phrase.’” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1370,
1371 (Fed. Cir. 2014). Instead, “[t]he claims, when read in light of the specification and the
prosecution history, must provide objective boundaries for those of skill in the art.” Id. For

20
example, in Interval Licensing, the Federal Circuit rejected claims as indefinite which required
21
22
23
24
25
26

selectively displaying images “in an unobtrusive manner” because that phrase was “highly
subjective” and “offer[ed] no objective indication of the manner in which content images are to be
displayed to the user.” Id. at 1371. In contrast, in Sonix Tech. Co. v. Publications Int’l, Ltd., the
Federal Circuit found that claims requiring encoded information on an object to be “visually
negligible” were not indefinite because this term “involve[d] what can be seen by the normal
human eye,” which “provide[d] an objective baseline through which to interpret the claims.” 844

27
28

Case No.: 5:17-cv-02952-EJD
CLAIM CONSTRUCTION ORDER
18

1

F.3d 1370, 1378 (Fed. Cir. 2017).

2

In light of this guidance, the Court agrees with Nitride that the disputed phrases do not

3

render the claims indefinite. The claims do not require a particular degree of “variation in the

4

compositional ratio.” Instead, they just require that variation exists. This is a binary question

5

whose answer can be determined objectively: does the compositional ratio of the atoms in the

6

second gallium nitride based semiconductor vary?

7

RayVio’s attempts to cast doubts on definiteness are not persuasive. First, RayVio

8

contends that “neither the claims nor the specification state what two specific quantities are being

9

compared.” Responsive Br. 15-16. This is not true: the specification makes clear that the
comparison should be made between “the region where the composition material is present” and

11
United States District Court
Northern District of California

10

“the region where the composition material is not present.” ’270 patent, col. 1 ll. 62-65. Second

12

and third, RayVio argues that the ’270 patent fails to clarify a basis for how the “variation” or

13

“ratio” can be measured, leaving a person of ordinary skill in the art to guess between multiple

14

approaches. Responsive Br. 16-17. These are strawmen. As discussed above, the claims do not

15

require a particular level of variation; thus, choices as to measurement are not a source of

16

indefiniteness. Moreover, the specification provides an example of how variation can be

17

identified within a preferred embodiment: in the context of AlGaN, the existence of Ga droplets

18

creates the claimed variation in compositional ratio. See ’270 patent col. 3 ll. 44-47 (“in the

19

regions where Ga droplets are present, the solid phase composition of gallium within the undoped

20

AlxGa1-xN layer 16 becomes high”); Abstract (“the compositional ratio of Ga and Al in the

21

undoped AlGaN layer varies due to the presents of the droplets”).

22

Accordingly, the Court agrees with Nitride that the phrases “variation in the compositional

23

ratio” in claim 1 and “varied compositional ratio” in claim 8 do not render those claims indefinite.

24

Because these are the only sources of indefinite for which Nitride complains, its indefiniteness

25

challenge fails.

26
27
28

b. Claim Construction
RayVio proposes in the alternative that the phrases “variation in the compositional ratio” in
Case No.: 5:17-cv-02952-EJD
CLAIM CONSTRUCTION ORDER
19

1

claim 1 and “varied compositional ratio” in claim 8 be construed to mean “variation in the ratio of (1)

2

the amount of composition material to (2) the amount of gallium nitride based material.” Responsive

3

Br. 17-18. Nitride counters that this clarification is unwarranted and instead proposes “changes in the

4

ratio of the elements in the second gallium nitride based semiconductor created by the composition

5

material.” Reply Br. 12-13.

6

The parties essentially disagree about the locus of variation: for RayVio, relative amounts of

7

composition material and gallium nitride based semiconductor vary; for Nitride, the relative

8

distribution of elements within the gallium nitride based semiconductor vary. On this point, the Court

9

agrees with Nitride. Reading the claims in light of the specification makes clear that “variation in the
compositional ratio” refers to variation in the distribution of elements within the “second gallium

11
United States District Court
Northern District of California

10

nitride based semiconductor.” For example, in the preferred embodiment described in the

12

specification, the “composition material” is droplets of Ga, and the “second gallium nitride based

13

semiconductor” is the undoped AlGaN layer. The specification explains that

14
15
16
17
18
19
20
21
22

in the regions where Ga droplets are present, the solid phase
composition of gallium within the undoped AlGaN layer 16
becomes high, and thus, a spatial fluctuation is formed in the band
gap of the undoped AlGaN layer 16. In FIG. 1B, this phenomenon
of compositional variation within the undoped AlGaN layer 16 due
to the gallium droplets 14 is schematically shown by different
hatchings.
’270 patent, col. 3 ll. 44-51 (emphasis added). The Abstract describes a similar process:
When the undoped A1GaN layer is formed, droplets of Ga or Al are
formed on the n type A1GaN layer. The compositional ratio of Ga
and Al in the undoped A1GaN layer varies due to the presence of the
droplets, creating a spatial fluctuation in the band gap.
Id., Abstract (emphasis added). Thus, “variation in the compositional ratio” refers to variation in the
relative distribution of elements (e.g., Ga or Al within AlGaN). Nitride’s proposed construction

23
correctly reflects this point.

24
25

In sum, the Court adopts Nitride’s position and construes the phrases “variation in the
compositional ratio” (in claim 1) and “varied compositional ratio” (in claim 8) to refer to “changes in

26
the ratio of the elements in the second gallium nitride based semiconductor created by the composition

27
28

Case No.: 5:17-cv-02952-EJD
CLAIM CONSTRUCTION ORDER
20

1

material.”

2

iv.

Conclusion

Piecing the above conclusions together, the Court construes “a spatial fluctuation is created

3
4

in the band gap by variation in the compositional ratio in the second gallium nitride based

5

semiconductor created by the composition material” to mean “continuous widening and narrowing

6

of the band gap laterally within the second gallium nitride based semiconductor is created by

7

changes in the ratio of the elements in the second gallium nitride based semiconductor created by

8

the composition material.” “Composition material” is construed to mean “material composed of

9

some, but not all, of the elements of the first gallium nitride based semiconductor.”

10

E.

United States District Court
Northern District of California

11
12
13

“the first gallium nitride based semiconductor” / “the second gallium nitride
based semiconductor” (claim 9)

Agreed-Upon Construction
The term “the first gallium nitride based semiconductor” means “the first gallium nitride based
semiconductor layer.” The term “the second gallium nitride based semiconductor” means “the
second gallium nitride based semiconductor layer.”

14

Two days before the hearing, the parties reached an agreement that the terms “the first

15

gallium nitride based semiconductor” and “the second gallium nitride based semiconductor” in

16

claim 9 of the ‘270 patent (for this claim only) should be construed as “the first gallium nitride

17

based semiconductor layer” and “the second gallium nitride based semiconductor layer,”

18

respectively. The Court adopts this agreed-upon construction.

19
20
21
22
23
24
25
26

F.

“a base layer” (claims 5, 12)

Nitride’s Proposed
Construction
“a thickness of material, which
may be made up of sub-layers,
that serves as a base for
forming other layers above it”

RayVio’s Proposed
Construction
This limitation is indefinite
rendering claims 5 and 12
invalid. Alternative
construction if claim is not
indefinite: “a discrete layer for
varying diffusion length of the
composition materials of a
gallium nitride based
semiconductor”

“a thickness of material, which
may be made up of sub-layers,
that serves as a base for
forming other layers above it”

The parties dispute whether the term “a base layer” renders claims 5 and 12 indefinite.

27
28

Court’s Construction

Case No.: 5:17-cv-02952-EJD
CLAIM CONSTRUCTION ORDER
21

1

According to RayVio, this phrase is indefinite because there is no guidance in the ’270 patent as to

2

what materials or properties a “base layer” must have. Responsive Br. 20-21. Nitride disagrees,

3

arguing that the several exemplary embodiments in the specification are sufficiently clear in

4

delineating the scope of “base layer.” Reply Br. 13-14.
The Court agrees with Nitride. “[B]readth is not indefiniteness.” SmithKline Beecham

5
6

Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed. Cir. 2005). Although the claims, read in light

7

of the specification, do not provide a lot of detail about the “base layer,” they provide enough to

8

“inform, with reasonable certainty, those skilled in the art about the scope of the invention.”

9

Nautilus, 134 S. Ct. at 2128-29. Specifically, the claim language states that the “base layer” is
used in obtaining “lattice mismatch,” and a “light emitting” “gallium nitride based semiconductor”

11
United States District Court
Northern District of California

10

is formed above it, where “spatial fluctuation” is created “in the band gap” by the “lattice

12

mismatch.” This provides some objective boundaries for “base layer;” for example, materials and

13

thicknesses that do not produce fluctuation or allow light emission would not qualify. The

14

specification provides further clarity. In the embodiment depicted in Figure 3, “lattice mismatch

15

layer 21” is formed on a base2 “AlGaN layer 20.” ’270 patent, Fig. 3, col. 4 ll. 55-59. The

16

specification also discloses that, alternatively, “lattice mismatch layer 21” can be formed on base

17

“GaN layer 22.” Id., col. 5 ll. 18-21. These exemplary embodiments add sufficient contour to

18

“base layer” such that a person of ordinary skill in the art would know, with sufficient clarity,

19

what a “base layer” should be.

20

RayVio’s arguments to the contrary are not persuasive. RayVio proposes that, in order to

21

know the scope of the claims, a person of ordinary skill in the art would need to know at least the

22
23
24
25
26
27
28

2

RayVio complains that the phrases “base ‘AlGaN layer 20’” and “base ‘GaN layer 22’”—first
used by Nitride in its briefing—are misleading. Dkt. No. 89. According to RayVio, the
specification never uses the phrase “base layer,” much less with reference to these layers in Figure
3. While this is true, the Federal Circuit has made clear that “when examining the written
description for support for the claimed invention, . . . the exact terms appearing in the claim ‘need
not be used in haec verba,’”). Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1345 (Fed.
Cir. 2016) (quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1536, 1572 (Fed. Cir. 1997)). Here,
reading the claims in the context of the specification makes clear that these are exemplary
embodiments of “base layer.”
Case No.: 5:17-cv-02952-EJD
CLAIM CONSTRUCTION ORDER
22

1

chemical formula, doping, and thickness of the base layer. Dkt. No. 89 at 3. This is too specific.

2

As Nitride persuasively points out, Dkt. No. 92 at 2, there is no dispute that a person of ordinary

3

skill in the art can understand the scope of the claim term “substrate,” even though its properties

4

such as composition and thickness are not recited. Moreover, even if this additional detail would

5

be helpful, the specification gives both the thickness (“1~100 nm”) and composition (“AlGaN” or

6

“GaN”) of the exemplary “base layer” in Figure 3. ’270 patent, 4:45-5:21. A person of ordinary

7

skill in the art could read this disclosure and know, with reasonable certainty, the range of base

8

layers that the claims cover. Accordingly, reading the claims in light of the specification, “base

9

layer” does not render claims 5 and 12 indefinite.
The question then becomes how the Court should construe this phrase. According to

10

United States District Court
Northern District of California

11

Nitride, “a base layer” should be construed to mean “a thickness of material, which may be made

12

up of sub-layers, that serves as a base for forming other layers above it.” Opening Br. 22-23.

13

According to RayVio, “a base layer” should be construed to mean “a discrete layer for varying

14

diffusion length of the composition materials of a gallium nitride based semiconductor.”

15

Responsive Br. 21. The Court agrees with Nitride. The ’270 patent discloses two different

16

embodiments of “a base layer:” (1) “a base layer created by forming a discrete layer for varying

17

diffusion length,” ’270 patent, col. 2 ll. 12-19; and (2) “a base layer having a lattice mismatch,”

18

id., col. 2 ll. 33-37. The first corresponds to independent claims 3 and 10, while the second

19

corresponds to independent claims 5 and 12. Thus, RayVio’s proposed construction draws from

20

an unrelated embodiment and cannot properly be used to determine the meaning of the “base

21

layer” in claims 5 and 12. Accordingly, the Court adopts Nitride’s position.
“A base layer” is construed to mean “a thickness of material, which may be made up of

22
23
24
25
26
27
28

sub-layers, that serves as a base for forming other layers above it.”
G.

“lattice mismatch layer” (claim 5)

Nitride’s Proposed
RayVio’s Proposed
Construction
Construction
“a thickness of material, which This limitation is indefinite
may be made up of sub-layers, rendering claim 5 invalid.
that has a different atomic
Alternative construction if
Case No.: 5:17-cv-02952-EJD
CLAIM CONSTRUCTION ORDER
23

Court’s Construction
“a thickness of material, which
may be made up of sub-layers,
that has a different atomic

1

spacing”

2
3
4
5

claim is not indefinite: “a
discrete layer that has a
relatively high lattice
mismatch with, and is
composed of a different type of
material than, the base layer
and the gallium nitride based
semiconductor”

spacing and is composed of a
different type of material than
the base layer and the gallium
nitride based semiconductor”

The parties dispute whether the claim term “lattice mismatch layer” is definite and how it

6

should be construed. RayVio’s sole indefiniteness argument appears to be based on its own

7

construction of this term—namely, that there is no objective guidance for what constitutes a

8

“relatively high lattice mismatch.” Thus, the Court first addresses the parties’ dispute regarding

9

construction and then turns to indefiniteness.

10

On claim construction, the Court notes that the parties appear to agree that the “lattice

United States District Court
Northern District of California

11

mismatch layer” must be composed of a different material than the layers it touches—namely, the

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“base layer” (such as the AlGaN 20 layer in Figure 3) and the “gallium nitride based

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semiconductor” (such as the GaN 22 layer in Figure 3). Compare Responsive Br. 21-22, with

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Reply Br. 14. Thus, the parties only dispute whether the “lattice mismatch layer” is a “a thickness

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of material, which may be made up of sub-layers, that has a different atomic spacing” (as Nitride

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proposes) or “a discrete layer that has a relatively high lattice mismatch with . . . the base layer and

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the gallium nitride based semiconductor” (as RayVio proposes).

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RayVio argues that its proposed construction is correct because the ’270 patent explicitly

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defined “lattice mismatch layer” in this way in the specification. As support, RayVio cites the

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following:

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When forming the GaN layer 22 on the AlGaN layer 20, a discrete
layer (lattice mismatch layer) 21 of a material having relatively high
lattice mismatch, more specifically, AlN, InN, AlInGaN, Si, MgN,
or the like is formed, and the GaN layer 22 is formed on the AlGaN
layer 20 onto which this layer 21 is formed.

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’270 patent, col. 4 ll. 55-59. The Court disagrees that this is an instance of inventor lexicography.

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When read in context, this excerpt is only describing a specific preferred embodiment. The

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parenthetical “lattice mismatch layer” is used to identify the “lattice mismatch layer” in that

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embodiment; this does not, however, mean that all “lattice mismatch layer” must be confined to

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that description. Accordingly, the Court will not construe “lattice mismatch layer” to be restricted

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to this meaning.
Having rejected RayVio’s narrower proposal, the Court is left with Nitride’s proposed

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construction: “a thickness of material, which may be made up of sub-layers, that has a different

5

atomic spacing.” However, because, as discussed above, the “lattice mismatch layer” must be

6

composed of a different material than the layers it touches, the Court will modify Nitride’s

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proposal to make this clear. Accordingly, the Court construes “lattice mismatch layer” to mean “a

8

thickness of material, which may be made up of sub-layers, that has a different atomic spacing and

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is composed of a different type of material than the base layer and the gallium nitride based

10

semiconductor.”
Because RayVio’s indefiniteness argument rests solely on a proposed construction which

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Northern District of California

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the Court has rejected, its indefiniteness arguments fail. Accordingly, the Court agrees with

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Nitride that “lattice mismatch layer” does not render claim 5 indefinite.

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21
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24
25
26
27
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H.

“the lattice mismatch” (claim 5) / “a lattice mismatch” (claim 12)

Nitride’s Proposed
Construction
“the difference in atomic
spacing” / “a difference in
atomic spacing”

RayVio’s Proposed
Construction
This limitation is indefinite
rendering claims 5 and 12
invalid. Alternative
construction if claim is not
indefinite: The term “the
lattice mismatch” in claim 5
means “the lattice mismatch
resulting from the lattice
mismatch layer.” The term “a
lattice mismatch” in claim 12
means “a lattice mismatch
layer,” which is construed
above as “a discrete layer that
has a relatively high lattice
mismatch with, and is
composed of a different type of
material than, the base layer
and the gallium nitride based
semiconductor [layer].”

Court’s Construction
The term “the lattice
mismatch” in claim 5 means
“the lattice mismatch resulting
from the lattice mismatch
layer.” The term “a lattice
mismatch” in claim 12 means
“a lattice mismatch layer.” For
both claims 5 and 12, “a lattice
mismatch layer” means “a
thickness of material, which
may be made up of sub-layers,
that has a different atomic
spacing and is composed of a
different type of material than
the base layer and the gallium
nitride based semiconductor.”

The parties dispute whether the claim terms “[a/the] lattice mismatch” are definite and how
they should be construed.
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Turning first to indefiniteness, RayVio contends that the phrase “[a/the] lattice mismatch”

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render the claims indefinite because the claims are ambiguous as to what the “lattice mismatch” is

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between—it could be between the “lattice mismatch layer” and the “base layer,” the “lattice mismatch

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layer” and the “gallium nitride based semiconductor,” or the “lattice mismatch layer” and both the

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“base layer” and “gallium nitride based semiconductor.” Responsive Br. 24-25. RayVio also contends

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that “the lattice mismatch” in claim 5 is indefinite because it lacks antecedent basis. Id. at 24.

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Taking these arguments in reverse order, the Court finds that, although RayVio is correct that

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“the lattice mismatch” in claim 5 lacks an antecedent basis, this does not render the claim indefinite.

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See Energizer Holdings, 435 F.3d at 1370-71 (“[D]espite the absence of explicit antecedent basis,
‘[i]f the scope of a claim would be reasonably ascertainable by those skilled in the art, then the

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claim is not indefinite.’” (quoting Bose, 274 F.3d at 1359)). Reading the entirety of claim 5, it

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would be clear to a person of ordinary skill in the art that “the lattice mismatch” refers to a lattice

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mismatch resulting from the “lattice mismatch layer” recited in step (a). As such, its lack of

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antecedent basis does not render claim 5 indefinite.

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Turning to RayVio’s first argument, the Court also finds that claims 5 and 12 are not

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indefinite on this basis. As discussed above, “a patent is invalid for indefiniteness if its claims,

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read in light of the specification delineating the patent, and the prosecution history, fail to inform,

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with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, 134

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S. Ct. at 2128-29. The term “lattice mismatch” is has a well-understood meaning in the art. See

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Bretschneider Decl. ¶¶ 159-160, 164; Ponce Dep., 137:15-22. Further, the ’270 patent describes

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an embodiment of claims 5 and 12 in detail, including identifying specific exemplary materials

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that could be used to form each layer. See ’270 patent, col. 4 l. 50-col. 5 l. 6 (describing a “base

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layer” comprised of AlGaN, a “gallium nitride based semiconductor” comprised of GaN, and a

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“lattice mismatch layer comprised of “AlN, InN, AlInGaN, Si, MgN, or the like”). Although,

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based on this description, it seems possible that the “lattice mismatch” could occur between any of

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the three layers, this, ultimately, would not prevent a person of ordinary skill in the art from

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understanding the scope of the claims with reasonable certainty. This may sweep in a broad range

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of potentially infringing devices, but the boundary is nonetheless clear.
Having rejected RayVio’s indefiniteness arguments, the Court turns to claim construction.

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3

Logically reading the plain language of the claims, the Court agrees with RayVio that the term

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“the lattice mismatch” in claim 5 means “the lattice mismatch resulting from the lattice mismatch

5

layer.” The Court also agrees with RayVio that the term “a lattice mismatch” in claim 12 means

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“a lattice mismatch layer.” The Court previously construed “lattice mismatch layer” in Section

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III.H. It will thus apply this same construction to this term in claims 5 and 12: the “lattice

8

mismatch layer” means “a thickness of material, which may be made up of sub-layers, that has a

9

different atomic spacing and is composed of a different type of material than the base layer and the
gallium nitride based semiconductor.”

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United States District Court
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IV.

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ORDER
For the reasons set forth above, the Court Construes the disputed terms as follows:

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15

Claim Terms
The Order of Steps in
Method Claims 1 and 5

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25
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“forming on” / “formed on”
” (claims 1, 5, 8, 12)
“a light emitting layer”
(claims 1, 5, 8, 12)

Court’s Construction
Method claim 1 requires performance of the steps in the sequence
recited in the claim, namely step (a) is performed, and then step (b)
is performed, and then step (c) is performed.
Method claim 5 requires performance of the steps in the sequence
recited in the claim, namely step (a) is performed, and then step (b)
is performed.
“form(ing/ed) in contact with and above”
“a thickness of material having a varied compositional ratio, which
may be made up of sub-layers, that generates light”
During prosecution, the applicant made a disclaimer limiting “light
emitting layer” to having a varying compositional ratio within the
light emitting layer.
“continuous widening and narrowing of the band gap laterally
within the second gallium nitride based semiconductor is created
by changes in the ratio of the elements in the second gallium nitride
based semiconductor created by the composition material”

“a spatial fluctuation is
created in the band gap by
variation in the
compositional ratio in the
second gallium nitride based
semiconductor created by
“Composition material is construed to mean “material composed of
the composition material”
some, but not all, of the elements of the first gallium nitride based
(claim 1)
semiconductor.”
During prosecution, the applicant made a disclaimer limiting “light
emitting layer” to having a varying compositional ratio within the
Case No.: 5:17-cv-02952-EJD
CLAIM CONSTRUCTION ORDER
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1
2
3
4
5
6
7

“the first gallium nitride
based semiconductor” / “the
second gallium nitride based
semiconductor” (claim 9)
“a base layer” (claims 5, 12)
“lattice mismatch layer”
(claim 5)
“the lattice mismatch”
(claim 5) / “a lattice
mismatch” (claim 12)

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9
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light emitting layer.
The term “the first gallium nitride based semiconductor” means
“the first gallium nitride based semiconductor layer.” The term “the
second gallium nitride based semiconductor” means “the second
gallium nitride based semiconductor layer.”
“a thickness of material, which may be made up of sub-layers, that
serves as a base for forming other layers above it”
“a thickness of material, which may be made up of sub-layers, that
has a different atomic spacing and is composed of a different type
of material than the base layer and the gallium nitride based
semiconductor”
The term “the lattice mismatch” in claim 5 means “the lattice
mismatch resulting from the lattice mismatch layer.” The term “a
lattice mismatch” in claim 12 means “a lattice mismatch layer.”
For both claims 5 and 12, “a lattice mismatch layer” means “a
thickness of material, which may be made up of sub-layers, that has
a different atomic spacing and is composed of a different type of
material than the base layer and the gallium nitride based
semiconductor.”

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IT IS SO ORDERED.
Dated: May 11, 2018
______________________________________
EDWARD J. DAVILA
United States District Judge

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