- Runergy Alabama Inc. / Runergy USA Inc. et al. v. Trina Solar Co., Ltd.All claims unpatentablePTAB · Apr 15, 2026 · IPR2025-00187 · APJ Debra L Dennett · IPR · Final written decision
Claims 1–17 are unpatentable under § 103, principally because Chang in view of Jin renders them obvious; the Jin/Feldmann grounds were not shown.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have been someone with an advanced degree involving the disciplines of electrical engineering, applied physics, chemistry, or materials science, and at least two years of experience designing, developing, or researching in the field. Alternatively, that person would have had a bachelor’s degree in electrical engineering, applied physics, or materials science, and at least three years of experience designing, developing, or researching in the field. Pet. 4 (citing Ex. 1003 ¶ 49).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[n]o claim construction is believed to be necessary to resolve this Petition.” Pet. 24. Patent Owner does not address claim construction. See generally Resp.; Sur-reply. For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 11
- Expert testimonyPatent owner expert creditedDecided for patent owner
“gap-T isolation region would prevent shorting and that extending the tunnel oxide layer the edge “could trap impurities and create negative fixed oxide charges, which could then create a p-type inversion in the n-type base substrate, leading to a leakage path to the p-type emitter on the front of the solar cell” (Ex. 1003 ¶ 116 (emphasis added)) but are not convinced by his equivocal testimony. Notably too, neither Jin nor Feldmann discuss issues relating to trapped impurities and Petitioner, as well as Dr. Banerjee, fail to direct our attention to any record evidence to support their contentions. Rather, we are persuaded by Dr. Peckerar’s testimony that as a general rule in semiconductor process technology, a bare silicon surface should not be left unpassivated after processing. Elemental silicon is highly chemically reactive. As such, the bare surface is a “magnet” for defects and contamination. Leaving the tunnel oxide in place across the entire substrate backside would reduce this problem. Ex. 2001 ¶ 142. Dr. Peckerar further explains that a person of ordinary skill in the art would have known how to avoid shorting and leakage. In particular, he testifies that the manner by which charge is transported through a tunnel oxide can be controlled by adjusting manufacturing parameters such as time, temperature, thickness, and ambient impurities. A POSITA would plainly have adjusted these parameters to ensure that the tunnel oxide operates as intended (i.e., minimizes recombinant losses while transporting charge carriers to the backside of the solar cell) while avoiding undesirable leakage current. Because unwanted leakage charge can be avoided via other means during manufacture, there would have been no reason to reduce the physical extent of the tunnel oxide. Ex. 2001 ¶ 152 (referring to Ex. 2001 ¶¶ 149–151). Moreover, Dr. Peckerar testifies that “Dr. Banerjee also appears to be arguing that incorporation of impurities into the oxide will produce a MOSFET-like structure, with the contaminated oxide acting as a MOS gate leading to enhanced leakage,” but, for that to occur, “the source and drain areas would need to be of the same type.” Ex. 2001 ¶ 159. Here however, “the tunnel oxide layer is located between an n-type polysilicon layer and p-type frontside emitter layer” so “[n]o MOSFET-like structure can form because the source and drain are of different types.” Ex. 2001 ¶ 159. Neither Petitioner nor Dr. Banerjee address or dispute this testimony. See generally Reply; Ex. 1037. We credit Dr. Peckerar’s testimony in this regard. Without an apparent reason to modify the teachings of Jin and Feldmann to” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“On this complete trial record, we agree with Patent Owner. It is improper to base a conclusion of obviousness upon facts gleaned only through hindsight. “The invention must be viewed not after the blueprint has been drawn by the inventor, but as it would have been perceived in the state of the art that existed at the time the invention was made.” Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (citing Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985)). Therefore, “to establish a prima facie case of obviousness based on a combination of elements disclosed in the prior art, the [Petitioner] must articulate the basis on which it concludes that it would have been obvious to make the claimed invention.” Id. Impermissible hindsight is inferred when the specific understanding or principle within the knowledge of one of ordinary skill in the art that would motivate one (with no knowledge of the claimed invention) to make the proposed combination has not been explained. In re Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998).” slip op. at 17
Patent outcomesUS 10,230,009 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,230,009 - Runergy Alabama Inc. / Runergy USA Inc. et al. v. Trina Solar Co., Ltd.All claims unpatentablePTAB · Apr 15, 2026 · IPR2025-00917 · APJ Debra L Dennett · IPR · Final written decision
Claims 1–17 are unpatentable under § 103 over Chang and Jin, alone or with Seo or Watanabe; the Jin and Feldmann grounds were not shown.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In light of the record before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’009 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’009 patent and the prior art.” slip op. at 10
- Expert testimonyPatent owner expert creditedDecided for patent owner
“We acknowledge Dr. Banerjee’s testimony that the combination of Jin’s gap-T isolation region would prevent shorting and that extending the tunnel oxide layer the edge “could trap impurities and create negative fixed oxide charges, which could then create a p-type inversion in the n-type base substrate, leading to a leakage path to the p-type emitter on the front of the solar cell” (Ex. 1003 ¶ 116 (emphasis added)) but are not convinced by his equivocal testimony. Notably too, neither Jin nor Feldmann discuss issues relating to trapped impurities and Petitioner, as well as Dr. Banerjee, fail to direct our attention to any record evidence to support their contentions. Rather, we are persuaded by Dr. Peckerar’s testimony that as a general rule in semiconductor process technology, a bare silicon surface should not be left unpassivated after processing. Elemental silicon is highly chemically reactive. As such, the bare surface is a “magnet” for defects and contamination. Leaving the tunnel oxide in place across the entire substrate backside would reduce this problem. Ex. 2001 ¶ 142. Dr. Peckerar further explains that a person of ordinary skill in the art would have known how to avoid shorting and leakage. In particular, he testifies that the manner by which charge is transported through a tunnel oxide can be controlled by adjusting manufacturing parameters such as time, temperature, thickness, and ambient impurities. A POSITA would plainly have adjusted these parameters to ensure that the tunnel oxide operates as intended (i.e., minimizes recombinant losses while transporting charge carriers to the backside of the solar cell) while avoiding undesirable leakage current. Because unwanted leakage charge can be avoided via other means during manufacture, there would have been no reason to reduce the physical extent of the tunnel oxide. Ex. 2001 ¶ 152 (referring to Ex. 2001 ¶¶ 149–151). Moreover, Dr. Peckerar testifies that “Dr. Banerjee also appears to be arguing that incorporation of impurities into the oxide will produce a MOSFET-like structure, with the contaminated oxide acting as a MOS gate leading to enhanced leakage,” but, for that to occur, “the source and drain areas would need to be of the same type.” Ex. 2001 ¶ 159. Here however, “the tunnel oxide layer is located between an n-type polysilicon layer and p-type frontside emitter layer” so “[n]o MOSFET-like structure can form because the source and drain are of different types.” Ex. 2001 ¶ 159. Neither Petitioner nor Dr. Banerjee address or dispute this testimony. See generally Reply; Ex. 1037. We credit Dr. Peckerar’s testimony in this regard.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentableNot shown unpatentable
“On this complete trial record, we agree with Patent Owner. It is improper to base a conclusion of obviousness upon facts gleaned only through hindsight. “The invention must be viewed not after the blueprint has been drawn by the inventor, but as it would have been perceived in the state of the art that existed at the time the invention was made.” Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (citing Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985)). Therefore, “to establish a prima facie case of obviousness based on a combination of elements disclosed in the prior art, the [Petitioner] must articulate the basis on which it concludes that it would have been obvious to make the claimed invention.” Id. Impermissible hindsight is inferred when the specific understanding or principle within the knowledge of one of ordinary skill in the art that would motivate one (with no knowledge of the claimed invention) to make the proposed combination has not been explained. In re Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“Patent Owner focuses on Chang’s description in paragraph 76 of a single configuration in which the emitter area and back surface field area are not adjacent to each other, thus eliminating “the necessity of performing an isolation process when the emitter area [] and the back surface field are [] are formed to be adjacent to each other.” Resp. 42 (citing Ex. 1013 ¶ 76). In so doing, Patent Owner side steps Chang’s unambiguous definition that “‘entirely formed’ means that an element such as a layer is formed over an entire surface without an empty area or a non-coverage area, or is formed over an entire area excluding pre-designated or inevitably formed regions such as periphery region, isolation region or the like.” Ex. 1013 ¶¶ 45, 51, 56, 62 (emphasis added). Chang discloses that a first tunneling layer, a first portion of an emitter area, a second tunneling layer, and a back surface field area may each be “formed over an entire area excluding pre-designated or inevitably formed regions such as periphery region, isolation region or the like.” Id. Chang’s definition of “entirely formed” (“excluding pre-designated or inevitably formed regions such as periphery region, isolation region or the like”) implies use of a mask. See Chang ¶ 62; Tr. 15:20–17:11. Dr. Banerjee testifies that the need to electrically isolate the emitter region from the back surface field was well known in the field, and both Chang and Jin teach backside isolation regions. Ex. 1003 ¶¶ 73, 217 (citing Ex. 1023 § 1). Chang also discloses that the emitter area may be formed by thermal diffusion, ion implantation or the like. Ex. 1013 ¶ 98. Petitioner persuasively argues that Chang’s disclosure of thermal diffusion of the emitter layer would result in dopants diffused into not only the top surface of the substrate, but also the exposed lateral surfaces, a problem also noted in Jin. See Pet. 11–12; Reply 6–7; Ex. 1003 ¶ 71; Ex. 1009 ¶¶ 57–58. Jin discloses avoiding shorting of the emitter layer and back surface field layer by edge isolation on the back surface field layer using a mask to create a “gap-T.” Ex. 1009 ¶¶ 57–58, 83. Chang discloses excluding a tunneling layer and a base surface field area from periphery region and isolation region. Ex. 1013 ¶¶ 56, 62. Using a mask, as implied in Chang and explicitly disclosed in Jin, would “pre-designate” and/or “inevitably form” the regions where the tunneling layer and back surface field area are excluded. We credit Dr. Banerjee’s testimony that one of ordinary skill in the art reviewing Chang would therefore understand the importance of implementing the isolation region in Chang’s device, and would therefore be motivated to look to other references, such as Jin (which was assigned to the same original assignee as Chang, LG Electronics, EX1009-Jin, face; EX1013-Chang, face) to understand details regarding Chang’s isolation region.” slip op. at 32
Patent outcomesUS 10,230,009 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,230,009 - Runergy Alabama Inc. / Runergy USA Inc. et al. v. Trina Solar Co., Ltd.All claims unpatentablePTAB · Apr 15, 2026 · IPR2025-00006 · APJ Debra L Dennett · IPR · Final written decision
Claims 1–17 are unpatentable under § 103, principally over Chang and Jin; the Board rejected the Jin and Feldmann combinations for lack of a reason to combine.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In light of the record before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’009 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’009 patent and the prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[n]o claim construction is believed to be necessary to resolve this Petition.” Pet. 24. Patent Owner does not address claim construction. See generally Resp.; Sur-reply. For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“However, Petitioner proposes to remove the tunnel oxide layer from the edge and offers little explanation of why the skilled artisan would apply Jin’s gap- T isolation region to both of Feldmann’s polysilicon and tunnel oxide layers. As noted above, Petitioner states that the skilled artisan would have included Jin’s gap-T isolation region in order to prevent shorting. Pet. 26. Petitioner’s reasoning is questionable—supported only by the conclusory testimony of Dr. Banerjee. Dr. Banerjee’s testimony offers no more evidentiary support than provided in the Petition. Compare Ex. 1003 ¶ 116 with Pet. 26). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” See Magnum, 829 F.3d at 1380. We acknowledge Dr. Banerjee’s testimony that the combination of Jin’s gap-T isolation region would prevent shorting and that extending the tunnel oxide layer the edge “could trap impurities and create negative fixed oxide charges, which could then create a p-type inversion in the n-type base substrate, leading to a leakage path to the p-type emitter on the front of the solar cell” (Ex. 1003 ¶ 116 (emphasis added)) but are not convinced by his equivocal testimony. Notably too, neither Jin nor Feldmann discuss issues relating to trapped impurities and Petitioner, as well as Dr. Banerjee, fail to direct our attention to any record evidence to support their contentions. Rather, we are persuaded by Dr. Peckerar’s testimony that as a general rule in semiconductor process technology, a bare silicon surface should not be left unpassivated after processing. Elemental silicon is highly chemically reactive. As such, the bare surface is a “magnet” for defects and contamination. Leaving the tunnel oxide in place across the entire substrate backside would reduce this problem. Ex. 2001 ¶ 142. Dr. Peckerar further explains that a person of ordinary skill in the art would have known how to avoid shorting and leakage. In particular, he testifies that the manner by which charge is transported through a tunnel oxide can be controlled by adjusting manufacturing parameters such as time, temperature, thickness, and ambient impurities. A POSITA would plainly have adjusted these parameters to ensure that the tunnel oxide operates as intended (i.e., minimizes recombinant losses while transporting charge carriers to the backside of the solar cell) while avoiding undesirable leakage current. Because unwanted leakage charge can be avoided via other means during manufacture, there would have been no reason to reduce the physical extent of the tunnel oxide. Ex. 2001 ¶ 152 (referring to Ex. 2001 ¶¶ 149–151). Moreover, Dr. Peckerar testifies that “Dr. Banerjee also appears to be arguing that incorporation of impurities into the oxide will produce a MOSFET-like structure, with the contaminated oxide acting as a MOS gate leading to enhanced leakage,” but, for that to occur, “the source and drain areas would need to be of the same type.” Ex. 2001 ¶ 159. Here however, “the tunnel oxide layer is located between an n-type polysilicon layer and p-type frontside emitter layer” so “[n]o MOSFET-like structure can form because the source and drain are of different types.” Ex. 2001 ¶ 159. Neither Petitioner nor Dr. Banerjee address or dispute this testimony. See generally Reply; Ex. 1037. We credit Dr. Peckerar’s testimony in this regard.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“configuration in which the emitter area and back surface field area are not adjacent to each other, thus eliminating “the necessity of performing an isolation process when the emitter area [] and the back surface field are [] are formed to be adjacent to each other.” Resp. 42 (citing Ex. 1013 ¶ 76). In so doing, Patent Owner side steps Chang’s unambiguous definition that “‘entirely formed’ means that an element such as a layer is formed over an entire surface without an empty area or a non-coverage area, or is formed over an entire area excluding pre-designated or inevitably formed regions such as periphery region, isolation region or the like.” Ex. 1013 ¶¶ 45, 51, 56, 62 (emphasis added). Chang discloses that a first tunneling layer, a first portion of an emitter area, a second tunneling layer, and a back surface field area may each be “formed over an entire area excluding pre-designated or inevitably formed regions such as periphery region, isolation region or the like.” Id. Chang’s definition of “entirely formed” (“excluding pre-designated or inevitably formed regions such as periphery region, isolation region or the like”) implies use of a mask. See Chang ¶ 62; Tr. 15:20–17:11. Dr. Banerjee testifies that the need to electrically isolate the emitter region from the back surface field was well known in the field, and both Chang and Jin teach backside isolation regions. Ex. 1003 ¶¶ 73, 217 (citing Ex. 1023 § 1). Chang also discloses that the emitter area may be formed by thermal diffusion, ion implantation or the like. Ex. 1013 ¶ 98. Petitioner persuasively argues that Chang’s disclosure of thermal diffusion of the emitter layer would result in dopants diffused into not only the top surface of the substrate, but also the exposed lateral surfaces, a problem also noted in Jin. See Pet. 11–12; Reply 6–7; Ex. 1003 ¶ 71; Ex. 1009 ¶¶ 57–58. Jin discloses avoiding shorting of the emitter layer and back surface field layer by edge isolation on the back surface field layer using a mask to create a “gap-T.” Ex. 1009 ¶¶ 57–58, 83. Chang discloses excluding a tunneling layer and a base surface field area from periphery region and isolation region. Ex. 1013 ¶¶ 56, 62. Using a mask, as implied in Chang and explicitly disclosed in Jin, would “pre-designate” and/or “inevitably form” the regions where the tunneling layer and back surface field area are excluded. We credit Dr. Banerjee’s testimony that one of ordinary skill in the art reviewing Chang would therefore understand the importance of implementing the isolation region in Chang’s device, and would therefore be motivated to look to other references, such as Jin (which was assigned to the same original assignee as Chang, LG Electronics, EX1009-Jin, face; EX1013-Chang, face) to understand details regarding Chang’s isolation region.” slip op. at 32
Patent outcomesUS 10,230,009 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,230,009 - Runergy Alabama Inc. / Runergy USA Inc. et al. v. Trina Solar Co., Ltd.All claims unpatentablePTAB · Apr 15, 2026 · IPR2025-00918 · APJ Avelyn M Ross · IPR · Final written decision
Claims 1–11 are unpatentable under § 103 over Chang and Jin; the Board rejected the Jin and Feldmann based grounds for lack of a reason to combine without hindsight.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have been someone with an advanced degree involving the disciplines of electrical engineering, applied physics, chemistry, or materials science, and at least two years of experience designing, developing, or researching in the field. Alternatively, that person would have had a bachelor’s degree in electrical engineering, applied physics, or materials science, and at least three years of experience designing, developing, or researching in the field.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[n]o claim construction is believed to be necessary to resolve this Petition.” Pet. 23. And, Patent Owner does not address claim construction. See generally PO Resp. As neither party proposes an express construction for our consideration and because we determine that an express claim construction is not necessary for us to render a decision in this matter, we do not construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“base a conclusion of obviousness upon facts gleaned only through hindsight. “The invention must be viewed not after the blueprint has been drawn by the inventor, but as it would have been perceived in the state of the art that existed at the time the invention was made.” Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (citing Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985)). Therefore, “to establish a prima facie case of obviousness based on a combination of elements disclosed in the prior art, the [Petitioner] must articulate the basis on which it concludes that it would have been obvious to make the claimed invention.” Id. Impermissible hindsight is inferred when the specific understanding or principle within the knowledge of one of ordinary skill in the art that would motivate one (with no knowledge of the claimed invention) to make the proposed combination has not been explained. In re Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Patent Owner focuses on Chang’s description in paragraph 76 of a single configuration in which the emitter area and back surface field area are not adjacent to each other, thus eliminating “the necessity of performing an isolation process when the emitter area [] and the back surface field are [] are formed to be adjacent to each other.” PO Resp. 42–43 (citing Ex. 1013 ¶ 76). But, in so doing, Patent Owner side steps Chang’s unambiguous definition that “‘entirely formed’ means that an element such as a layer is formed over an entire surface without an empty area or a non-coverage area, or is formed over an entire area excluding pre-designated or inevitably formed regions such as periphery region, isolation region or the like.” Ex. 1013 ¶¶ 45, 51, 56, 62 (emphasis added). Chang discloses that a first tunneling layer, a first portion of an emitter area, a second tunneling layer, and a back surface field area may each be “formed over an entire area excluding pre-designated or inevitably formed regions such as periphery region, isolation region or the like.” Ex. 1013 ¶¶ 45, 51, 56, 62. Chang’s definition of “entirely formed” (“excluding pre-designated or inevitably formed regions such as periphery region, isolation region or the like”) implies use of a mask. See Ex. 1013 ¶ 62; Tr. 15:20– 17:11. Dr. Banerjee testifies that the need to electrically isolate the emitter region from the back surface field was well known in the field, and both Chang and Jin teach backside isolation regions. Ex. 1003 ¶¶ 70–81, 91–96, 200 (citing Ex. 1026 § 1 and stating that “[b]oth Chang and Jin likewise teach backside isolation regions”). Chang also discloses that the emitter area may be formed by “thermal diffusion, ion implantation or the like.” Ex. 1013 ¶ 98. Petitioner persuasively argues that Chang’s disclosure of thermal diffusion of the emitter layer would result in dopants diffused into not only the top surface of the substrate, but also the exposed lateral surfaces, a problem also noted in Jin. See Pet. 11–12; Pet. Reply 6–7; Ex. 1003 ¶ 71; Ex. 1009 ¶¶ 57–58. Jin discloses avoiding shorting of the emitter layer and back surface field layer by edge isolation on the back surface field layer using a mask to create a “gap-T.” Ex. 1009 ¶¶ 57–58, 83. Chang discloses excluding the second tunneling layer and a base surface field area from periphery region and isolation portion. Ex. 1013 ¶¶ 56, 62. Using a mask, as implied in Chang and explicitly disclosed in Jin, would “pre-designate” and/or “inevitably form” the regions where the tunneling layer and back surface field area are excluded. We credit Dr. Banerjee’s testimony that one of ordinary skill in the art “reviewing Chang would therefore understand the importance of implementing the isolation region in Chang’s device, and would therefore be motivated to look to other references, such as Jin (which was assigned to the same original assignee as Chang, LG Electronics, EX1009-Jin, face; EX1013-Chang, face) to understand details regarding Chang’s isolation region.” Ex. 1003 ¶ 201.” slip op. at 33
Patent outcomesUS 9,722,104 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,722,104 - Runergy Alabama Inc. / Runergy USA Inc. et al. v. Trina Solar Co., Ltd.All claims unpatentablePTAB · Apr 15, 2026 · IPR2025-00186 · APJ Avelyn M Ross · IPR · Final written decision
Claims 1–11 are unpatentable under § 103 over Chang and Jin; the Board found the combination disclosed the claimed isolation portion and supported the challenged claims.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have been someone with an advanced degree involving the disciplines of electrical engineering, applied physics, chemistry, or materials science, and at least two years of experience designing, developing, or researching in the field. Alternatively, that person would have had a bachelor’s degree in electrical engineering, applied physics, or materials science, and at least three years of experience designing, developing, or researching in the field. Pet. 4 (citing Ex. 1003 ¶ 49). Patent Owner does not address the level of ordinary skill in the art. See generally PO Resp; Sur-reply. In light of the complete trial record before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’104 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’104 patent and the prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“C. Claim Construction We construe claim terms according to the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc); 37 C.F.R. § 42.100(b). Under Phillips, we give claim terms “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. “Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id. Petitioner contends that “[n]o claim construction is believed to be necessary to resolve this Petition.” Pet. 23. And, Patent Owner does not address claim construction. See generally PO Resp. As neither party proposes an express construction for our consideration and because we determine that an express claim construction is not necessary for us to render a decision in this matter, we do not construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 10
- Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed
“edge and offers little explanation of why the skilled artisan would apply Jin’s gap- T isolation region to both of Feldmann’s polysilicon and tunnel oxide layers. As noted above, Petitioner states that the skilled artisan would have included Jin’s gap-T isolation region in order to prevent shorting. Pet. 25. Petitioner’s reasoning is questionable—supported only by the conclusory testimony of Dr. Banerjee. Dr. Banerjee’s testimony offers no more evidentiary support than provided in the Petition. Compare Ex. 1003 ¶ 113, with Pet. 25. Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” Magnum Oil, 829 F.3d at 1380. We acknowledge Dr. Banerjee’s testimony that the combination of Jin’s gap-T isolation region would prevent shorting and that extending the tunnel oxide layer the edge “could trap impurities and create negative fixed oxide charges, which could then create a p-type inversion in the n-type base substrate, leading to a leakage path to the p-type emitter on the front of the solar cell” (Ex. 1003 ¶ 113 (emphasis added)) but are not convinced by his equivocal testimony. Notably too, neither Jin nor Feldmann discuss issues relating to trapped impurities and Petitioner, as well as Dr. Banerjee, fail to direct our attention to any record evidence to support their contentions. Rather, we are persuaded by Dr. Peckerar’s testimony that as a general rule in semiconductor process technology, a bare silicon surface should not be left unpassivated after processing. Elemental silicon is highly chemically reactive. As such, the bare surface is a “magnet” for defects and contamination. Leaving the tunnel oxide in place across the entire substrate backside would reduce this problem. Ex. 2001 ¶ 142. Dr. Peckerar further explains that a person of ordinary skill in the art would have known how to avoid shorting and leakage. In particular, he testifies that the manner by which charge is transported through a tunnel oxide can be controlled by adjusting manufacturing parameters such as time, temperature, thickness, and ambient impurities. A POSITA would plainly have adjusted these parameters to ensure that the tunnel oxide operates as intended (i.e., minimizes recombinant losses while transporting charge carriers to the backside of the solar cell) while avoiding undesirable leakage current. Because unwanted leakage charge can be avoided via other means during manufacture, there would have been no reason to reduce the physical extent of the tunnel oxide. Ex. 2001 ¶ 152 (referring to Ex. 2001 ¶¶ 149–151). Moreover, Dr. Peckerar testifies that “Dr. Banerjee also appears to be arguing that incorporation of impurities into the oxide will produce a MOSFET-like structure, with the contaminated oxide acting as a MOS gate leading to enhanced leakage,” but, for that to occur, “the source and drain areas would need to be of the same type.” Ex. 2001 ¶ 159. Here however, “the tunnel oxide layer is located between an n-type polysilicon layer and p-type frontside emitter layer” so “[n]o MOSFET-like structure can form because the source and drain are of different types.” Ex. 2001” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“base a conclusion of obviousness upon facts gleaned only through hindsight. “The invention must be viewed not after the blueprint has been drawn by the inventor, but as it would have been perceived in the state of the art that existed at the time the invention was made.” Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (citing Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985)). Therefore, “to establish a prima facie case of obviousness based on a combination of elements disclosed in the prior art, the [Petitioner] must articulate the basis on which it concludes that it would have been obvious to make the claimed invention.” Id. Impermissible hindsight is inferred when the specific understanding or principle within the knowledge of one of ordinary skill in the art that would motivate one (with no knowledge of the claimed invention) to make the proposed combination has not been explained. In re Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998).” slip op. at 16
Patent outcomesUS 9,722,104 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,722,104 - Runergy Alabama Inc. / Runergy USA Inc. et al. v. Trina Solar Co., Ltd.All claims unpatentablePTAB · Apr 15, 2026 · IPR2025-00007 · APJ Avelyn M Ross · IPR · Final written decision
Claims 1–11 are unpatentable under §103 over Chang and Jin because the combination teaches the claimed isolation portion and the claimed tapering.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that a person of ordinary skill in the art would have been someone with an advanced degree involving the disciplines of electrical engineering, applied physics, chemistry, or materials science, and at least two years of experience designing, developing, or researching in the field. Alternatively, that person would have had a bachelor’s degree in electrical engineering, applied physics, or materials science, and at least three years of experience designing, developing, or researching in the field. Pet. 4 (citing Ex. 1003 ¶ 49). Patent Owner does not address the level of ordinary skill in the art. See generally PO Resp; Sur-reply. In light of the complete trial record before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’104 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’104 patent and the prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[n]o claim construction is believed to be necessary to resolve this Petition.” Pet. 23. And, Patent Owner does not address claim construction. See generally PO Resp. As neither party proposes an express construction for our consideration and because we determine that an express claim construction is not necessary for us to render a decision in this matter, we do not construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightTeaching away not foundNot shown unpatentable
“On this complete trial record, we agree with Patent Owner. It is improper to base a conclusion of obviousness upon facts gleaned only through hindsight. “The invention must be viewed not after the blueprint has been drawn by the inventor, but as it would have been perceived in the state of the art that existed at the time the invention was made.” Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (citing Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985)). Therefore, “to establish a prima facie case of obviousness based on a combination of elements disclosed in the prior art, the [Petitioner] must articulate the basis on which it concludes that it would have been obvious to make the claimed invention.” Id. Impermissible hindsight is inferred when the specific understanding or principle within the knowledge of one of ordinary skill in the art that would motivate one (with no knowledge of the claimed invention) to make the proposed combination has not been explained. In re Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998).” slip op. at 16
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“However, Petitioner proposes to remove the tunnel oxide layer from the edge and offers little explanation of why the skilled artisan would apply Jin’s gap- T isolation region to both of Feldmann’s polysilicon and tunnel oxide layers. As noted above, Petitioner states that the skilled artisan would have included Jin’s gap-T isolation region in order to prevent shorting. Pet. 25. Petitioner’s reasoning is questionable—supported only by the conclusory testimony of Dr. Banerjee. Dr. Banerjee’s testimony offers no more evidentiary support than provided in the Petition. Compare Ex. 1003 ¶ 113, with Pet. 25. Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” Magnum Oil, 829 F.3d at 1380. We acknowledge Dr. Banerjee’s testimony that the combination of Jin’s gap-T isolation region would prevent shorting and that extending the tunnel oxide layer the edge “could trap impurities and create negative fixed oxide charges, which could then create a p-type inversion in the n-type base substrate, leading to a leakage path to the p-type emitter on the front of the solar cell” (Ex. 1003 ¶ 113 (emphasis added)) but are not convinced by his equivocal testimony. Notably too, neither Jin nor Feldmann discuss issues relating to trapped impurities and Petitioner, as well as Dr. Banerjee, fail to direct our attention to any record evidence to support their contentions. Rather, we are persuaded by Dr. Peckerar’s testimony that as a general rule in semiconductor process technology, a bare silicon surface should not be left unpassivated after processing. Elemental silicon is highly chemically reactive. As such, the bare surface is a “magnet” for defects and contamination. Leaving the tunnel oxide in place across the entire substrate backside would reduce this problem. Ex. 2001 ¶ 142. Dr. Peckerar further explains that a person of ordinary skill in the art would have known how to avoid shorting and leakage. In particular, he testifies that the manner by which charge is transported through a tunnel oxide can be controlled by adjusting manufacturing parameters such as time, temperature, thickness, and ambient impurities. A POSITA would plainly have adjusted these parameters to ensure that the tunnel oxide operates as intended (i.e., minimizes recombinant losses while transporting charge carriers to the backside of the solar cell) while avoiding undesirable leakage current. Because unwanted leakage charge can be avoided via other means during manufacture, there would have been no reason to reduce the physical extent of the tunnel oxide.” slip op. at 18
Patent outcomesUS 9,722,104 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,722,104 - R.J. Reynolds Vapor Company v. Healthier Choices Management Corp.All claims unpatentablePTAB · Mar 9, 2026 · IPR2024-01458 · APJ Kristina M Kalan · IPR · Final written decision
Claims 1, 7, 8, and 11 are unpatentable as obvious over Lee-based combinations; the Gilbert-based grounds did not establish unpatentability.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 15 (citing Ex. 1003 ¶ 18). Petitioner further argues a “POSA would have been familiar with electrically powered cigarettes and their components and underlying technologies or similar components and technologies.” Id. “For the purposes of this Response,” Patent Owner “does not dispute Petitioner’s proposed level of skill in the art.” Resp. 17. On this complete record, we adopt Petitioner’s unopposed definition because it appears consistent with the’788 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner states that “Petitioner and [Petitioner’s declarant] Mr. Kodama interpret the meaning of the claims based on [Patent Owner’s] construction of the claims by its allegations of infringement in the ongoing litigation.” Resp. 18. Patent Owner further states that for “the purposes of this response,” it “agrees on how the claims are to be construed.” Id. Upon review of the record, we determine that no claim terms require express construction. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only 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)).” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“the combination of proposed references would operate. As shown in Petitioner’s proposed modification, the Gilbert bulb would have been modified to fit the Lee device. Pet. 57 (annotated Figure); Ex. 1003 ¶ 123 (stating that the combination would work “by merely replacing [Lee’s] heating element (133) with this bulb heater inside of the vaporization unit (14)” and the “bulb heater could be connected to [Lee’s] electric circuit board (111) and battery assembly (11) in a very similar fashion to the nichrome wire heater represented in Lee”); Reply 29–30 (explaining Petitioner’s annotated figure wherein “the fiber rod is not encapsulated inside the bulb”); Ex. 1026 ¶¶ 29–30 (clarifying how the fiber in Petitioner’s proposed combination from its annotated Figure in the Petition extends to, and makes contact with, the outside of the bulb, putting the fluid into direct contact with the bulb; explaining various simple ways a POSA would understand to accomplish this). We credit Petitioner’s proposal and Mr. Kodama’s testimony in this regard. Therefore, we agree that Lee would not have to be “significantly modified or reimagined” as alleged by Patent Owner, nor would the inclusion of a bulb in the Lee device “render Lee inoperable” in view of the modifications to the Gilbert bulb included in Lee, as proposed by Petitioner. Resp. 30–31.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“art would not have combined Lee and Gilbert or Levin, particularly with respect to element [1d], we are persuaded by Petitioner’s arguments that one of ordinary skill in the art would have been motivated to make the combination with a reasonable expectation of success. Petitioner states that the motivation to make the combination would have come from issues “with e-cigarettes at the time, such as metallic taste issues or inhalation risks associated with the use of a metal wire heating element,” and would have explored “heat conducting materials that could vaporize the nicotine liquid without making direct contact with the heating wire.” Pet. 57 (citing Ex. 1003 ¶ 117 (discussing the metallic flavor “dry hit” problem)); see also Reply 18–19. Additionally, Petitioner argues that one of ordinary skill in the art would have implemented “a heating element within a glass bulb to increase the life of the heating element and prevent failure of a device.” Id. at 57–58 (citing Ex. 1009 ¶ 4; Ex. 1003 ¶ 119), 59 (a “POSA would have been motivated to implement a heating element within a glass bulb like that described in Levin for all of the reasons described above” in connection with Gilbert). Petitioner depicts one example of how its proposed combination would incorporate the Gilbert bulb into the Lee device. Pet. 57 (citing Ex. 1003 ¶ 118)). Petitioner additionally relies on Levin’s disclosure that using a bulb will “allow for a consistent and reliable heat source” and “achieve a desired operating temperature when compared to conventional devices.” Id. at 59 (citing Ex. 1009 ¶¶ 56, 49). Mr. Kodama also notes the age and ubiquity of bulb heaters, credibly testifying that “a POSA would have been motivated to implement a bulb heater in the Lee device, and, due at least to the ubiquitous nature of such heaters, the implementation of such a heater would have been well within the knowledge and skill of a POSA.” Pet. 59; Reply 20; Ex. 1003 ¶¶ 39–48, 123. Petitioner also provides sufficient explanation as to “how” and “why” the combination of proposed references would operate. As shown in Petitioner’s proposed modification, the Gilbert bulb would have been modified to fit the Lee device. Pet. 57 (annotated Figure); Ex. 1003 ¶ 123 (stating that the combination would work “by merely replacing [Lee’s] heating element (133) with this bulb heater inside of the vaporization unit (14)” and the “bulb heater could be connected to [Lee’s] electric circuit board (111) and battery assembly (11) in a very similar fashion to the nichrome wire heater represented in Lee”); Reply 29–30 (explaining Petitioner’s annotated figure wherein “the fiber rod is not encapsulated inside the bulb”); Ex. 1026 ¶¶ 29–30 (clarifying how the fiber in Petitioner’s proposed combination from its annotated Figure in the Petition extends to, and makes contact with, the outside of the bulb, putting the fluid into direct contact with the bulb; explaining various simple ways a POSA would understand to accomplish this). We credit Petitioner’s proposal and Mr. Kodama’s testimony in this regard. Therefore, we agree that Lee would not have to be “significantly modified or reimagined” as alleged by Patent Owner, nor would the inclusion of a bulb in the Lee device “render Lee inoperable” in view of the modifications to the Gilbert bulb included in Lee, as proposed by Petitioner. Resp. 30–31.” slip op. at 24
Patent outcomesUS 9,538,788 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,538,788 - Hanwha Solutions Corporation v. Maxeon Solar Pte. Ltd.No claims unpatentablePTAB · Feb 24, 2026 · IPR2024-01198 · APJ Jo-Anne M Kokoski · IPR · Final written decision
Claims 10–20 were not shown unpatentable because Petitioner did not establish the claimed metal impurities or a reason to combine Istratov’s gettering process with the cited solar-cell references.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“These disclosures, taken together, indicate that “metal impurities” are undesirable, and, accordingly, the term “metal impurities” is not meant to include intentionally added dopants. The undesirability of “metal impurities” is also demonstrated by the Specification’s instruction that “contaminants and/or impurities” are used interchangeably throughout. Ex. 1001, 5:8–9. In that regard, “iron, nickel, and/or chromium, among others” are the only exemplary metal impurities and/or metal contaminants identified in the Specification. Id. at 4:65–5:1 (“In an embodiment, the silicon substrate 202 can have contaminants and/or impurities 220, for example metal contaminants and/or metal impurities, such as iron, nickel and/or chromium, among others); 5:35–39 (“In an embodiment, the heating can include gettering contaminants, e.g., metal impurities and/or metal contaminants, from the substrate to the emitter region. In an example, the metal impurities and/or metal contaminants can be iron, nickel, and/or contaminants 520, e.g. metal impurities and/or contaminants, can be located in the second emitter region 512 . . . the metal impurities 520 can be iron, nickel and/or chromium, among others.”). And metal impurities and metal contaminants are both described as gettering from the silicon substrate to the emitter region. See id. at 5:5–9 (“A gettering process can be used to trap the metal impurities 220 in the emitter regions 212, reducing recombination within the silicon substrate 202 and improving overall cell lifetime.”); 5:35– 40 (“In an embodiment, the heating can include gettering contaminants, e.g. metal impurities and/or metal contaminant[s], from the substrate to the emitter region. In an example, the metal impurities and/or metal contaminants can be iron, nickel and/or chromium among others.”); 6:5–8 (“In an embodiment, the heating can getter 232 contaminants 220 from, or nearby, the surface 204 of the silicon substrate 202 and/or from within the silicon substrate 202 to the emitter region 212.”) Accordingly, the Specification conveys that “metal impurities” are metal contaminants that are detrimental to the electrical conduction of solar cells.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Petitioner fails to sufficiently demonstrate by a preponderance of the evidence that a POSITA would have been motivated to look to Istratov’s gettering process to improve Choi’s solar cell. Although Petitioner argues that a POSITA would have been motivated to look to Istratov’s gettering process upon identifying detrimental levels of metal impurities in Choi’s substrate, neither Petitioner nor Dr. Holman levels of metal impurities in Choi’s substrate, what level of metal impurities would be “detrimental,” or what detriment the metal impurities would cause. In that regard, Petitioner does not direct us to, nor do we discern, any teachings in Choi regarding the presence of metal impurities in the silicon substrate, let alone iron and/or copper impurities such as those described in Istratov.” slip op. at 24
- ExcludeMotion to exclude, deniedDenied
“We agree with Petitioner. As the Board indicated in Chicago Mercantile Exchange, whether a document qualifies as a printed publication requires a legal determination based upon evidence and “the issue of whether there is sufficient evidence in the record . . . should be presented in the patent owner response—not a motion to exclude.” Chicago Mercantile Exchange, Paper 35 at 52. Although addressing the admissibility of evidence (authenticity or hearsay) underlying the factual determinations of whether Exhibits 1018, 1034, and 1120 may be the subject of a motion to exclude, Patent Owner’s arguments in the Motion address whether there is sufficient evidence to establish that these exhibits are prior art, not the general admissibility of the documents. See Mot. 3–6; Chicago Mercantile Exchange, Paper 35 at 52. be excluded. These exhibits, for the most part, are offered to support Dr. Holman’s testimony regarding the background of the technology (Ex. 1003 ¶¶ 42, 43, 45–52, 56, 57 (citing Ex. 1018), 55, 67 (citing Ex. 1034)) or what the ordinarily skilled artisan would have understood (Pet. Reply 11 (citing Ex. 1120); Ex. 1089 ¶¶ 46–48, 56, 59, 60, 69 (citing Ex. 1120)). Furthermore, Exhibit 1018 was authored by Dr. Holman, and is identified in the curriculum vitae appended to Dr. Holman’s declaration in support of the Petition. Ex. 1003, 224 (App’x. A). Accordingly, we deny Patent Owner’s motion to exclude” slip op. at 32
Patent outcomesUS 11,251,315 not shown unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 11,251,315 - Hanwha Solutions Corporation v. Maxeon Solar Pte. Ltd.Some claims unpatentablePTAB · Feb 24, 2026 · IPR2024-01203 · APJ Avelyn M Ross · IPR · Final written decision
Claims 1–11 are unpatentable as obvious; claim 12 was not shown unpatentable because the evidence did not establish that Froitzheim’s silver contact was formed over silicon dioxide.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have had (i) an advanced degree in electrical engineering, mechanical engineering, applied physics, chemistry, materials science, or a related discipline and (ii) at least one year of experience 7 Neither Petitioner nor Patent Owner raises issues of objective indicia of nonobviousness. designing, developing, or researching the design and/or manufacture of solar cells or related technologies. Alternatively, a POSITA [i.e., a person of ordinary skill in the art] would have had (i) a bachelor’s degree in the aforementioned disciplines and (ii) at least two years of experience designing, developing, or researching the design and/or manufacture of solar cells or related technologies. Less work experience may be compensated by a higher level of education, and vice versa.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We construe claim terms according to the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc); 37 C.F.R. § 42.100(b). Under Phillips, we give claim terms “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. “Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We are persuaded that Petitioner has shown a reasonable expectation of success in the combination of Froitzheim and Gan. Petitioner explains that the combination of Froitzheim and Gan simply replaces one emitter, i.e., Froitzheim’s diffused emitter, with the polysilicon emitter of Gan. Pet. 36. According to Petitioner, a person of ordinary skill in the art would have also readily understood how to replace a diffused emitter with a polysilicon emitter and oxide layer [and] would have understood that instead of diffusing boron into the substrate’s back side as taught by Froitzheim, a [person of ordinary skill in the art] would instead follow the manufacturing technique taught by Gan. Pet. 37 (citing Ex. 1005, 246). Petitioner explains that the Gan processes are well-known and routine, and Dr. Holman states that “modifying Froitzheim in view of Gan simply involves using Gan’s known technique of a polysilicon emitter and oxide layer with Froitzheim’s known solar cell to improve Froitzheim’s solar cell in a similar way.” Pet. 37 (citing Ex. 1003 ¶ 144). For example, Petitioner directs our attention to “multiple instances” in which oxide layers and polysilicon emitters have been implemented successfully in the art. Pet. 37 (citing Ex. 1005, 246; Ex. 1006 ¶ 22; Ex. 1046, Abstr., 1121; Ex. 1003 ¶ 145). Furthermore, Gan’s statement that “cell performance can be improved if the diffused-emitter is replaced with the polysilicon emitter” and “polysilicon emitters with low J0 and ρc can be obtained with a very small fraction of interfacial oxide breakup” indicate a reasonable expectation of success. Ex. 1005, 245, 249. Gan also states that “polysilicon emitters with these qualities can be quite useful for silicon concentrator solar cells.” Ex. 1005, 249. Thus, we are persuaded that Petitioner has demonstrated that a person of ordinary skill in the art would have had a reasonable expectation of success in combining Froitzheim and Gan.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We are not persuaded the record evidence rises to the level of a teaching away. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). And “teaching away” requires more than the mere expression of a general preference.” Galderma Labs., L.P., v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013). Notably, our reviewing court has determined that a reference can distinguish prior art in order to show the novelty of an invention without teaching away from combining the prior art with the invention disclosed in the reference. See Ricoh Co. v. Quanta Computer Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008). Here, Li prefers a “heterogeneous PN junction” and states that “a PN junction is prepared by a low-temperature deposition method, which avoids a conventional diffusion process at 800–1000°C. Such high-temperature process will cause more defects or contamination in silicon material, which will affect the improvement of cell efficiency.” Ex. 1008, 4. But, Li’s preference for lower temperature diffusion processes does not amount to a teaching away from the broader disclosure. In fact, Li acknowledges that “[t]he silicon thin film can be prepared by any deposition method,” including conventional processes at higher temperatures. Ex. 1008, 4 (emphasis added). And, while Patent Owner asserts that “[d]eposition methods are not relevant to the parties’ dispute, which is over deposition temperature” (Sur-reply 17), the deposition method employed includes its deposition temperature. See Ex. 1008, 4 (Li describing “conventional” diffusion processes at temperatures of 800–1000° C). Thus, just because Li teaches one way of depositing its silicon thin film using a low-temperature deposition method does not mean that Li teaches away from high-temperature processes. Li’s teachings do not discredit or discourage high-temperature processes in a manner that may be said to teach away.” slip op. at 51
Patent outcomesUS 8,222,516 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,222,516 - PTAB · Jan 14, 2026 · PGR2025-00059 · APJ Devon Zastrow Newman · PGR · Institution
The Board instituted post-grant review of claims 1–4 on all four asserted grounds, finding a sufficient preliminary showing of obviousness and lack of enablement.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“V. CONCLUSION Petitioner has, at this stage, established that it will more likely than not prevail in showing that at least one of the challenged claims is unpatentable. This determination is, however, based on a preliminary record and is not final on any issues of patentability. We will make a final determination on the patentability of the challenged claims, as necessary and applying the preponderance of the evidence standard, based on a fully developed record through trial. VI. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 324(a) post grant review of claims 1–4 of the ’233 patent is hereby instituted on the grounds set forth in the Petition, commencing on the entry date of this Order, and pursuant to 35 U.S.C. § 324(d) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; and” slip op. at 40
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not proffer a description of a POSA. See generally, Prelim. Resp. For the purposes of this decision, on the record at this time, we find that Petitioner’s definition appears consistent with the level of skill shown in the prior art references of record, and apply it herein. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). We invite the parties to further address the definition of a POSA during trial should they find it necessary.” slip op. at 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“In addition, the opinion stated in the Pomper Declaration that “the term of ‘low molecular weight’ is well accepted in the chemical arts” and the declarant “recognize[s] that low molecular weight compounds would have a molecular weight of typically from about 50 Daltons to about 1,500 Daltons” is offered by a co-inventor. We, as factfinder, have discretion to weigh the credibility of expert witnesses and to give each item of evidence such weight as appropriate. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”). In this case, we find that the published references on metabolites do not support the opinion. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d at 1368 (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”) US-121, of which Dr. Pomper is lead inventor, also uses the term “low molecular weight”—without further characterization of the term—and is uninformative as to the meaning of the term. See Ex. 1006, ¶ 12. In addition, Patent Owner’s definition does not appear to apply to all compounds claimed in US-121.5” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“limited to Patent Owner’s proposed “from about 50 Daltons to about 1,500 Daltons.” The cited evidence relied on in the Pomper Declaration to define “low molecular weight” as a term well accepted in the chemical arts relates to metabolomics and metabolites. See Ex. 1002, 169, (specifically, ¶ 17 of Dr. Pomper’s declaration). Patent Owner admits that Dr. Pomper’s testimony is about molecules that differ from the claimed imaging and radiotherapeutic agents targeting FAP-α, but argues that the testimony is still relevant for purposes of explanation. Prelim Resp. 21. While it may be relevant, the testimony is not persuasive in light of the Specification. We find the uncontested fact that several of the B moieties alone—without the A moiety or L linker—specifically identified in the ’233 patent fall outside of Patent Owner’s proposed definition persuasive, as we normally do not interpret claim terms in a way that excludes examples disclosed in the specification. See, e.g., Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1305 (Fed. Cir. 2007) (rejecting proposed claim interpretation that would exclude disclosed examples in the specification). The cases cited by Patent Owner supporting that a claim term may be construed to exclude embodiments where the prosecution history supports such construction are factually distinguishable from the instant case as they regard instances of specific prosecution history disclaimer, clear prosecution disavowal, or relate to a specific definition of the terms in the Specification for the term being construed. Here, “low molecular weight” is not defined in the Specification, but, as Petitioner argues (see Pet. 21–25) is characterized as “demonstrat[ing] faster pharmacokinetics and a higher specific signal within clinically convenient times after administration” and that it “can be synthesized in radiolabeled form more easily.” Ex.1001, 13:33–50, 14:56– 16:14, 17:9–20. We are persuaded by the testimony of Dr. Zeglis, Petitioner’s declarant, that compounds weighing over 1500 Da may share those same behaviors, along with certain identified B moieties disclosed as embodiments. See Ex. 1003 ¶ 83.” slip op. at 10
Claim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 12,115,233
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.