# Appendix — Semiconductor Energy Laboratory Co. v. Samsung Electronics Co.

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Appendix
- **Published:** January 1, 2001
- **Citation:** 531 U.S. 1190

## Text

© pedal
FILED
0 127 JUL21 200

o-

IN THE
Supreme Court of the United States

SEMICONDUCTOR ENERGY LABORATORY CO., LTD.,
Petitioner,
Vv.
SAMSUNG ELECTRONICS Co., LTD.,
SAMSUNG ELECTRONICS AMERICA, INC.,
AND SAMSUNG SEMICONDUCTOR, INC.,
Respondents.

Petition For Writ Of Certiorari to the
United States Court of Appeals
for the Federal Circuit

APPENDIX TO
PETITION FOR WRIT OF CERTIORARI

J. ALAN GALBRAITH

Counsel of Record

DAVID S. BLATT

WILLIAMS & CONNOLLY LLP
725 Twelfth Street, N.W.
Washington, D.C. 20005
(202) 434-5000

JOEL DAVIDOW

ABLONDI, FOSTER, SOBEN &
DAVIDOW, P.C.

1150 Eighteenth Street, N.W.

Ninth Floor

Washington, D.C. 20036-4129

(202) 296 3355

Attorneys for Petitioner

A REA RE OAT ETA: NICS ATONE OH
WILSON-EPES PRINTING Co., INC. — (202) 789-0096 -— WASHINGTON, D.C. 20001

iC2ADP

APPENDIX TABLE OF CONTENTS
Page
Appendix A:

Opinion of the United States Court of Appeals of
the Federal Circuit, March 2, 2000 ...........ssessesses la

Appendix B:

Order amending the Opinion of March 2, 2000,
RIE Ey SD See Critikon, Inc. v. Becton Dickinson Vascular Access, Inc., 120
F.3d 1253, 1257 (Fed.Cir. 1997).

° Prior to the 1992 amendment, Rule 56 defined information as
material when “there is a substantial likelihood that a reasonable examiner
would consider it important in deciding whether to allow the application
to issue as a patent.” 37 C.F.R. § 156 (1989). The Federal Circuit has not
discussed the meaning of the new Rule 56 which appears narrower, i.e.,
less information is defined as material, than the former version of Rule 36.
Nevertheless, the new (1992) version of Rule 36 does not purport to alter
the previously settled principle that a “but for” test is inappropriate
determinations of materiality. See Merck & Co., Inc. v. Dambury
Pharmacal Inc., 373 F.2d 1418, 1421 (Fed.Cir. 1989) (rejecting “but for”

49a

information is material to patentability when it is not
cumulative to information already of record or being made of
record in the application, and

(1) It establishes, by itself or in combination with other
information, a prima facie case of unpatentability of a
claim:’ ,

or

standard of materiality under pre-1992 Rule ‘56). In other words,
Materiality does not require a finding that ‘but for” the inequitable
conduct, the patent would not have issued.

Also worth noting is that the new version of Rule 36 does not refer to a
hypothetical reasonable examiner or to any standard for an examiners
competence. Application of the new rule does not require the use of any
such standard. In any event, it is clear that patent examiners are not
presumed to be omniscient, i.e., to know all the prior art. together with its
relevance and significance. Were this not so, there would be no need for a
duty of disclosure of prior art. But this duty is vital given that patent
prosecution proceedings are typically ex parte. and examiners, while
technically skilled, are not omniscient. Consistent with this, examiners are
properly characterized as “quasi-judicial officials trained in the law and
presumed to ‘have some expertise in interpreting the [prior art] references
and to be familiar from their work with the level of skill in the art and
whose duty it is to issue only valid patents.” ” Markman v. Westview
Instruments, Inc., 52 F.3d 967. 986 (Fed.Cir.1995) (quoting American
Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1359
(Fed.Cir.1984)). Thus, examiners are skilled in the art insofar as they are
technically competent to understand information and references in some
technical or scientific field, but they are not of ordinary skill in the art to
the extent that this might imply that they are aware of all the pertinent
prior art.

” Rule 56 further provides that “[a] prima facie ease of unpatentability
is established when the information compels a conclusion that a claim is
unpatentable under the preponderance of evidence, burden-of-proof
standard, giving each term in the claim its broadest reasonable
construction consistent with the specification, and before any
consideration is given to evidence which may be submitted in an attempt
to establish a contrary conclusion of patent ability.” 37 C.F.R. § 1.56(6).

50a

(2) It refutes, or is inconsistent with, a position the
applicant takes in:

(i) Opposing an argument of unpatentability relied on by
the Office, or

(ii) Asserting an argument of patentability.

Thus, under the new Rule 56, materiality is phrased in
terms of whether a misrepresentation, if corrected, or an
omitted reference, if disclosed, would, itself or together with
other information, give rise to a prima facie (i.e., rebuttable)
case of unpatentability. If so, the omitted reference or
misrepresentation is material. But this is not the only test of
materiality. The omitted reference or misrepresentation may
also be material if it refutes or is inconsistent with the
applicant’s patentability arguments.

Whether a withheld reference or omitted information is
cumulative plays a prominent role in this case. Thus, it is
important to note that while cumulative information is not
material under Rule 56, a withheld reference may be highly
material when it discloses a more complete combination of
relevant features, even if those features are before the patent
examiner in other references. See, e.g., Molins, 48 F.3d at
1180; LaBounty, 958 F.2d at 1075-76; In re Jerabek, 789
F.2d 886, 890 (Fed.Cir.1986). Thus, where, as here, the
invention is a combination of elements, an undisclosed prior
art reference that contains more of the combined elements
than the disclosed references is not cumulative simply
because various elements of the invention appear in other
disclosed references.

Inequitable conduct requires more than mere materiality of
the withheld or misrepresented reference or information; it
also requires an intent to act inequitably. And no presumption
of intent to deceive arises merely from the materiality of an
undisclosed reference. See Halliburton, 925 F.2d 1435, 1442.
Even gross negligence “does not of itself justify an inference

Sla

of intent to deceive.” /d. Rather, such conduct “can support
an inference of intent only when, ‘viewed in light of all the
evidence, including evidence indicative of good faith,’ the
conduct is culpable enough ‘to require a finding of intent to
deceive.’ ” Jd. (quoting Kingsdown, 863 F.2d at 876). Yet, it
is also true that a patentee facing a “high level of materiality
and clear proof that it knew or should have known of that
materiality, can expect to find it difficult to establish
‘subjective good faith’ sufficient to prevent the drawing of an
inference of intent to mislead.” Critikon, 120 F.3d at 1257. In
such circumstances, a “mere denial of intent to mislead
(which would defeat every effort to establish inequitable
conduct) will not suffice.” /d.

The test, then, requires a consideration of, and a judgment
on, the totality of the circumstances. In the words of the
Federal Circuit, courts must determine whether the conduct
“in its totality manifests a sufficiently culpable state of mind
to warrant a determination that it was inequitable.” Molins, 48
F.3d at 1181. This sensible formulation recognizes that direct
proof of intent is rarely available and that it is impossible to
scrutinize directly the workings of the human mind.

It is against these general legal principles that Samsung’s
claims of inequitable conduct must be assessed. Thus,
analysis of Samsung’s claims will proceed by an _ initial
assessment as to the materiality of any withheld or mis-

_ characterized information during SEL’s prosecution of the
'636, ‘132, and ‘204 patent applications. An assessment of
SEL’s intent will follow.

Ill.
A. The ‘636 Patent Application

Samsung alleges two specific instances of inequitable
conduct by SEL during its prosecution of the ‘636 patent.
First, SEL submitted to the PTO as prior art the Japanese laid-
open Application No. 56-135968, assigned to Cannon K.K.

52a

(“the Canon '968 application”), which is also directed to
TFT’s. Specifically, SEL submitted the full 29-page Japanese
language version and a one-page partial English translation of
the Canon '968 application. Samsung contends that by
highlighting, through translation, only one of the many
elements in the Canon reference that was relevant to the ‘636
application, and by leaving the others untranslated, SEL
deliberately mischaracterized the importance of Canon and
attempted to conceal material information from the examiner.
Second, SEL also revealed as prior art a 1983 article by Dr.
CC, Tsai titled “Amorphous Si Prepared in a UHV Plasma
Deposition System,” which teaches the reduction of
impurities in amorphous silicon to improve performance in
electronic devices. SEL distinguished the Tsai article before
the PTO by claiming that it applied primarily to solar cells
and not TFT’s, and by stating that the current in the devices
discussed in the article runs in a perpendicular direction,
while the current in the type of TFT’s referred to in the ‘636
patent runs in a parallel direction. Samsung alleges that
SEL’s statements in this regard were disingenuous attempts to
distinguish the Tsai article from the ‘636 patent application,
and that they were contrary to its own knowledge and
inconsistent with its own position in other patent applications.

1. The Canon '968 Application

On November 15, 1993, in connection with its ‘636 patent
application, SEL disclosed approximately 90 references of
prior art to the PTO, including the Canon '968 application.
SEL submitted the full 29-page Japanese language version of
the Canon "968 application to the PTO, but not a full English
translation. Instead, it submitted a one-page document titled
“Partial Translation of JP-Laid Open 56-135968:” which
selectively translated for the PTO sections of the application
appearing both before and after the untranslated portions of
the Canon '968 application. Dr. Yamazaki testified that the

53a

partial translation had already been prepared in connection
with another patent application, and that he made the decision
that only certain portions of the Canon '968 application
should be translated and submitted to the PTO together with
the full Japanese language version in connection with the '636
application.

The partially translated portion of the Canon reference
discloses a silicon nitride gate insulator, one of the elements
of the asserted claims of the ‘636 patent. Dr. Yamazaki
testified that at the time he submitted the partially translated
Canon 968 reference, the silicon nitride gate insulator was
the only disclosure in the Canon '968 application that he
believed to be relevant to the ‘636 patent. Indeed, when he
disclosed the Canon "968 application to the PTO, he identified
its relevance only as “disclos[ing] the use of silicon nitride for
a gate insulating layer of a thin film transistor.”

Yet, this was not accurate; the untranslated portions of the
Canon '968 application ‘were also relevant to a consideration
of the patentability of the invention claimed in the '636
patent. In general, these portions were (a) the frequent
admonitions to prevent or limit atmospheric impurities in
semiconductor materials’ which provide an express
suggestion to employ teachings such as those found in the
Tsai article or the ‘423 or the ‘488 applications’ to reduce
carbon, oxygen and nitrogen impurities below the levels
claimed in the ‘636 patent, and (b) a description of the same
structure for a thin film transistor as is described in the '636
patent. More specifically, the untranslated portion of the

* In this regard, and indeed generally, the Court credits the testimony of
Samsung's witnesses Dr. Fonash, Dr. Tsai, and Dr. Meyerson over SEL’s
witnesses Dr. Lucovsky, Dr. Yamazaki whenever there is a conflict.

” That is SEL’s Japanese laid-open Application No. 59-33423 “the 423
application” 59-33488 (“the 488 application”), which were laid open
(published in Japan) on February 27, 1984.

54a

Canon '968 teaches avoiding exposure of the channel region
to impurities resulting from air or oxygen. Further, the
untranslated portion teaches the cleaning of the substrate by
etching part of it away, prior to depositing the amorphous
silicon. Further, it teaches that the substrate can introduce
impurities, and that washing alone is insufficient to avoid
impurities. Although other prior art disclosed by SEL during
the prosecution of the ‘636 patent, such as the Tsai article, '
teach avoidance of impurities, none [484] disclose or teach
the processing sequence useful in avoiding impurities, such as
etching the substrate. The translated portion of the Canon
'968 application submitted by SEL to the PTO omitted this
teaching.

It is also significant that the translated portion of the Canon
‘968 application describes a TFT structure that is somewhat
different from that described in the ‘636 patent, whereas the
structure described in the untranslated portion of the Canon
'968 application describes the same structure found in the
‘636 patent. Thus, the structure described in the untranslated
portion of the Canon "968 application has the same intrinsic
semiconductor layer made from amorphous silicon; the same
channel region sandwiched between the insulators; and (in
both the translated and the untranslated portions), the same
silicon nitride gate insulator as claimed in the '636 patent. To
be sure, other references cited to the PTO disclose the various
elements described in the '636 patent claims. Yet, no other
reference before the examiner contained as complete a
combination of the ‘636 elements as is disclosed in the un-
translated Canon '968 application.

Thus, contrary to SEL’s contention, Dr. Fonash’s
testimony convincingly establishes that the untranslated

'° Findings relating both to the nature of the Tsai article and to Dr.
Yamazaki's and SEL’s knowledge of it are set forth in the following
sections.

55a

portions of Canon are not merely cumulative, as they contain
a more complete combination of the elements-the intrinsic
amorphous silicon, the silicon nitride gate insulator, and the
admonition to avoid impurities—that are claimed in the '636
patent itself.'' Dr. Fonash further convincingly testified that
the untranslated portions of the Canon '968 application and
the Tsai article, taken together, would disclose a device
having every element of the asserted claims of the ‘636
patent. As Dr. Fonash put it, a fully translated Canon '968
application provides a “good blueprint” for making the exact
device described in the '636 patent, and additionally provides
the admonition to avoid impurities. The Tsai article,
discussed infra in more detail, discussed amorphous silicon
films with specific low levels of impurities within the claim
limitations of the ‘636 patent. Thus, Dr. Fonash concluded
that the fully translated Canon '968 application, when taken
together with the Tsai article, renders obvious the asserted
claims of the ‘636 patent. Moreover, he concluded that failing
to disclose the untranslated portions of the Canon application
would significantly hinder a patent examiner’s ability to
determine whether the ‘636 patent application was an
unobvious advancement over the prior art. In a grudging
admission of this, Dr. Yamazaki testified during the
inequitable conduct hearing that submitting a complete
translation of the Canon 968 application would have been a
“kinder thing” for him to do, and that a full translation
“would be more convenient” for the PTO.

Accordingly, the evidence is clear and convincing that
untranslated portions of the Canon '968 application contained
information highly material to the prosecution of the ‘636
patent application as they, together with other information,
establish a prima facie case of unpatentability. See 37 C.F.R.

'' Worth nothing in this regard is that Dr. Yamazaki acknowledged his
duty to provide the PTO with prior art references “most simlar to” his
claimed invention.

56a

§ 1.56. The evidence is also clear and convincing that the
fully translated Canon '968 application was knowingly
withheld from the PTO.

2. The Tsai Article

In the course of prosecuting the application that led to the
issuance of the ‘636 patent, SEL disclosed to the PTO as prior
art a 1983 article by Dr. Tsai titled “Amorphous Si Prepared
in a UHV Plasma Deposition System.” This article teaches
the reduction of impurities in amorphous silicon to improve
performance in electronic devices.

During the prosecution of the ‘636 patent application, SEL
sought to distinguish the Tsai article before the PTO by
suggesting that it applied primarily to solar cells rather than to
TFT’s. Further, SEL argued before the PTO that the Tsai
article was distinguishable in that the electrical current in the
devices discussed in her article runs in a_ perpendicular
direction, while the electrical current in the TFT’s referred to
in the ‘636 patent runs in a parallel direction. At the
inequitable conduct hearing, SEL, through the testimony of
Dr. Yamazaki, expressed the view that impurities such as
carbon and oxygen affect solar cells differently from TFT’s
and create different problems in the two devices. Thus, SEL
asserted both before the PTO and in the course of this
hearing, that teachings concerning the effects of impurities in
solar cells are not relevant to TFT’s.

The record as a whole discloses that SEL’s efforts to
distinguish the Tsai article before the PTO were neither valid
nor accurate. Thus, Dr. Tsai testified convincingly that her
article, which refers to “large area devices,” would have been
understood by those in the field, both at the time of its
publication and thereafter, to include devices made with
TFT’s as well as solar cells. Dr. Fonash agreed, testifying that
in 1983 at the time the Tsai article was published, he
understood the term “large area device” to include devices

57a

made with TFT’s. Dr. Yamazaki also testified that the current
active matrix display units that utilize TFT’s are large area
devices. In sum, the expert testimony convincingly
establishes that contrary to SEL’s representation to the PTO,
the Tsai article would have been understood by persons of
ordinary skill in the art in 1983 and thereafter to apply not
just to solar cells, but to TFT’s as well.

Record evidence reflects that Dr. Yamazaki, a
distinguished and accomplished solid state physicist, surely
knew this. Thus, his ‘423 and ‘488 Japanese laid-open
applications, which deal mainly with solar cells, expressly
‘state that the benefits of the lower levels of impurities
described in those applications also apply to insulated gate
field effect semiconductor device[s]” such as TFT’s. So, as
the ‘423 and the ‘488 laid-open applications reflect, Dr.
Yamazaki recognized by 1984 a clear connection between
solar cells and TFT’s in that the importance of reducing
impurity levels is applicable to both. Moreover, SEL was
prosecuting the ‘400 patent application, one of the original
patents-in-suit, at approximately the same time it was
prosecuting the ‘636 patent application. The 400 patent,
which is also directed mainly to solar cells, contains a figure
(figure 9) that illustrates that the invention applies to
insulated gate field effect transistors, as well.

In summary for the limited purpose of trying to persuade
the examiner that the Tsai article was not material, SEL
adopted a position contrary to its own knowledge, and
inconsistent with its own previously stated position on an
important issue before the PTO. Specifically, in its '423, ‘488,
and '400 patent applications, SEL asserts that its claimed
inventions, which are primarily directed to reducing
impurities in solar cells, are equally applicable to TFT’s. Yet,
in its prosecution of the ‘636 patent application, SEL
distinguished the Tsai article on the basis that its teachings
apply primarily to solar cells, not TFT’s. Thus, contrary to the

58a

clear statements found in the ‘423, ‘488, and ‘400
applications, SEL argued before the PTO, in effect, that
references concerned with the effects of impurities in solar
cells are not germane to a TFT’s patentability. SEL never
revealed this inconsistency to the PTO as required under 37
C.F.R. 1.56. .

Next, convincing expert testimony also contradicts SEL’s
representation to the PTO. that the Tsai article is
distinguishable based on the direction of the current. Thus,
Dr. Tsai and Dr. Fonash persuasively testified that it is
irrelevant to the effect of impurities in a device as to whether
current runs perpendicular or parallel. Accordingly, it is clear
from this record that the difference in the direction of current
flow was not a valid basis for distinguishing the Tsai article
from the ‘636 patent application. Moreover, Dr. Yamazaki, as
an accomplished solid state physicist, was certainly aware
that this was a distinction without significance as well.

Knowledge that the teachings of the Tsai article were
equally applicable to TFT’s was material to the prosecution
of the ‘636 patent application. The expert testimony of Dr.
Fonash clearly established that the Tsai article teaches the
making of amorphous silicon with impurity concentrations in
the amorphous silicon layer within the levels recited in all
claims of the ‘636 patent. The deposition testimony of Dr.
Lucovsky confirms this conclusion. Further, as the testimony
of Dr. Fonash convincingly establishes, the Tsai article, taken
together with the untranslated portions of the Canon ‘968
application, disclose a device having every element of the
[486] asserted claims of the ‘636 patent.'? Thus, the clear and
convincing evidence demonstrates that the Tsai article, taken

'? The Tsai article’s materiality to the 636 patent is confirmed by Dr.
Yamazaki’s own January 1995 letter to his licensing agent, in which he
acknowledges the Tsai article as being highly relevant to the '132 patent,
which, like the ‘636 patent, is directed to TFT’s, not solar cells.

59a

together with other information, would give rise to a prima
facie case of unpatentability, and was therefore highly
material to the prosecution of the ‘636 patent application.
Equally clear and convincing is that SEL knowingly
mischaracterized the article as not relevant to TFT” s, the
subject matter of the ‘636 invention.

B. The ‘132 Application

Samsung asserts that during the prosecution of the ‘132
patent application, SEL made a material misrepresentation
regarding information disclosed in a prior art reference, and
additionally failed to disclose at least three material prior art
references. Specifically, SEL represented to the PTO that the
levels of impurities recited in a prior art reference, U.S. patent
No. 4,766,477 issued to Nakagawa (“the Nakagawa ‘477
patent”), was 4x10" atoms/cm” when the correct value was
approximately eight times lower. Samsung alleges that SEL
deliberately misrepresented the figure in order to distinguish
the ‘636 patent from the Nakagawa ‘477 patent. Further,
Samsung contends that SEL deliberately withheld at least
three material prior art references, namely (1) the 1983 Tsai
article “Amorphous Si Prepared in a UHV Plasma Deposition
System,” (2) the ‘423 laid-open application, and (3) the ‘488
laid-open application.

A threshold issue is the relevance of any inequitable
conduct by SEL in connection with its prosecution of the ‘132
patent application. Samsung contends that where inequitable
conduct is found in an application that results in an issued
patent, all subsequent patents relying on the same chain of
priority, whether from divisional or continuation applications,
must also be held unenforceable, whether or not the
applicant’s inequitable conduct continued during the
subsequent application. Thus, Samsung invites the Court to
hold that inequitable conduct during SEL’s prosecution of the

60a

‘132 patent application necessarily renders unenforceable all
the claims of the '636 patent.

This argument requires an extension of existing law. To
date, no Federal Circuit case has squarely decided this issue,
although there is supporting Federal Circuit dictum, '* and
supporting district court case law, '* upon which Samsung

'? See Fox Indus., Inc. v. Structural Preservation Sys., 922 F.2d 801,
804 (Fed.Cir.1990) (stating that inequitable conduct “early in the
prosecution may render unenforceable all claims which eventually issue
from the same or a related application”); see also Consolidated Aluminum,
910 F.2d at 810-11 (inequitable conduct in procuring one patent-in-suit
may render related patents-in-suit unenforceable where the inequitable
conduct has an “immediate and necessary relation” to the equity patentee
seeks, namely enforcement of the related patents).

'* See Baxter Int'l. Inc. v. McGaw, Inc., 958 F.Supp. 1313, 1315—17
(N.D.II1. 1997) (Inequitable conduct in original application which gave rise
to multiple divisional applications resulted in all three resulting patents
being held unenforceable, even when inequitable conduct did not affect
the claims of one of the resulting patents); Jack Frost Lab., Inc. v.
Physicians & Nurses Mfg. Corp., 901 F.Supp. 718 729 (S.D.N.Y. 1995)
Inequitable conduct in original application that resulted in issued patent
also made later patent resulting from continuation application unen-
forceable); Golden Valley Microwave Foods, Inc. v. Weaver Popcorn Co.,
Inc., 837 F.Supp. 1444, 1478 (N.D.ind.1992) (Inequitable conduct in
prosecution of original application that resulted in issued patent could not
be purged in continuation application, and therefore, subsequent patent in
the same chain held unenforceable); Molins PLC v. Textron, Inc., 821
F.Supp. 1551, 1581 (D.Del.1992) aff'd, 48 F.3d 1172, 1187 (Fed.Cir.
1995) (Inequitable conduct in original application that resulted in an
issued patent likewise rendered later patent issued from a divisional ap-
plication unenforceable); East Chicago Mach. Tool Corp. v. Stone
Container Corp., 181 U.S.P.Q. 744, 748 (N.D.I11.1974), vacated in part,
185 U.S.P.Q. 210 (N.D.IIl. 1974) (Where inequitable conduct was com-
mitted in the original application, all patents stemming from it, whether
resulting from continuation or divisional applications, are unenforceable
for inequitable conduct regardless of whether the inequitable conduct
relates to any of the issued claims in the subsequent patents).

Closely read, none of these cases is precisely on point factually; none
involves, as here, misrepresentations or nondisclosure made with respect

6la

relies. In the [487] final analysis, however, this issue need not
be reached, as SEL’s inequitable conduct during its prosecu-
tion of the ‘636 patent application is sufficient to render the
claims of the ‘636 patent unenforceable. Nevertheless, given
the close relationship between the '636 and the ‘132 patents,’°
any inequitable conduct by SEL during its prosecution of the
‘132 is still relevant to show plan, motive, intent and pattern
and practice under Rules 402, 403, & 404(b), Fed.R.Evid.'®

to an earlier patent in a chain, but not repeated in connection with the later
challenged patent in the chain. Instead, the cited cases generally involve
misconduct with respect to an earlier patent that is repeated and hence
permeates. In a sense, the prosecution of the later, elated patent, See, e.g.,
Jack Frost, 901 F.Supp. at 718; Golden Valley. 837 F.Supp, at 1444; but
cf. Baxter, 958 F.Supp. at 1315-1318 inequitable conduct committed
during original application not repeated during prosecution of subsequent,
divisional application).

'S Again, the ‘636 patent resulted from continuation and divisional
applications from the application that issued as the 132 patent. See
appendix. Because the subject matter of the two patents is so closely
related, a terminal disclaimer was filed, giving the 636 patent the
expiration date of the ‘132 patent.

'© It is worth emphasizing the distinction drawn here between relying
on inequitable conduct relating to the ‘132 patent as an independent basis
for holding the ‘636 patent unenforceable which is not the course followed
here, and relying on inequitable conduct relating to the ‘132 patent as
evidence that may aid in the determination of SEL’s intent with respect to
conduct. relating to the prosecution of the ‘636 patent application. The
latter course is followed here. In other words, this Memorandum Opinion
proceeds on the basis that conduct related to the prosecution the ‘636 is
the sole basis for a finding of inequitable conduct, but that conduct
relating to the ‘132 is relevant and probative as it provides important
context, given the close relation of the patents and as it sheds light on the
intent underlying the conduct relating to the prosecution of the 636 patent.

A further digression on this subject is warranted. Although there do not
appear to be any Federal Circuit decisions involving or applying Rule
404(b), Fed.R.Evid., there can be little doubt that it is as applicable in
patent litigation as in other iitigation contexts. See Arcade, Inc. v.
Minnesota Mining and Mfg. Co., 24 U.S.P.Q.2d 1578, 1589 (E.D.Tenn.

62a
1. The Nakagawa ‘477 Patent

During SEL’s prosecution of the ‘132 patent application,
the PTO originally rejected some of its claims relating to low
levels of impurities based on the same or similar impurity
levels described in the Nakagawa ‘477 application. In
response, SEL, in an amendment filed on May 25, 1993.
argued that the rejected ‘132 claims should be allowed over
the Nakagawa application because the ‘132 claimed a lower
level of impurities. To prove this vital point, the amendment
submitted to the PTO included a calculation premised on an
incorrect, overstated figure for the atomic density of
amorphous silicon. Specifically, the figure used was 4 x 10 7°
atoms/cm* which was approximately eight times higher than
the correct value of 5 x 10” atoms/cm’. The result of using
this artificially inflated figure was that SEL’s calculation of
the level of impurities disclosed in the Nakagawa ‘477 patent,
4 x 10'’ atoms/cm? was also approximately eight times higher
than the figure actually disclosed in the Nakagawa ‘477
patent. Thus, the impurities range claimed in the ‘132 patent,
namely 5 x 10'* atoms/cm’ or less, appeared lower than that
disclosed and claimed in the Nakagawa ‘477 patent. On this
basis, the examiner allowed the previously rejected claims in
the '132 patent over the Nakagawa reference.

1991) (finding prior inequitable conduct to he 404(b) evidence from
which to infer intent to deceive during later patent prosecutions). Yet,
because the inequitable conduct defense is so often frivolously pied, see
Burlington Indus., Inc. v. Davco Corp., 849 F.2d. 1418, 1422 (Fed.Cir.
1988) (characterizing the practice of charging inequitable conduct in
almost every patent case as “an absolute plague”), district courts must take
care to ensure that assertions of the defense of inequitable conduct plus
reliance on Rule 404(b) do not become a license for a fishing expedition
into a patentee’s files concerning related patents and applications.
Discovery of such files should not be allowed absent a significant
threshold showing of inequitable conduct and relevance with respect to
the patent-in-suit.

63a

Dr. Yamazaki testified that the incorrect silicon atomic
density figure provided to the PTO was the result of a
careless error by Mr. Kunitaka Yamamoto, SEL’s in-house
patent representative who was assisting Dr. Yamazaki with
the ‘132 prosecution. Mr. Yamamoto confirmed in his
testimony that he had made the error. Yet, no satisfactory
explanation was provided by Mr. Yamamoto as to how he
arrived at this incorrect figure, [488] or why he was able to
provide the correct atomic density figure for silicon in later
applications.'’ Mr. Yamamoto merely testified that the
mistake occurred because his “memory of the number of
[silicon] atoms was incorrect.”

Dr. Yamazaki gave conflicting testimony on precisely how
he learned of the error. At one point during the hearing, Dr.
Yamazaki testified that I.B.M. had pointed out the mistake
sometime following a March 1995 licensing meeting. Later,
Dr. Yamazaki testified that I.B.M. had not revealed the
mistake, but rather that he had discovered the error while
preparing for this lawsuit. In any event, it is clear that neither
Dr. Yamazaki nor Mr. Yamamoto informed the PTO that an
error had been made regarding the silicon density figure
provided in connection with the prosecution of the ‘132
patent. Specifically, Dr. Yamazaki testified that he did not
disclose the error when it came to his attention because the
'132 patent had already issued. Rather, he thought that it was
sufficient that the correct figure had been submitted in
connection with SEL’s pending prosecution of the ‘636 patent
application.'"* Mr. Yamamoto also testified that he did not

'’ Specifically, SEL used the correct atomic density figure for
amorphous silicon in an April 1995 filing to the PTO in connection with
the ‘636 proceeding, and again later in the same proceeding in a
November 15, 1995 filing.

'® On this point, it is worth noting that Mr. Yamamoto testified that Dr.
Yamazaki suggested calling the error to the PTO’s attention, but that he,
Mr. Yamamoto, essentially vetoed this suggestion. This testimony is flatly

64a

think that he had any obligation to inform the PTO that an
error had been made during the prosecution of the then issued
‘132 patent.'”

implausible; the record leaves no doubt that Dr. Yamazaki pays close
attention to matters of this sort, and that in all matters relating to his patent
applications, Dr. Yamazaki ultimately calls the shots. This fact is made
pellucidly clear by Samsung's Exhibit No. 1417, a January 1996 letter
from Dr. Yamazaki to his licensing agent explaining Dr. Yamazaki's
decision to revoke a power of attorney in connection with the prosecution
of Application No. 425,455, an application in the ‘250 application-’132-
‘636 chain. See appendix. There, Dr. Yamazaki writes:

The Revocation was necessary because our view regarding certain
prior art references was entirely different from Mr. Ferguson's
[SEL’s patent attorney] view. That is, after we received a Notice of
Allowance, Mr. Ferguson suggested that it was necessary to submit
the references to the Patent Office as a duty of disclosure. To do
this, a Rule 62 continuation application was necessary. However,
contrary to Mr. Ferguson, it was our belief that these references
were not more material than the references cited during the
prosecution. We and Mr. Ferguson extensively discussed this matter
but could not finally reach a conclusion. Mr. Ferguson suggested
that even though we (SEL) believed that these references were
immaterial, he himself had an obligation to disclose the references
as a patent attorney since he believed the references were more
relevant than the prior art considered by examiners. In view of the
above situation, we decided to file the Revocation of Power of
Attorney in order to allow the application to issue as a patent.

There is no doubt, then, that it is Dr. Yamazaki who ultimately determines
what information is disclosed to the PTO in connection with his patent
applications.

'’ In this regard, Mr. Yamamoto testified that he had read pertinent
portions of the Code of Federal regulations and the PTO’s Manual of
Patent Examining Procedure and understood his duty of candor to the
PTO. More specifically, he confirmed his understanding of the duty of
candor as encompassing a duty to disclose to the FFO material information
resulting from Japanese patent proceedings, including any material prior
art or information cited or brought to his attention in any related foreign
application.

65a

The expert testimony of Dr. Fonash established by clear
and convincing evidence that disclosure of the correct figure
for the density of silicon was highly material to the
prosecution of the ‘132 patent application. Specifically, the
PTO originally rejected claims in the ‘132 patent application
based in part on the impurity concentrations disclosed in the
Nakagawa ‘477 application. Yet, as Dr. Fonash testified, the
use of an overstated silicon atomic density figure enabled
SEL to argue that the ‘132 patent application claimed a lower
level of impurities than the Nakagawa ‘477 application.
Disclosure of the correct silicon atomic density figure, then,
would have deprived SEL of this important argument in
support of patentability.

2. The Tsai Article”

On August 26, 1983, Dr. Yamazaki attended a lecture
given by Dr. C.C. Tsai at a [489] technical conference in
Tokyo. The lecture dealt with depositing amorphous silicon
films with specific low levels of impurities. Significantly,
these low impurity levels also fall within the claim limitations
of the ‘132 and the ‘636 patents. Dr. Yamazaki testified that
his work on lowering impurity levels preceded Dr. Tsai’s
speech, and that he had given a similar speech concerning his
own work in reducing levels of impurities at a Reston,
Virginia conference in May 1983. He initially testified that he
does not remember being particularly impressed with the Tsai
speech, given that it followed his own on _ reducing
impurities.” He continued that he did not really recall

” This is the same article that SEL mischaracterized as limited to solar
cells in connection with its prosecution of the ‘636 patent application See
supra Part ITl(A)(2)

1 Yet, in a later appearance on the witness’ stand, Dr. Yamazaki
admitted that Dr. Tsai’s presentation at the 1983 Tokyo conference “left
an impression” on him because it was a large conference and Dr. Tsai
was one of the few women speaker there.

66a

anything in particular about Dr. Tsai’s speech, including
whether she discussed specific impurity levels. This
testimony was not in accord with his testimony at a February
27, 1998 deposition, at which time he characterized his initial
impression of Dr. Tsai’s speech as being “spectacular.” Other
experts, including Dr. Meyerson, confirmed that the Tsai
article was a path breaking work of great importance.

At the time of the conference, Dr. Yamazaki received an
abstract of Dr. Tsai’s lecture. Dr. Tsai also testified that she
spoke with Dr. Yamazaki following her lecture, and that he
asked her for a copy of “Amorphous Si Prepared in a UHV
Plasma Deposition System,” the article on which her lecture
had been based. The Tsai article was in fact published later
that year in the Journal of Non-Crystalline Solids, Volume 59
& 60 (1983). Dr. Tsai stated that she directed her secretary to
send Dr. Yamazaki a reprint of the article and that it was
accordingly sent to him. Further, Dr. Tsai stated that all
conference attendees, including Dr. Yamazaki were sent a
copy of all conference papers in a bound volume.

During his first appearance at the hearing Dr. Yamazaki
testified that he did not recall having a conversation with Dr.
Tsai, or requesting a copy of her article at the August 1983
conference. Rather, he only remembered speaking to her for
the first time, apparently on an unrelated matter, one year
later at a conference in Snowbird, Utah. Further, Dr.
Yamazaki testified that he did not remember receiving
anything other than the abstract of her speech.”

In 1984, Dr. Yamazaki and others submitted an article, also
to the Journal of Non Crystalline Solids, which was published
later that year. The 1984 Yamazaki article cites to a 1984
article written by Dr. Tsai, which in turn references her 1983
article, “Amorphous Si Prepared in a UHV Plasma

~ The abstract alone does not discuss specific impurity levels.

67a

Deposition System.” Dr. Yamazaki testified that the portion
of his 1984 article that refers to the Tsai publication was
written by a co-author, and that he in fact never read the Tsai
reference.

Given the sequence of events, and the record as a whole,
Dr. Yamazaki’s testimony on the Tsai article is neither
plausible nor credible. It is simply implausible that Dr.
Yamazaki did not review and comprehend the significance of
the Tsai article in 1983-4 and thereafter. He testified that he
delivered a similar speech on lowering impurities just months
before he heard Dr. Tsai’s own presentation, a presentation
Dr. Yamazaki once described as “spectacular,” an assessment
consistent with Dr. Meyerson’s and Dr. Fonash’s. but
inconsistent with his (Dr. Yamazaki’s) own _ hearing
testimony. Further, Dr. Tsai distinctly remembers speaking
with Dr. Yamazaki following her presentation, and granting
his request for a reprint of her article. And, Dr. Yamazaki’s
own 1984 article, although a collaborative work, specifically
cites to a Tsai article which itself references her 1983 article.
Dr. Yamazaki, as an accomplished physicist with a focused
interest in this area and as an experienced inventor with a
demonstrated interest in securing patents, had every reason to
review and remember Dr. Tsai’s article.

Yet, the 1983 Tsai article was not disclosed as prior art
during the prosecution [490] the '132 patent. Rather, SEL
first disclosed the Tsai article to the PTO in November 1994
in connection with Application No. 214, ‘494 (“the '494
application”), which was soon thereafter abandoned.”° At that
time, SEL represented to the PTO that the Tsai article had
only recently come to its attention. Similarly, Dr. Yamazaki
testified at the inequitable conduct hearing that the Tsai
article was first called to his attention as relevant prior art to

*3 See appendix. The Tsai article was also disclosed to the PTO on June
7, 1995 during the prosecution of the ‘636 patent application.

68a

the ‘132 patent during licensing negotiations with Toshiba in
October, 1994, after the ‘132 patent had issued. Yet, as
already noted, this is simply not credible; the record as a
whole reflects that Dr. Yamazaki was well aware of the Tsai
article throughout the relevant period.

As was true in the prosecution of the ‘636 patent, the Tsai
article was highly material to the '132 patent application. In a
January 1995 letter to his licensing agent for the ‘132 patent,
Dr. Yamazaki himself stated that “we do not think there is a
more relevant reference than C.C. Tsai’s abstract of August
22, 1983 and his (sic) papers of December 1983, that you
know.” Despite the admission, Dr. Yamazaki testified at the
hearing that the abstract is not in fact relevant. Yet, any
attempt by Dr. Yamazaki to rely on a distinction between the
abstract and the entire article is unpersuasive. The record as a
whole leaves the Court with a clear conviction that Dr.
Yamazaki was well aware of the Tsai article throughout the
relevant period. And, expert testimony established by clear
and convincing evidence that the 1983 Tsai article was highly
material. Specifically, Tsai’s article teaches the making of
amorphous silicon with impurity concentrations in the
amorphous silicon layer within the levels recited in all claims
of the ‘132 patent. Dr. Fonash also testified that the Tsai
article shows “you in great depth, in greater detail, how to
attain those impurity levels, and has data showing how they
actually did attain those impurity levels.” He further testified
that the Tsai article is directed to “large area device
applications” which include TFT’s.

Claim 7 of the ‘132 patent is directed to a TFT with low |
impurities. Accordingly, the evidence clearly and
convincingly shows that disclosure of the Tsai article during
the prosecution of the '132 patent would have given rise to a
prima facie case of unpatentability.

69a
3. The '423 and ‘488 Laid-open Applications

Dr. Yamazaki is the sole inventor on the '423 and the '488
Japanese laid-open applications, which were filed in 1982 and
published by the Japanese patent office in 1984. Neither
reference was disclosed to the PTO during the prosecution of
the '132 patent. The ‘423 and the '488 laid-open applications
have very similar disclosures. The ‘423 and the ‘488 are
directed to solar cell technology, and specifically to the
efficiencies to be achieved in photoelectric devices from low
levels of impurities. Both laid-open applications conclude,
however, that the “present invention is also effective for an
insulated gate field effect semiconductor device having an
NIN junction (i.e., a junction comprising, in this order, a
source or drain, a channel forming region, and a source or
drain) or a PIP junction, as well as for a transistor having an
NIPIN or a PINIP junction.” ~* It is clear, therefore, that Dr.
Yamazaki himself knew and believed that the ‘423 and ‘488
laid-open applications, though directed to solar cells, were
also pertinent to TFT’s.

Yet, Dr. Yamazaki testified during the hearing that he
forgot that the ‘423 and ‘488 applications taught lowering
impurities in insulated gate field effect semiconductor de-
vices, and therefore he did not disclose them to the PTO in
connection with the ‘132 patent prosecution. Specifically, he
testified that because the ‘423 and the '488 dealt chiefly with
solar cells, he thought that neither had any relevance to the
‘132 patent application. This contention is belied by the terms
of the ‘423 and the '488 applications themselves, and by the
convincing expert testimony of Dr. Tsai and Dr. Fonash.
Most tellingly, though, Dr. Yamazaki’s contention is flatly

4 Indeed, the claims of the ‘423 are not limited to solar cells, but also
claim semiconductor devices. Also worth noting is that the prosecution
application was protracted, extending from 1982 to a rejection on appeal
in 1992.

70a

refuted by the fact that SEL referenced other works directed
primarily to solar cells during its prosecution of the ‘132
patent, including one of Dr. Yamazaki’s own U.S. solar cells
patents, U.S. Patent. No. 4,239,554, and an article by Magee
and Carlson in a publication called “Solar Cells.” Even if Dr.
Yamazaki’s testimony that he forgot about the specific
passages contained in the ‘423 and the ‘488 applications
describing their relevance to TFT’s were plausible, it is not
plausible that he forgot the scientific principle underlying
those passages, i.e., that the importance of reducing impurity
levels is germane to both solar cells and TFT’s.

Dr. Yamazaki also testified that he first became aware of
the significance of the '423 and the ‘488 through a rejection
by the Japanese patent office in his corresponding ‘250
application.” The rejection, mailed on October 19, 1994, was
based in part on the disclosures in Dr. Yamazaki’s '423 laid-
open application. Further, Dr. Yamazaki remembered
Toshiba representatives suggesting, during licensing
negotiations in October 1994, that the ‘423 and ‘488
applications were prior art to the ‘132 patent. Dr. Yamazaki
testified that he then looked into the matter. Significantly, Dr.
Yamazaki thereafter, in January 1995, told his licensing agent
that he considered the ‘423 and the '488 references to be more
material to the ‘132 patent than other references already
disclosed to the PTO. Tellingly, he further instructed his
licensing agent not to disclose the ‘423 and the ‘488 laid-open

> Although Dr. Yamazaki initially testified that he learned in 1992 that
the ‘250 had been rejected in part because of the ‘423 laid-open
application, he later clarified that it was not until 1994 that the ‘423
application was cited as a basis for the rejection. Had Dr. Yamazaki
discovered in 1992 that the '423 was a basis on which his ‘250 application
had been rejected, he would have been immediately placed on notice of
his duty to disclose the ‘423 in connection with his pending 132 patent
application. As Dr. Yamazaki testified, the Japanese '250 application has
One-to-one relationship with both the ‘132 one the ‘636 patents.

Tla

applications to 1.B.M., a prospective licensee.”” This ploy
failed as during his licensing meeting with I.B.M. in March
1995, 1.B.M. representatives specifically called attention to
the fact that Dr. Yamazaki had failed to disclose the ‘423 and
‘488 applications to the PTO as prior art in the ‘132
proceeding. Following the meeting with I.B.M. Dr. Yamazaki
submitted the references to the PTO on April 20, 1995 in
connection with the continuation application of the ‘494
application. Dr. Yamazaki also subriitted the ‘423 and the
‘488 references to the PTO on June 7, 1995, in connection
with the ‘636 patent application.

The materiality of the ‘423 and the ‘488 laid-open
applications to the prosecution of the ‘132 application is
pellucidly clear. Dr. Fonash convincingly testified that the
elements in claim 7 of the ‘132 patent are taught in the ‘488
and the '423 laid open applications. The disclosures in the
'423 were in fact, part of the basis on which the Japanese
patent office had earlier rejected the corresponding ‘250
application. Thus, disclosure of the ‘423 and the ‘488 laid
open applications during the ‘132 prosecution would have
given rise to a prima facie case of unpatentability. They were
highly material prior art.

C. Additional Omissions During the ‘132 and the ‘636
Patent Applications

Samsung, during the inequitable conduct hearing, alleged
two additional instances of materiai withholdings by SEL

° Specifically, in a January 1995 letter, Dr. Yamazaki instructed his
licensing agent that:

We think SEL’s laid-open applications indicated in our letter of
January 10, 1995 would be more relevant than any other materials.
Please be careful not to disclose these laid-open applications to
I.B.M.

72a

during the ‘132 and the ‘636 patent applications.”’ First
Samsung claims that SEL deliberately failed to disclose as
prior art Japanese Patent No. 58-2073 issued to Sony (“the
Sony ’2073 patent”), even though it was aware that the Sony
‘2073 patent was a basis on which the Japanese patent office
ejected its corresponding '250 patent application. Second,
Samsung contends that SEL deliberately failed to disclose the
materials [492] produced in connection with Dr. Yamazaki’s
1983 Reston Virginia speech, even though these materials
discuss the importance of low levels of impurities in
electronic devices.

1. The Sony '2073

Dr. Yamazaki testified that in 1992, when he originally
received the rejection of the ‘250 Japanese laid-open
application, the Sony '2073 was cited as one basis for the
rejection.“* Mr. Yamamoto, who also learned of the basis for
the ‘250 rejection in 1992, thus initially instructed SEL’s
patent attorney to disclose the Sony ‘2073 reference to the
PTO in connection with an application within the '250
application-'132-'636 chain.”” Inexplicably, SEL later
instructed its patent attorney to file an Information Disclosure
Statement (“IDS”) in connection with the application that
omitted the Sony '2073 reference. The '250 application was
finally rejected by the Japanese patent office in October 1994
based on the disclosures in the Sony ‘2073 and Dr.

77 These additional allegations of inequitable conduct were raised for
the first time at the hearing. Accordingly, the evidence adduced
concerning these allegations is considered for the limited purpose of
ascertaining SEL’s motive, plan, and intent with respect to the ‘636 patent.
See Rules 402, 403, 404(b), Fed. R. Evid.

78 The Japanese patent office later cited to the ‘423 laid-open
application as an additional basis for rejection.

° Specifically, this was Application No. 885,643, which was filed on
May 19, 1992, and which was later abandoned. See appendix.

73a

Yamazaki’s own ‘423 laid-open application. Yet, the Sony
'2073 was not disclosed as prior art during the prosecutions of
the ‘132 or the '636 patents. And significantly, the Sony ‘2073
patent was not a reference that was asserted against SEL by a
prospective licensee, as were the Tsai article and the '423 and
'488 applications that were eventually cited to the PTO by
SEL in the ‘636 proceeding, but omitted from the ‘132
proceeding.

Thus, by 1992, SEL was aware that the '250 application,
which Dr. Yamazaki conceded has a “one-to-one”
relationship with both the ‘132 and the '636 patents,” had
been rejected by the Japanese patent office based in part on
the Sony '2073 patent. Yet, it failed to disclose the reference
to the PTO despite the specific admonitions found in Rule
56."' Further, Dr. Fonash testified that the Sony '2073
combined with the '423 application rendered obvious every
element of Claim | of the '132 patent. Thus, the Sony '2073
was clearly a highly material reference that came to the
attention of Dr. Yamazaki during the '132 application and
well before the prosecution of the ‘636 application.

” Both of which also rely on the '250 application for priority stemming
from the ‘250 application's May 1984 filing date. This, of course, is
significant in assessing the patentability of the invention claimed in the
‘132 and '636 patents.

*' In connection with an applicant's duty to disclose all information
known to be material to patentability, 37 C.F.R. § 1.56 specifically
“encourages” applicants to examine

(1) Prior art cited in search reports of a foreign patent office in a
counterpart application, and

(2) The closest information over which individuals associated
with the filing or prosecution of a patent application believe any
pending claim patentability defines, to make sure that any material
information contained therein is disclosed to the Office. ;

74a
2. The Reston Materials

Dr. Yamazaki testified that his May 1983 speech in Reston,
Virginia concerned the development of low impurity levels in
the semi conductor layer. The speech was thus antecedent to,
and concerned the same subject matter as, the August 1983
Tsai speech. Notably, Dr. Yamazaki conceded that the speech
and related materials disclose the importance of low levels of
impurities and “would be important” on this issue. An
abstract from Dr. Yamazaki’s speech was published, and he
eventually published a full paper in the Journal of Non-
Crystalline Solids. SEL did not disclose any of these
materials to the PTO during its prosecution of either the ‘132
or the ‘636 patent applications. And significantly, unlike the
references disclosed in the '636 proveeding but not in the ‘132
proceeding,” none of these materials was asserted against
SEL by a prospective licensee in the course of licensing
negotiations on these patents.

Dr. Yamazaki gave inconsistent testimony with regard to
the materiality of his Reston speech and materials. He
initially testified at the hearing that he only became aware of
[493] the importance of the Reston materials during the
Spring of 1996, and even then, only considered them to be
important with regard to the '204 patent. Dr. Yamazaki
testified that he did not submit the materials to the PTO
because the ‘204 patent had issued prior to the Spring of
1996. Later, however, Dr. Yamazaki seemed to retreat from
this position, stating that he did not understand the Reston
materials to be prior art, even with regard to the '204 patent.
Further, Dr. Yamazaki stated that his discussion at Reston
was in fact cumulative of other references cited during the
‘636 prosecution. Yet, Dr. Yamazaki also _ stated,
inconsistently, that the one-page abstract from his Reston
speech did not overlap with other references cited. In any

* Such as the Tsai article and the ‘423 and ‘488 laid open applications.

75a

event, the record is inconclusive on whether the Reston
speech was material prior art.

D. The '204 Patent Application

Samsung alleges two instances of inequitable conduct by
SEL during its prosecution of the ‘204 patent. First, Samsung
contends that SEL deliberately withheld reliable test results
which conclusively established that prior art devices attained
lower impurity levels than those claimed in the '204 patent.
Second, Samsung contends that SEL knowingly overstated
the efficiency levels achieved in the '204 patent in arguing for
patentability.

Again, the threshold issue is the relevance of any
inequitable conduct by SEL in connection with its
prosecution of the '204 patent. And, in this regard, it is
significant that the '204 patent is not a part of the ‘250
application-’132-'636 chain. Samsung contends, however, that
where inequitable conduct is found in an application that
results in an issued patent, that misconduct may render a
closely related patent-in-suit unenforceable. This contention
is an application of what is sometimes referred to as the
“infectious unenforceability” doctrine. Relying on_ this
doctrine, Samsung contends that because the '204 patent and
the ‘636 patent have a common inventor, common owner,
similar prior art references, and a similar subject matter (i. e.,
inventions relating to low impurity levels), inequitable
conduct during the prosecution of the '204 patent may be
sufficient to render the ‘626 patent unenforceable.

This argument like Samsung’s argument in connection
with the ‘132 patent, also requires an extension of existing
law. To date, no Federal Circuit decision has applied the
infectious unenforceability doctrine based solely upon such
commonalities. See Consolidated Aluminum, 910 F.2d at 812
(infectious unenforceability applied where inequitable

76a

conduct during prosecution of one patent “permeated the
prosecution of the other” patents-in-suit).”> And, because
SEL’s inequitable conduct during its prosecution of the ‘636
patent application is sufficient to render the claims of the ‘636
patent unenforceable, this issue need not be reached.

Moreover, the alleged misconduct during the prosecution
of the '204 patent is too remote from the patent-in-suit to be
probative of SEL’s plan, motive, intent and pattern and
practice with regard to-the ‘636 patent. See Fed.R Evid. 402.
403, & 404(b). The information allegedly withheld and
mischaracterized during the prosecution of the 204 patent is
not information that was material to the prosecution of the
'636 patent. And, there is no suggestion that the alleged
misconduct was connected to, or of consequence, during
SEL’s subsequent prosecution of the ‘636 patent. Thus,
Samsung has failed to establish the relevance of the alleged
misconduct with respect to the patent-in-suit.

IV.

It is clear that SEL knowingly made several highly material
withholdings and [494] mischaracterizations during the
prosecution of its ‘132 and '636 patent applications. The issue
of intent remains. And in this regard, it is worth restating that

* In Consolidated Aluminum, the Federal Circuit found that the
patentee’s inequitable conduct during the prosecution of one patent
enabled it to make “argument([s] it could not have made” in prosecuting
the applications that became the other patents-in-suit. 910 F.2d at 811.
Therefore, the patentee’s misconduct “permeated the prosecution of the
other patents-in-suit. id. at 812. On this basis, the court held that the
inequitable conduct in prosecuting the one patent had the “immediate and
necessary relation” to the equity sought by the patentee, namely the
enforcement of the other patents-in-suit, to render them similarly
unenforceable. /d. at 811-812. In the instant case, there is no such relation
between the alleged misconduct during the prosecution of the ‘204 patent
and the sought after enforcement of the '636 patent.

T7a

the “materiality of an undisclosed reference does not presume
an intent to deceive.” Halliburton, 925 F.2d 1435. Yet,
where, as here, a patentee faces a “high level of materiality
and clear proof that it knew or should have known of that
materiality, it can expect to find it difficult to establish
‘subjective good faith’ sufficient to prevent the drawing of an
inference of intent to mislead.” Critikon, 120 F.3d at 1257. In
such circumstances, a “mere denial of intent to mislead
(which would defeat every effort to establish inequitable
conduct) will not suffice.” Jd. In the final analysis, intent is a
judgment that must be made on the totality of the
circumstances; courts must determine whether an applicant’s
conduct, when “viewed in light of all the evidence, including
evidence indicative of good faith, . . . is culpable enough to
require a finding of intent to deceive.” Halliburton, 925 F.2d
at 1443.

In the instant case, a review of the record as a whole points
clearly and convincingly to the conclusion that SEL’s conduct
before the PTO with regard to the ‘636 is sufficiently culpable
to warrant a finding of intent to deceive. The evidence clearly
reveals that Dr. Yamazaki is an accomplished inventor who is
intimately involved in the prosecution of his patent
applications. As he testified, “patents are my life. They are
very important to me.” Securing a patent on the ‘636, given
its revenue generating potential, was particularly important to
Dr. Yamazaki and his company. In pursuit of this goal, the
evidence shows clearly that Dr. Yamazaki compromised his
fundamental duty of candor to the PTO.

Thus, SEL submitted to the PTO a full Japanese language
version of the Canon ‘968 application, but only a one-page
partial English translation. The partially translated portion of
Canon disclosed only one of the elements of the asserted
claims in the ‘636 application, the silicon nitride gate
insulator. Further, SEL identified the relevance of the Canon
968 application to the PTO only as "disclos[ing] the use of

78a

silicon nitride for a gate insulating layer of a thin film
transistor.” Yet, clear and convincing expert testimony
established that the untranslated portions of the Canon '968
application disclosed other elements of the structure found in
the ‘636 patent; i.e. the same intrinsic semi conductor layer,
the same sandwich structure, and the admonition to avoid
impurities. The Canon '968 thus contained the most complete
combination of the elements” described in the ‘636 patent.
These same elements, such as the limitation of an intrinsic
semiconductor layer, were used by SEL to distinguish the
‘636 patent application from prior art. And, given that Dr.
Yamazaki decided to submit just a partial translation of
Canon, it is simply not credible that Dr. Yamazaki was
unaware that the untranslated portions of the Canon '968
application disclosed the additional elements described in his
'636 patent application. These elements, of course, formed a
basis for SEL’s patentability argument.

SEL contends that its decision to provide the PTO with a
full Japanese language version of the Canon '968 application
and a partial English translation along with 90 other
references of prior art, is indicative of its good faith
compliance with the duty to disclose. Yet, far more plausible,
on this record, is that SEL’s submission of a partial
translation was an effort to conceal from the PTO the full
importance of the Canon '968 application; i.e., that it
disclosed the same structure found in the '636 patent, and not
merely one of its elements, While SEL correctly notes that
the patent examiner could have secured a full translation from
within the PTO, SEL’s brief statement of relevance
identifying only the silicon nitride gate as pertinent, coupled
with the partial translation disclosing that element, certainly
removed any incentive to do so. Thus, the evidence points

* That is, in addition to the silicon nitride gate insulator.
*> See Manual of Patent Examining Procedure § 901.05(d).

79a

clearly and convincingly to the conclusion that (1) SEL knew
that a full translation of Canon, which disclosed the same
TFT structure as described in the ‘636, would decrease the
likelihood of the ‘636 patent being issued, and (2) it
knowingly concealed the full importance of the Canon ‘968
reference in an effort to mislead the PTO.

SEL also disclosed to the PTO the Tsai article, which, as
expert testimony clearly and convincingly established, is
highly material to the subject matter of the ‘636 patent, as it
teaches the making of amorphous silicon with impurity
concentrations within the levels recited in all claims of the
‘636 patent. Also clear from the record is that SEL’s efforts to
distinguish the Tsai article, based on it’s application primarily
to solar cells and on the perpendicular direction of the current
flow, were not only invalid, but also inconsistent with its own
position on the subject. Thus, in a January 1995 letter to his
licensing agent for the ‘132 patent, Dr. Yamazaki concedes
that “we do not think there is a more relevant reference than
C.C. Tsai’s abstract of August 22, 1983 and his (sic) papers
of December, 1983.” In his ‘423 and ‘488 laid-open
applications and his ‘400 patent application, Dr. Yamazaki
clearly recognized that inventions directed to low levels of
impurities in solar cells are highly relevant to TFT’s.
Moreover, SEL’s argument before the PTO is flatly belied by
the fact that in this very infringement action, SEL originally
asserted two patents against Samsung that are directed mainly
to low levels of impurities in solar cells, the '204 and the ‘400
patents. Thus, the record points clearly and convincingly to
the conclusion that in distinguishing the Tsai article before
the PTO, SEL knowingly advanced a meritless argument in
an effort to mislead the PTO.”

% Tt is worth noting that advocacy before the PTO is appropriate. But,
there is a line between legitimate advocacy in accordance with the duty of
candor, and advocacy that the applicant surely knows has a propensity to
mislead the examiner. Here, that line was crossed.

80a

Moreover, SEL’s motive for engaging in such conduct is
illuminated by Dr. Yamazaki’s testimony of why, following
the issuance of the ‘132 patent, he felt compelled to file the
application which led to ‘636 patent. In essence, Dr.
Yamazaki testified that he knew, after meeting with several
prospective licensees who called attention to SEL’s with-
holdings during the ‘132 prosecution, that his potentially
lucrative patent was vulnerable. To remedy this problem, he
decided not to seek reissue of the 132 patent,°’ but to pursue
a new patent on the same invention that would be immune
from the problems that infected the ‘132 patent. Thus, SEL
filed and pursued the ‘636 patent. In doing so, SEL was not
required to surrender the ‘132 patent or to disclose the
specific errors that were made in connection with the
prosecution of that patent.*®

Yet, SEL still had to avoid the prior art references that it
was now forced to disclose to the PTO, such as the Tsai
article and the ‘423 and the ‘488 applications. Thus, SEL
mischaracterized the Tsai article as applying primarily to
solar cells. Further, as Dr. Yamazaki testified, SEL had to
limit the claims of the '132 patent.*? Specifically, the '636
patent is limited to an IGFET with a silicon nitride gate, and
an intrinsic silicon layer, and a sandwich structure in the

*” Reissue is the well-established procedure available to patentees who
have inadvertently and without any deceptive intention made errors before
the PTO. This procedure first requires surrender of the patent at issue as
well as a specification of errors or omissions previously made. See 35
U.S.C. § 251.

** Note, however, that the result reached here does not depend in any
way on SEL’s decision not to surrender and seek reissue of the ‘132
patent, nor does this decision suggest that SEL had a duty to do so.

°° Specifically, when asked why he limited the claims of the ‘636, Dr.
Yamazaki testified that “there were these various references. These
references were to be avoided, but I don't believe that the essential nature
of the invention also [was] changed.”

8la

channel region, while the claims in the ‘132 patent are not so
limited. Of all the references cited to the PTO in connection
with the ‘636 patent application, only the Canon ‘968
application describes a TFT containing each of these three
elements. Clearly, then, the Canon '968 was a highly material
reference to the ‘636 patent application, which posed a
significant threat to rendering the ‘636 unpatentable. It is
simply implausible, under the circumstances, that SEL was
not aware of this fact. Rather, the evidence points clearly and
convincingly to the conclusion [496] that SEL’s awareness of
this fact motivated its decision to submit just the partial
English translation in an effort to hide material information.

Finally, when viewed in conjunction with SEL’s conduct
during the prosecution of the ‘132 patent application, the
record as a whole reflects a clear pattern and practice of
initial nondisclosure, followed by incremental disclosure only
when compelled by the circumstances to do so, followed, at
times, by mischaracterization. Thus, SEL intentionally
withheid four material prior art references; the Tsai article,
the ‘423 and the ‘488 laid-open applications, and the Sony
‘2073 patent. The record as a whole points clearly and
convincingly to the fact that SEL knew of these materials
during the pertinent period. Yet, SEL disclosed the references
to the PTO only when forced to do so by a prospective
licensee. Thus, the Tsai article and the ‘423 and ‘488
applications were cited to the PTO only after these matters
were asserted by prospective American licensees during
negotiations, whereas the Sony '2073, which was called to
SEL’s attention by the Japanese patent office and not a
potential licensee, was never disclosed to the PTO.

And, after receiving an initial rejection of the ‘132 patent
based on the impurity levels in the Nakagawa ‘477 patent,
SEL submitted to the PTO an amendment which erroneously
calculated the level of impurities disclosed in the Nakagawa
'477 patent as 4 x 10'° at oms/cm’. The error, for which no

82a

satisfactory explanation was provided, conveniently provided
SEL with a basis from which to overcome the Nakagawa ‘477
patent. And when prosecuting the ‘636 patent application, the
patentability of which was dependant on its specific
limitations combined with its impurity levels, SEL concealed
the importance of the Canon "68 application and
disingenuously distinguished Tsai.

The evidence demonstrates a sophisticated, subtle, and
consistent effort to hide the ball from the PTO in a manner
plainly at odds with an applicant’s duty of candor, good faith,
and honesty. The record, as a whole, simply contains too
many instances of information withheld, and references
mischaracterized, to reach any conclusion other than that the
withholding and mischaracterizations were part of an
intentional, not accidental or inadvertent, plan to mislead the
PTO.

» 2

During its prosecution of the ‘636 patent application, SEL
knowingly made two highly material withholdings and/or
mischaracterizations. The prior art references withheld and/or
mischaracterized were not trivial, but rather were central to
the essential question of patentability. The evidence points
clearly and convincingly to the conclusion that this conduct
was performed with the intent to deceive the PTO.
Consideration of SEL’s conduct in connection with the
prosecution of the '132 patent only bolsters this conclusion.
Thus, SEL engaged in inequitable conduct during the
prosecution of the ‘636 patent, and accordingly, the entire
patent is unenforceable.

For the foregoing reasons, SEL’s patent infringement suit
against Samsung must be dismissed with prejudice.

An appropriate order shall issue.

83a

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163a
APPENDIX T

(PRE-EXISTING PARTIAL
TRANSLATION OF CANON ’968)

PARTIAL TRANSLATION OF JP LAID-OPEN 56-135968
(page 309, column 7, line 17—column 8, line 8)

Fig. 1 is a schematic partial perspective view showing the
structure of the amorphous silicon thin film transistor of the
present invention. The a-Si-TFT 100 shown in Fig. |
comprises a substrate 106 made of glass, ceramics or the like,
a gate electrode 101 formed thereon, an electrically insulating
layer 105 covering the gate electrode 101, a semiconductor
layer 105 made of a hydrogenated and/or fluorinated
amorphous silicon laminated sequentially, first and second n*
layers 107-1 and 107-2 arranged in a parallel relation with
and separated from each other on the surface 108 of the
semiconductor layer 105, a source electrode 102 formed on

the first n* layer 107-1, and a drain electrode 103 formed on
the second n* layer 107-2.

(page 309, column 9, lines 6-12)

The electrical insulating layer 104 is constituted with a
SiO, film formed by sputtering, or silicon nitride film formed
by a glow discharge deposition method, or the like, and
besides these materials, Al2O; or the like is also an effective
material.

The semiconductor layer 105 and the n* layers 107 mainly
comprises an amorphous silicon in which dangling bonds
(unsaturated electron pairs) are compensated by H or/and F.

(page 312, column 20, lines 3-5)

A silicon nitride layer is formed as the insulating layer 104
on the patterned aluminum gate electrode by using an
apparatus shown in Fig. 2 in the following manner.

164a
(page 315, column 31, lines 5-10)

The same tendency was confirmed even if a sputtering film
(0.1 uum film thickness) of SiO was used in place of silicon
nitride, and it was confirmed that the ohmic contact between
the source, drain electrodes and the semiconductor layer 105
can be realized by sequentially depositing the semiconductor
layer 105 and the n* layers 107 with the condition in which
the discharge is maintained.

165a
APPENDIX U
(Claim, 1, ’636 Patent)
1. An insulated-gate field effect transitor comprising:

a. non-single crystalline semiconductor layer doped with
hydrogen or halogen and having an intrinsic conductivity
type, said semiconductor layer being disposed over a
substrate;

a channel region formed in said semicoductor layer,
wherein a concentration of at least one of oxygen, carbon and
nitrogen contained in said semiconductor layer is not higher
than 5x10'* atoms/cm’;

source and drain regions forming respective junctions with
said channel region whereby charge carriers move through
said channel region between said source and drain regions in
a path substantially parallel to said substrate;

a gate insulator comprising silicon nitride and directly
contacting said channel region; and

a gate electrode contacting said gate insulator;

wherein said channel region is interposed between the gate
insulator and another insulator.

166a
APPENDIX W
(Testimony of Shumpei Yamazaki re Canon '968)

UNITED STATES DISTRICT COURT
E. D. VIRGINIA

C.A. NO. 96 1460-A

SEMICONDUCTOR ENERGY LABORATORY CoO. LTD.,
Plaintiff,
Vv.

SAMSUNG ELECTRONICS Co., LTD.,
SAMSUNG ELECTRONICS AMERICA, INC.,
AND SAMSUNG SEMICONDUCTOR, INC.,
Defendants.

Testimony of Shumpei Yamazaki, March 17, 1998 re Canon
‘968

[208] BY ATTORNEY BERG [Attorney for Samsung]:

Q. During the prosecution of the ‘636 Patent, or the chain that
resulted in the ‘636 Patent, you provided the United States Pat-
ent Office with some documents related to the Laid-Open Japa-
nese Application 968, the Canon reference, did you not?

A. Yes, I believe I did, but I would like to confirm this by see-
ing the patent.

ATTORNEY BERG: _Let’s show the witness SEL Trial Ex-
hibit 429. That will be Trial Exhibit 1002.

ATTORNEY GOODWIN: The '636 Patent.

ATTORNEY BERG: The 636.

(Plaintiff's Exhibit No. 1002 premarked for identification.)

167a

THE WITNESS: Was there a 968, or such [209] thing as
that?

ATTORNEY BERG: _I will get back to the ‘968 now.

ATTORNEY BERG: May we have a copy of SEL 429 for
the witness, please?

(Plaintiff’s Exhibit No. 429 premarked for identification.)
THE WITNESS: All right.

BY ATTORNEY BERG:

Q. Dr. Yamazaki, this is a copy of what you provided to the
Patent Office with respect to Laid-Open Application 968, is it
not, sir?

A. Yes, that’s correct.

Q. There is a one page partial translation of the Japanese Laid-
Open "968, and there is also the entire untranslated document, is
there not?

A. Yes, that’s correct. It’s attached.

ATTORNEY GOODWIN: Excuse me, your Honor. I be-
lieve what is marked as SEL 429 includes the entire translation,
not just the partial translation.

THECOURT: Can we have astipulation so that we can get
on with it, that the Canon reference, that is Laid-Open Applica-
tion '968, was made available to the Patent Office in connection
with the ‘636 application, and the English translation was a por-
tion of it, not the whole [210] thing—and the portion of it is re-
flected, that was translated into English is reflected in what ex-
hibit, Mr. Berg?

ATTORNEY BERG: It’s reflected as an attachment to 429.
Perhaps we should call that 429A.

THE COURT: All right, in 429A.

(Plaintiff's Exhibit No. 429A premarked for identification.)
THE COURT: _Is that stipulated?

168a

ATTORNEY GOODWIN: That’s fine.

THE COURT: Let me repeat that stipulation for translation
for Dr. Yamazaki.

It is stipulated by and between the parties that in connection
with the '636 application, Dr, Yamazaki made available to the
U.S. Patent and Trademark Office Laid-Open Applicaton '968
from Japan in Japanese, but with an Engish translation of a por-
tion of the Laid-Open '968 Patent, and that portion is reflected in
Defendant’s Exhibit 4—what is it, Mr. Berg?

ATTORNEY BERG: 429A.

THE COURT: —429A. And let’s show that now to Dr.
Yamazaki.

Now, given that stipulation, questions will proceed on that
basis.

THE WITNESS: That is correct.

[211] THECOURT: Next question.

BY ATTORNEY BERG:

Q. Dr. Yamazaki, would you acknowledge for me that 429A
does not disclose, in this partial translation, a channel region
sandwiched between an insulated gate and another layer of insu-
lation?

A. That’s correct, that is not disclosed.

Q. Which was one of the elements of your Claim Number | in
the ‘636, was it not?

A. That is correct. ©

Q. You never provided to the Patent Office a concise state-
ment related to the relevance of the Laid-Open Japanese '968,
did you sir?

A. I think there is a misunderstanding here. I believe that have
to do with Dr. Myerson’s earlier testimony having to do with
sandwich structure.

169a

Is that the extent of your question, having to do with the
sandwich structure?

Q. Yes. I believe your testimony was—no, no, strike that.

What I am asking you is if you provided a concise statement
of the relevance, not just about the sandwich structure but of the
relevance of the 968 to the Patent Office.

A. I really can’t reply without looking at the [212] remarks of
the 968. However, however, the part that is translated is what I
thought to be the most important portion of the "968 patent.

Q. The most important portion?

A. Yes, the part of '968 that I thought most important. Here it
is disclosed that the gate insulator is made of silicon nitrate. I
thought this was the most important portion, and this translation
was submitted to the United States Patent Office.

THE COURT: Let me ask Dr. Yamazaki, why did you
translate any of it?

THE WITNESS: At this time, I was involved in a pending
patent. As far as the '968 was concerned, it was a pending pat-
ent. That was different from this ‘636 Patent, in that as well,
silicon nitride was an important element of the structure, and
what had been translated for that patent was provided, as is for
this other patent.

THE COURT: My question to you, Dr. Yamazaki, is: Why
did you—why didn’t you just give the Patent and Trademark
Office the Japanese patent, without any translations?

Why did you choose to translate any of it?

THE WITNESS: Elsewhere I had provided what I thought
were the more important or most important references, and I
thought that was sufficient.

[213] THE COURT: Did you have any information from
anyone that the Patent and Trademark Office required transla-
tions of foreign language prior art references?

THE WITNESS: I don’t recall whether there is a rule of any
kind. I voluntarily did the translation, what I thought the most

170a

important portion, so as to assist the examiner in his examina-
tion.

THE COURT: Yuu personally made the decision that just a
portion of it should be translated: is that right?

THE WITNESS: That’s correct.

THE COURT: Go ahead, Mr. Berg.

BY ATTORNEY BERG:

Q. Dr.Yamazaki, you told the Court, in fact, that the untrans-
lated portion of the Canon reference that was merely cumula-
tive, and you told the Court to, quote, that the Nakagawa refer-
ence in fact was cumulative of the Canon reference, did you not,
sir?

THE INTERPRETER: I don’t know how to say “cumula-
tive” in Japanese. Is that a term of art.

ATTORNEY BERG: I don’t either.

THE COURT: He is asking you to give him a synonym in
English.

THE INTERPRETER: I can ask—

ATTORNEY BERG: I can do better—
[214] THEINTERPRETER: I can ask him—

ATTORNEY BERG: The Canon essentially repeated the
essential elements of Nakagawa.

THE INTERPRETER: I’m sorry to trouble you.

ATTORNEY BERG: Okay.

BY ATTORNEY BERG:

Q. Didn’t you tell this Court that the untranslated portion of
the ‘968 was merely a repetition of what you would find in the
Nakagawa reference?

A. Idon’t quite understand what you mean, but I did think that
the Nakagawa reference ‘477 was extremely important in con-
nection with the ‘636.

17la

ATTORNEY BERG: Let’s look at Defendant’s Exhibit
1427.

(Defendant’s Exhibit No. 1427 premarked for identifica
tion.)

THE WITNESS: (Complied)

BY ATTORNEY BERG:

Q. While getting that, do you remember making a declaration,
Dr. Yamazaki, over your signature on December Ist, 1997, for
this Court?

A. Yes.

Q. Now, let’s read it into the record, so his Honor—so there
will be no mistake what I am talking about, Dr. Yamazaki. At
Paragraph 30 of Exhibit 1427—

[215] THECOURT: You have a copy for Mr. Goodwin?
ATTORNEY GOODWIN: Thank you.
THE INTERPRETER: What paragraph?
BY ATTORNEY BERG:
Q. Paragraphs 30 and 31—
ATTORNEY BERG: after that, we are going to go to Ex-
hibit 426, so if you can have that ready.
BY ATTORNEY BERG:
Q. (Reading:)

“During the prosecution of the ‘636 Patent, Japanese
Laid-Open application '968, assigned to Canon, the Canon
reference, was submitted by SEL to the Patent Office along
with a partial translation that had previously been prepared
in connection with another case.

The Canon reference, a full English translation, and the
partial translation, are attached as Exhibit R. Samsung

172a

claims that the untranslated portion of the Canon reference
further shows a co-planar thin film transistor with a semi-
conductor layer sandwiched between a gate insulator and
another insulator.

31. This is not material, since SEL also provided the ex-
aminer with another reference which shows a thin film
transistor [216] structure that is the same as the film tran-
sistor structure described in the untranslated portion of the
Canon reference. This reference to Nakagawa ‘477 Patent
“discloses, including by a drawing on the cover of the pat-
ent, a co-planar thin film transistor with a semiconductor
layer sandwiched between a gate insulator and another in-
sulator. A copy of the ‘477 is attached as Exhibit S.”

In fact, you, yourself, made a point of pointing out to the U.S.
Patent Office that Nakagawa taught a channel region—excuse
me—the channel region of Nakagawa was N-type while your
channel region was intrinsic, did it not, sir.

A. Is that included in the ‘636 remarks?

Q. Let me ask you again, Dr. Yamazaki

Did you tell the U.S. Patent Office that the big difference be-
tween—strike that.

Did you tell the you States Patent Office that while you had
an intrinsic—a channel region in the intrinsic layer, Nakagawa
was different because it had a channel region in the N-type
layer?

ATTORNEY GOODWIN: Your Honor, it is not clear to me
whether counsel is asking the witness to answer based on mem-
ory, or he is directing the witness to [217] a particular docu-
ment.

THE COURT: Overruled. What’s not clear to you doesn’t
matter. It depends on the witness. He may answer if he can.

THE WITNESS: I just don’t recall. What I would prefer to
do is look at the details, the particulars in order to confirm it.

ATTORNEY BERG: _I will do that in just a moment then.

173a
BY ATTORNEY BERG:

Q. Let me ask you this: Is it a fair statement that in Claim | of
your ‘636, that you claimed an intrinsic layer, rather than an N
layer?

A. That’s correct.

- ” 7. *

{223} ATTORNEY BERG: Let me show you something.

BY ATTORNEY BERG:
Q. Have you seen this drawing before, Dr. Yamazaki?
A. Ihave not.

Q. lam going to represent to you that this is the drawing that
Professor Luckovsky, your expert, made of the fabricaton proc-
ess in the untranslated portion of the Canon reference.

A. All right.

Q. I would like you to look at the very first layer where « says
“insulator.” Do you see that, sir?

A. Yes.

Q. And then look at the top, where it says, [224] “Insulator
layer can be either S102, silicon nitride” —tet us stop there

Do you see the Canon reference that you didn't have trans
lated provides a drawing of a thin film transistor with a ehoon
nitride insulator?

A. Isee what's written here.

Q. And in addition, that was part of Claim | of your 636 Pas
ent, was it not, sir, a gate insulator comprising siloon nitride’

A. That is correct.

174a

Q. In addition, this Canon untranslated portion, untranslated
drawing or unprovided drawing from the untranslated portion of
the 968, also contains an intrinsic layer. Do you see that, sir?

THE INTERPRETER: I’m sorry, shows a what?
Q. An intrinsic layer.
A. That’s correct.

Q. It also shows, does it not, the sandwich configuration that
you Said was so important to your patént?

A. Now, you are asking about the Luckovsky drawing?

Q. Yes, I am, which I will represent to you comes from the
description in the untranslated part of the Canon reference.

[225] A. He may be saying that, but my point of view is
somewhat different.

Q. So, you know what the drawings should look like from the
untranslated portion?

A. What we are talking about now, I believe, is a reference in
the '968 Patent, an indication in the '968 Patent, that is Exhibit
429, page 17, lines, counting from the bottom, lines 5 through 7.

There is an English translation attached. At this point, I can’t
exactly tell you where the English appears, of that portion ap-
pears in English.

Q. Now, you are disagreeing with Professor Luckosky’s draw-
ing, your own expert’s drawing, isn’t it?

A. I think it would be better if I read this text here.

Afterwards, by means of the glow discharge method, the
sputtering method, and by means of the vacuum evapora-
tion method, the above-mentioned N-plus—the portion
mentioned above in which the N-plus layer has been re-
moved is obtained.

175a

In other words, when we are talking about the insulation
layer, just judging from the text here, it.is hard to tell how and
where it is to be provided. Therefore, by one interpretation,
what Luckovsky has [226] written is correct. However, just on
this text alone, I am not sure whether or not you could not arrive
at some other understanding. 7

Q. But Dr. Yamazaki, forgive me, Dr. Yamazaki, let’s assume
there is some difference of opinion. Isn’t that a discussion that
you should have been having with the Patent Office, if you
thought there was some area of disagreement?

Shouldn’t you have had the entire thing—

THE COURT: The question is now compound. One ques-
tion.
ATTORNEY BERG: Yes.

BY ATTORNEY BERG:

Q. In fact, under your duty of candor—strike that.
Your indecision about what that means has just occurred to
you right now, has it not?

A. Whether at this moment, in any case, in connection with
this lawsuit having this text point it out to me by the Samsung
side, and having looked over it, I now feel that this Luckovsky
diagram may be correct. However, there may be others that are
also correct. My understanding of this current structure as indi-
cated here would be vague—

Q. Wait, wait—let me stop you, Dr. Yamazaki. Did you say
“would be vague’’?

[227] ATTORNEY BERG: Mr. Taylor, did you say “would
be vague”?

THE INTERPRETER: Yes.

THE WITNESS: If all you have is this text here, then it is
vague.

176a
BY ATTORNEY BERG:

Q. Back at the time that the '636 Patent was pending, did you
indicate that to the Patent Office, that within the untranslated
portion that there was a structure, untranslated, in an untrans-
lated portion, there was revealed a structure that was very simi-
lar to the structure of your patent?

Let me just ask that question.

A. Yes, in the Nakagawa, the ‘477 Patent, there is a diagram
indicating that.

THE INTERPRETER: | asked him to repeat the portion.
THE COURT: He may repeat it.

A. There is a drawing showing that in the channel area, there
is a gate insulator directly affixed, attached, touching it.

Within the elements of Claim | is the notion of directly con-
tacting. There are words saying “a gate insulator comprising
silicon nitride and directly contacting said channel region.”
[228] THECOURT: What are you reading from?

BY ATTORNEY BERG:
Q. What are you reading from?
A. I read a portion of a claim of '968.

Q. Let me ask you this, Dr. Yamazaki: If Professor Luckovsky
is correct, that what he has described is the sandwich style struc-
ture with a semiconductor layer sandwiched between an insulat-
ing gate layer and another insulator, as is described here, with
the silicon nitride gate insulator, with an intrinsic layer, if Dr.
Luckovsky is correct, then he has described in this drawing vir-
tually all the elements of your claim in Claim Number 1; that’s
fair, isn’t it?

THE INTERPRETER: I am going to have to break up that
question. I can ask it—I can ask the latter part in a single ques-
tion, and then fill in the specific items, if you don’t mind.

177a

THE COURT: No, let’s have the court reporter read the
question back slowly, and then you can see—you wouldn’t be
able to in a single question, but I can understand why you might
have to have it repeated.

All right, let’s have the court reporter repeat the question.

(The reporter read the record as follows:)

“Question: Let me ask you this, Dr. [229] Yamazaki: If
Professor Luckovsky is correct, that what he has described
is the sandwich style structure with a semiconductor layer
sandwiched between an insulating gate layer and another
insulator, as is described here, with the “silicon nitride gate
insulator, with an intrinsic layer, if Dr. Luckovsky is cor-
rect, then he has described in this drawing virtually all the
elements of your claim in Claim Number 1; that’a fair,
isn’t it?”

THE COURT: Now, one more time, Mr. Berg.

BY ATTORNEY BERG:

Q. Dr. Yamazaki, if Dr. Luckovsky’s drawing is accurate, in
that it describes a sandwich structure, that is, an intrinsic layer—
excuse me—that is, an intrinsic layer sandwiched between two
insulated regions, it shows a substrate, it shows an N-plus semi-
conductor, it shows an N-plus semiconductor on the other side,
a source a drain, a gate electron, it shows a silicon nitride gate
insulation, if Professor Luckovsky is right in his drawing, hasn’t
he—doesn’t this drawing describe the Claim | in your Patent
Number '636?

THE COURT: Now you can translate that, can’t you?
THE INTERPRETER: I will try.

[230] THE WITNESS If you take this Luckovsky drawing to
mean the gate insulating layer is directly touching the semicon-
ductor, then the answer would be yes. That is also indicated in a

178a

drawing in the Nakagawa ‘477. As mentioned before, also, in
prior art section of my ‘636 patent, the word sandwiched is used.

BY ATTORNEY BERG

Q. My question for you, then is: If Luckovsky’s drawing is
accurate, doesn’t it show me features of claim 1 of the ‘636 pat-
ent than the Nakagawa ‘477?

A. Idon’t really think it makes much sense to accept that as-
sumption, however. The big difference between the patent and
the Nakagawa is that in the '968 Patent there is no particular in-
dication about impurities in the I-layer.

ATTORNEY BERG: Exactly.

Q. And where you learn about—that’s the bigger difference
between your—strike that.

The bigger difference, you are telling us, between the '968
and Claim | of your patent—let us take Claim 1 of '636—is the
failure to tell how to reach low levels of impurities; is that a fair
statement?

A. Yes. It does not say that that’s to be used in the channel
layer.

[231] Q. Now, sir

THE COURT: Mr. Berg, before you go on, this document,
does the record show what—where it came from and what role
it played?

ATTORNEY BERG: Yes, sir. This is the first embodiment
There are two embodiments in the Canon '968. They enclose in
the '968.

THE COURT: Yes, but whose drawing is this?

ATTORNEY BERG: His expert, Professor Luckovsky.

THE COURT: _In other words, rather than use the Japanese
patent itself, fully translated, you are using his expert ‘a rendi-
tion of what it discloses?

179a

ATTORNEY B&W: Yes, sir.

And he is, as I understand it, saying here, he has now read the
embodiment, that is not, it’s a diagram that is not, displayed in
the Canon untranslated portion. It’s not shown at all. But if you
draw what’s described in the untranslated portion, you get this
Configuration.

THE COURT: All right, go on.

ATTORNEY BERG: May I confer for just amoment, your
Honor?

THE COURT: Yes, you may.

ATTORNEY BERG: Iam corrected, your Honor.

There was no drawing of this of this in the '968.

* * * a

Testimony of Shumpei Yamazaki, April 1, 1998 re Canon
968.

[66] BY ATTORNEY GOODWIN

Q. Do you know whether you specifically pointed out and dis-
cussed the '968 laid-open application in the IDS, that the exam-
iner could examine it?

A. You mean at some point here in the remarks area?
Q. Why don’t you go ahead, if you could find it there.

A. There is a references to the’968 at page SEC277, in the bot-
tom paragraph.

ATTORNEY GOODWIN: | Thank you; Dr. Yamazaki. I'll pass
the witness.

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386019_1659%3A2. Public record. Not legal advice.