Apple Inc v. SiOnyx LLC

1. Case Identification

• Case #: IPR2025-00845
• Patent #: 10,224,359
• Filed: April 16, 2025
• Petitioner(s): Apple Inc. and Sony Group Corporation
• Patent Owner(s): SiOnyx LLC
• Challenged Claims: 1-83

2. Patent Overview

• Title: Imager Device and Method of Manufacture
• Brief Description: The ’359 patent discloses semiconductor imager devices with improved pixel isolation to reduce optical and electrical crosstalk. The invention focuses on a peripheral isolation element between adjacent pixels, comprising a specific three-layer structure with differing indices of refraction to trap or reflect light.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-4, 7, 10, 18, 38-40, 42-47, 49-52, 56-58, 62-63, 67-69, and 73-75 under §102 by Hwang-099

• Prior Art Relied Upon: Hwang-099 (Patent 7,675,099).
• Core Argument:
  • Prior Art Mapping: Petitioner argued that Hwang-099, which discloses an image sensor with a multi-layered reflection layer to prevent optical crosstalk, teaches every limitation of the challenged claims. Specifically, Hwang-099 discloses an imager device with adjacent light-sensitive pixels separated by a peripheral isolation element (sidewall reflection layer 220). This isolation element is shown to comprise a first and second layer (silicon oxide) sandwiching a third layer (silicon), where the silicon oxide layers have a refractive index (1.46) lower than the silicon layer (4.0), expressly meeting the structural and refractive index limitations of independent claims 1 and 18.

Ground 2: Obviousness of Claims 1-2, 6-8, 10-11, 18, 30, 34, 38-39, 42-46, 49-52, 58, 64, 67, 70 and 73 over Hiyama

• Prior Art Relied Upon: Hiyama (Application # 2011/0241148).
• Core Argument:
  • Prior Art Mapping: Petitioner asserted that Hiyama, which teaches a solid-state imaging device with filled-groove isolation elements (TRd) between pixels, renders the claims obvious. Hiyama discloses a three-layer isolation structure with outer layers of a high-κ dielectric (e.g., Al2O3, HfO2, or Ta2O5) and a middle layer of tungsten. This structure meets the refractive index requirements of the claims, as the outer dielectric layers have a lower refractive index (e.g., 1.7 for Al2O3) than the middle tungsten layer (3.5).
  • Motivation to Combine (for §103 grounds): This is a single-reference ground. Petitioner contended that Hiyama nearly anticipates the claims, but it would have been obvious for a POSITA to make two modifications: (1) form Hiyama’s photodiode region using a standard PN junction, as was necessary for photodiode function, and (2) use the known, typical refractive indices for the disclosed materials (e.g., Al2O3 and tungsten), which would lead to predictable results.
  • Expectation of Success: A POSITA would have had an expectation of success because forming PN junctions in photodiodes was a common and well-understood practice, and the material properties, including refractive indices, were well-known.

Ground 3: Obviousness of Claims 5, 23, 38-40, 43, 45-47, 50, 65-66, 68-69, 71-72, and 74-75 over Hwang-099 in view of Cole

• Prior Art Relied Upon: Hwang-099 (Patent 7,675,099) and Cole (Application # 2006/0286766).

• Core Argument:

  • Prior Art Mapping: Hwang-099 provided the basic imager device with a multi-layer peripheral isolation element. Cole was cited for its teachings on providing both electrical and optical isolation between pixels using deep trench structures that extend through the light-sensitive epitaxial layer. Petitioner argued that applying Cole’s teachings would lead to the isolation element in Hwang-099 extending substantially from the light-incident surface to the backside surface, as required by claims 5 and 23.
  • Motivation to Combine: A POSITA would combine Hwang-099 and Cole to improve pixel isolation and reduce crosstalk, a problem addressed by both references. Cole expressly taught that forming deep trenches is advantageous for achieving both electrical and optical isolation, motivating a POSITA to apply this known technique to improve the isolation structure of Hwang-099.
  • Expectation of Success: Success would be expected because trench formation and filling were standard, widely-used techniques in the semiconductor industry, allowing for predictable control over trench depth and structure.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of Hwang-099 with Shinohara (teaching specific oxide materials for negative fixed charge), Carey (teaching textured surfaces to improve light absorption), and Uematsu (also teaching textured surfaces). Additional grounds were also based on Hiyama in view of Cole (adding outer oxide layers for improved isolation) and Werner (teaching methods to achieve low surface recombination velocity).

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under General Plastic factors would be improper. They contended that although a third party (Samsung) had previously filed IPRs against the same patent, Apple and Sony are not in a proxy relationship with Samsung; they are competitors with independent interests who prepared this petition separately. Further, this petition allegedly presents materially different grounds and prior art combinations.
• Petitioner argued that denial under Fintiv is unwarranted because the parallel district court litigation is in a very early stage. Discovery had just commenced, a scheduling order was recently entered, no claim construction hearing had occurred, and a trial was not expected until February 2027 at the earliest.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-83 of Patent 10,224,359 as unpatentable.