trials@uspto.gov
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`571-272-7822
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`IPR2014-01030, Paper No. 27
`IPR2014-01493, Paper No. 13
`September 11, 2015
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`RECORD OF ORAL HEARING
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`- - - - - -
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`- - - - - -
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`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.
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`(TSMC) and SAMSUNG ELECTRONICS CO., LTD.,
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`Petitioners,
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`v.
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`DSS TECHNOLOGY MANAGEMENT, INC.,
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`Patent Owner.
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`- - - - - - -
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`Case No. IPR2014-01030
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`Case No. IPR2014-01493
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`Patent No. 5,652,084
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`Technology Center 1700
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`Oral Hearing Held on Wednesday, August 12, 2015
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`Before: ERICA A. FRANKLIN; JACQUELINE WRIGHT
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`
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`BONILLA; and KRISTINA M. KALAN (via video link), Administrative
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`Patent Judges.
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`571-272-7822
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`IPR2014-01030, Paper No. 27
`IPR2014-01493, Paper No. 13
`September 11, 2015
`
`RECORD OF ORAL HEARING
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`- - - - - -
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`- - - - - -
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.
`
`(TSMC) and SAMSUNG ELECTRONICS CO., LTD.,
`
`Petitioners,
`
`v.
`
`DSS TECHNOLOGY MANAGEMENT, INC.,
`
`Patent Owner.
`
`- - - - - - -
`
`Case No. IPR2014-01030
`
`Case No. IPR2014-01493
`
`Patent No. 5,652,084
`
`Technology Center 1700
`
`Oral Hearing Held on Wednesday, August 12, 2015
`
`Before: ERICA A. FRANKLIN; JACQUELINE WRIGHT
`
`
`
`BONILLA; and KRISTINA M. KALAN (via video link), Administrative
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`Patent Judges.
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`
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`The above-entitled matter came on for hearing on Wednesday, August
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`12, 2015, at 2:00 p.m., in Hearing Room B, taken at the U.S. Patent and
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`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
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`APPEARANCES:
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`ON BEHALF OF PETITIONER TSMC:
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`DAVID M. O'DELL, ESQ.
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`Haynes and Boone, LLP
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`2505 North Plano Road, Suite 4000
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`Richardson, Texas 75082
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`972-739-6900
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`DAVID L. McCOMBS, ESQ.
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`Haynes and Boone, LLP
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`2323 Victory Avenue, Suite 700
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`Dallas, Texas 75219
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`214-651-5533
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`ON BEHALF OF PETITIONER SAMSUNG:
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`CHRISTOPHER T. MARANDO, ESQ.
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`Weil, Gotshal & Manges
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`1300 Eye Street, N.W., Suite 900
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`Washington, D.C. 20005
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`202-682-7000
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`APPEARANCES: (Continued)
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`ON BEHALF OF THE PATENT OWNER:
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`ANTON J. HOPEN, ESQ.
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`ANDRIY LYTVYN, ESQ.
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`NICHOLAS R. PFEIFER, ESQ.
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`Smith & Hopen
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`180 Pine Avenue North
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`Oldsmar, Florida 34677
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`800-807-3531
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`KIRK A. VOSS, ESQ.
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`Nix Patterson & Roach LLP
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`205 Linda Drive
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`Daingerfield, Texas 75638
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`903-645-7333
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`Case Nos. IPR2014-01030, and IPR2014-01493
`Patent No. 5,652,084
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`P R O C E E D I N G S
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`(2:00 p. m.)
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`JUDGE B ONI LLA: This is the tri al hearing for
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`IPR2014 -01030, and IPR2014 -01493 which has been joined
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`with this proceed ing, between Peti tioner, Taiwan
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`Se miconductor M anufacturing Co mpany, in relation t o the
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`1030 case, and Sa msung Electronic s Co mp an y, in rel ation to
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`the 1493 case, ve rsus owner of U. S . P atent Nu mb er 5,652,084,
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`DSS Technology Manage ment Cor poration.
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`Just a fe w ad mini strative matters b efore we begin.
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`As you can tell, Judge Kalan is joi ning us fro m Den ver.
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`Please note the location of the c a mera. It will be ea sier for
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`her to hear and se e you if you c an s peak to the c a mer a when
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`you ar e talking to her.
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`If you wish to pre sent an y de monst ratives, it is
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`ver y helpful if yo u can describe the slides b y slide nu mber .
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`That mak es it e asier for us to follo w, and particularl y Judge
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`Kalan to follow a long, and makes i t easier for the tr anscript,
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`for us to r ead the transcript later.
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`As you know, bas ed on our order , e ach part y has
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`45 minutes to pr e sent thei r argu me nt. Because Petit ioner has
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`the burden to show unpatentabilit y of the challenged clai ms,
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`Petitioner will go first, followed by Patent Owne r. Petitioner
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`ma y rese rve r ebuttal ti me, but it ma y onl y use its time to r ebut
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`Patent Owner 's a r gu ments.
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`5
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`Case Nos. IPR2014-01030, and IPR2014-01493
`Patent No. 5,652,084
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`At this ti me we would like counsel to introduce
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`the mselves and a n ybod y the y have with the m, sta rting with
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`Petitioner.
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`MR. O'DELL: Your Honor, my na me is David
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`O' Dell. I' m with the law fir m Ha ynes and Boone, a nd I
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`represent Taiwan Se miconductor M anufacturi ng Co mpany.
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`With me toda y is David McCo mbs , also fro m the sa me la w
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`fir m, also repr ese nting what we c all TS MC.
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`Also with me tod a y is Christopher Marando.
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`Christopher is fro m the la w fir m o f Weil , Gotshal an d he is
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`representing Sa msung Electronics.
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`MR. LYTVYN: Your Honor, my na me is Andri y
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`Lytv yn. I' m with the la w fir m S mi th & Hopen. And I' m her e
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`today to r epresent DSS Te chnologies, the Patent Own er.
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`MR. HOP EN: Go od afternoon, Yo ur Honor. M y
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`na me is Anton Ho pen. I also repre sent DSS . And with us is
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`Kirk Voss, who is in related litigation, and Nicholas Pfeifer as
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`well.
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`JUDGE B ONI LLA: Petitioner, wo uld you like to
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`reserve an y ti me for rebuttal?
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`MR. O'DELL: Yes. Your Honor , Petitioner would
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`like to reserve 20 minutes for rebuttal.
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`JUDGE B ONI LL A: So you will h ave 25 minutes.
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`You ma y begin.
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`Case Nos. IPR2014-01030, and IPR2014-01493
`Patent No. 5,652,084
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`MR. O'DELL: M a y it please the B oard. The re is
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`only one issue in this case. That is the clai m construction of a
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`single ter m, "seco nd pattern."
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`The Board in its I nstitution Decision has construed
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`this ter m in such a manner that the re c an be no question that
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`the prior art of re cord, Jinbo, cl ear l y anticipates the clai ms .
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`In fact , DS S pres ents no argu ments of patentabilit y based on
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`the Board's clai m construction.
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`I would like to structure my ti me t oday a s follows:
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`I will provide a b rief overvie w of t he '084 patent inc luding
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`referenc e to a representative clai m, and then I will provide
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`additional argu me nts and evidence, so me of which oc curred
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`after the Institution Decision but a ll of which is on t he record ,
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`that further supports and confir ms that the Board's cl ai m
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`construction is correct and, b y extension thereof, tha t the
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`clai ms in this IP R are unpatentable.
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`Turning to slide 2, let 's talk about t he '084 patent.
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`The '084 patent is directed to se mic onduct or fabrication,
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`specificall y a me t hod called lithography or photolithography.
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`Clai m 1 is repres entative and it's p rovided here on s lide 2.
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`The cl ai m is desc ribing what man y people ref er to
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`as a double patter ning process. Th at is, steps A and B of the
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`clai m describe a f irst process whe r e a first i maging l a yer is
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`for med and patte r ned, and then ste ps D and E descri be a
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`second lithography proc ess whe re a second i maging l a yer is
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`Patent No. 5,652,084
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`for med and patte r ned. The result o f this clai m is des cribed in
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`the "wher ein" cl a use at the end of the clai m that sa ys:
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`Wh erein, first and second features fro m the first an d second
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`i maging la yers ar e for med closer together than you could do
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`with just a single photolithography process, a single exposure.
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`I have underlined two t er ms in this clai m: First
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`pattern and secon d pattern. And this is wher e the issue lies
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`together. DS S a r gues that the seco nd pattern cannot be the
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`sa me as or c annot be a duplicate of the first pattern.
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`Turning to slide 3. In the Institution Decision - -
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`JUDGE B ONI LLA: But the y concede that the y c an
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`be different , right , just that the y ca n't be the sa me --
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`MR. O'DELL: Yes, the y are differ ent in that there
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`are diff erent ti me s and differ ent pa tterning steps, ye s, but the y
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`can have the sa me pattern or the s a m e group of geomet ries.
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`JUDGE B ONI LLA: -- geo metries .
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`MR. O'DELL: Th e y are not duplicate patterns of
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`each other.
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`JUDGE B ONI LLA: And your understanding of
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`Patent Owner 's p osition is that the geo metric patter n can't be
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`the sa me?
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`MR. O'DELL: Yes, yes .
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`Turning to slide 3, in the Institution Decision the
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`Board corr ectl y c onstrued the ter m second pattern r e l ying on
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`the direct language fro m the specifi cation. The speci fication
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`Case Nos. IPR2014-01030, and IPR2014-01493
`Patent No. 5,652,084
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`refers to the seco nd pattern stating that it c an be "any suitable
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`pattern." And tha t is the clai m con struction that this Board
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`has adopted.
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`The Board even went so f ar to address the
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`argu ment of DSS , that DSS also ma de in its preli min ar y
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`response, as shown in the last -- in the second sentence f ro m
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`this excerpt of th e Institution Deci sion, in that the s econd
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`pattern can be an y geo met ric patte rn, including a pa ttern that
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`is the sa me as the first pattern .
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`This is where the challenge resides, Your Honors.
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`DSS does not agr ee with this clai m construction and in
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`particular DSS does no t agree that t he second pattern can be
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`the sa me patte rn, that is, the sa me geo metric pattern as the
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`first pattern. DS S describes this a s the second patte rn cannot
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`be a duplicate of the first pattern .
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`And let me sa y, b y the wa y, that fo r the purposes
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`of this hearing, I' m not distinguishing between diff e rent
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`geo metric pattern s or the word dup licate or I think I
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`so meti mes just sa y a second patter n or a differ ent p attern, but
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`I don't me an an y distinction betwe en those ter ms.
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`JUDGE KALAN: Counsel, when you are arguing
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`difference , though, ar e we arguing pri maril y diff ere nt
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`geo metries? We are not a rguing difference in ti me o r
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`difference in plac e or an ything like that?
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`Case Nos. IPR2014-01030, and IPR2014-01493
`Patent No. 5,652,084
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`MR. O'DELL: Yes, Your Honor. I' m refe rring to
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`different geo metr ies.
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`Turning to slide 4 , my argu ment to da y is two -fold.
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`First I will provi de further evidence and argu ments all fro m
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`the record that show that the Board 's clai m construction of the
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`ter m second patte rn is corr ect fro m the Institution Decision
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`and should be ma intained. As disc us sed, if the Boar d
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`maintains this cla i m construction, this resolves the c ase
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`because DSS provides no argu ments for patentabilit y based on
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`the Board's clai m construction.
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`Secondl y, we will argue toda y that even under
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`DSS ' cl ai m constr uction, Jinbo still ant icipates the cl ai ms .
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`Turning to slide 5, as stated in the petition there is
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`co-pending litigation between the e xact sa me parties here
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`today over this patent, the '084 pate nt. And since the
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`Institution Decisi on there has be en a Mark man heari ng and a
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`clai m construction order in this liti gation.
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`A portion of this clai m construction order is
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`reproduced here on slide 5 which is directed to the fi rst and
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`second patterns. And as you c an s ee, the Court's cl ai m
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`construction of this ter m is consistent with the Boar d's clai m
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`construction.
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`JUDGE B ONI LLA: Is ther e an y d ifference that we
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`should be concerned about?
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`Case Nos. IPR2014-01030, and IPR2014-01493
`Patent No. 5,652,084
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`MR. O'DELL: No, Your Honor, th ere are no
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`differences, no di fferences of substance that I' m a wa re of
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`between these cla i m constructions. And, in f act , when we go
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`to the next slide I will show that th e Court's anal ysis was
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`si milar to and ess entially the sa me as the Boa rd's an al ysis and
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`I' m not aware of an y substantive differences betwe e n the two .
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`Before I le ave thi s slide, howeve r, we have
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`reproduced a case , a portion of c ase la w that the Co urt relied
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`on, but it is also t he first c ase ment ioned by both the
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`Petitioner and the Patent Owner in our briefs, and th at is the
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`Free Motion Fitness case.
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`The Free Motion Fitness case state s that the use of
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`the ter ms first an d second is a co mmon patent law c onvention
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`to distinguish between repeated instances of an ele ment or
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`li mitation. And we believe that th at is exactl y what the Board
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`did in its clai m c onstruction, is that the first and se cond
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`patterns are mer el y refe rring to rep eated instances of the word
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`pattern used with the first and se cond patterning steps.
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`Turning to slide 6, I bring up this p ortion fro m the
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`Court's clai m construction order be cause I think it is helpful to
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`show that the Cou rt's anal ysis w as essentially the sa me as this
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`Board's anal ysis. That is, the Cour t also looked to the
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`specification and quoted the sa me s entence that this Board
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`quoted and, that i s, the se cond pattern can be "an y s uitable
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`pattern."
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`Case Nos. IPR2014-01030, and IPR2014-01493
`Patent No. 5,652,084
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`In fact , the Court noted that the p a tent
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`specification makes this state ment one, two , thre e, f our, five ,
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`six ti mes, and the Court sa ys the specification could not be
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`clearer . A pa rticular pattern is not required for the f irst and
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`second patterns.
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`Even the l ast line of this quote f rom the Court's
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`clai m construction order, the Court further co mment ed: For
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`exa mple , the first and second patte rns ma y e ach be t he sa me
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`pattern, just me re l y shifted horizon tall y.
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`JUDGE KALAN: Counsel, we' re not bound by the
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`District Court's cl ai m construction, but what weight are you
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`sa ying we should be giving to the District Court's opinions and
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`constructions?
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`MR. O'DELL: As to what weight, I think I a m
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`bringing the District Court clai m or der here purel y fo r the
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`point to show that it supports and agrees with your own
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`individual anal ysis that you conducted in your Institution
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`Decision.
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`I agre e, I think all parties agre e thi s Board is not
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`bound by the Cou rt's clai m construction, but there ar e a couple
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`of things that are interesting here, and one of which is k ind of
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`unusual.
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`First of all , it is t he sa me group of parties talking
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`about the sa me pa tent. So the ide a s of res judicata do not
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`Patent No. 5,652,084
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`exist because we are all here argui ng the sa me patent before
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`these two tribuna ls.
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`The se cond thing is the '084 patent has expired,
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`and because it ha s expired both this Board and the C ourt are
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`construing the clai m ter ms under the Phillips standard, the
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`ordinar y and custo mar y meaning of the ter ms . And s o, again,
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`that's not binding, but I do think it is relevant and he lpful to
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`show when I sho w that the Court agrees with this Board.
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`Turning to slide 7, not onl y does th e Court support
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`and agree with th e Board's construction, but additional
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`prosecution in the '084 patent fa mi l y furthe r shows that the
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`Board's construct ion is corre ct .
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`This prosecution was not presented to the Boa rd at
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`the ti me of the In stitution, but I thi nk it is helpful, a nd
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`specificall y in light of the Phillips standard where th e ordinar y
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`me aning in light of the clai ms , the specification, and the
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`prosecution hi stor y are to be used, this is helpful.
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`In slide 7 here , it shows an a mend ment to the
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`clai ms in a divisional application to the '084 patent. This
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`divisional application has the exact sa me specification that the
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`'084 patent has.
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`In this a mend men t you ca n see , and I have
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`underlined in red, the P atentee add ed the phrase that said
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`"second pattern being different tha n said first patter n." What
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`this tells us is two things: One, th is tells us that the Patentee
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`recognized that the first and second patterns di d not have to be
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`different, otherwi se this a mend men t is meaningless.
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`Two , it shows us that the Patentee knows how to
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`write clai ms to re quire that the fi rst and second patt erns be
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`different and chose not to do so in the '084 patent.
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`Turning now to sl ide 9 --
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`JUDGE KALAN: One question. You had indicated
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`--
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`JUDGE B ONI LLA: I' m sorr y, Judge Kal an, we
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`can't hea r you ver y well . Can you get a little bit closer to the
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`mic?
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`JUDGE KALAN: Counsel, you had indicated that
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`you hadn't mad e t his argu ment prev iousl y. Ther e wa s no
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`325(d) or si mil ar argu ment . Ho w s hould we be vie wing this
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`evidence, as resp onsive or otherwi se?
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`MR. O'DELL: Th is evidence was p rovided in the
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`record in the Peti tioner's response as being responsive to the
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`Patent Owner 's a r gu ment in its reply arguing that the first and
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`second patterns must be different by the clai ms, so we have
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`provided this in the record at the time of our response in
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`response to their argu ments.
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`An y other questions about the prosecution history?
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`JUDGE KALAN: Not a t this ti me .
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`MR. O'DELL: Oka y. I' m proceed ing now to slide
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`9. In slide 9 I ha ve reproduced cla i m 1 again. The Board's
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`Patent No. 5,652,084
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`construction correctl y uses the ter ms first and seco nd
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`consistently throughout the clai ms .
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`Wh at I have highlighted here on th e slid e is in red
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`I've highlighted first and second p atterns -- of course we 've
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`been discussing these -- but there are actuall y man y other
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`occurrences of fir st and second in t he clai m, including first
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`and second i maging la yers which I' ve highlighted in blue.
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`There is no question that the first a nd second
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`i maging la yers ca n both be co mprised of, can both be made of
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`the sa me material , that is , photoresist, as taught in t he
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`specification and, si mila rl y, this B oard's clai m construction
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`sa ys that the first and secon d patte rns can both be c o mprised
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`of, c an both be made of, the sa me geo metric shapes and
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`patterns.
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`Turning to slide 10, I bring this up on its face but
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`also I bring this u p because this wa s an i mportant issue
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`addressed b y the District Court, ag ain, not di spositive on this
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`case or not binding on this case, but I think that the Court's
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`anal ysis here is i nsightful.
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`First of all , begin ning at line 6 of this portion of
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`the Mark man hear ing transcript that I have on slide 1 0, the
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`Court recognizes that the y get the t er ms first and sec ond all
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`the ti me to refe r t o the sa me thing. And then the Co urt
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`recognizes or dis cusses with Mr . Voss, who is DSS ' attorne y in
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`the litigation, beginning at line 11 the Court sa ys: " But to
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`require that it" -- the first and se cond p atterns -- "be different
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`would be like r equiring that the ma terial used for the i maging
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`la yer be dif ferent because one is fi rst and one is se c ond,
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`wouldn't it? " Wh ich would be inco nsistent with other
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`testi mon y fro m the Mark man hearin g.
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`JUDGE B ONI LLA: J ust to be cl e ar, Patent Owner
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`doesn't make that argu ment her e th at it has to be dif ferent
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`mate rial, is that c orrect?
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`MR. O'DELL: No, no, in the I PR there is no
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`discussion of the content of the fir st and second i ma ging
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`la yers . I think all parties agre e th at it can be a photoresist.
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`That's what the s pecification states.
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`So I b ring this up because it shows an
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`inconsistency in DSS ' cl ai m constr uction based on the ter ms
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`first and second. The ter ms first a nd second b y the mselves
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`don't require diff erent co mposition. Yes, the y requi re t wo
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`different la yers , a first i maging la yer and a second i maging
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`la yer . The first i maging la yer is u sed in the first pa tterning
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`process. The sec ond i maging la ye r is used in the se cond
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`patterning process.
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`The y a re diff eren t in ti me and diff erent in order
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`but the y a re not d ifferent in that the y have to be co mposed of
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`different mat erial s. Like wise, the first and second p atterns in
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`the clai m are diff erent in that the y are diff erent in time . The
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`first patterning step uses the fi rst p attern. The secon d
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`patterning step uses a se cond patter n. But the content of the
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`patterns do not have to be diff erent .
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`And this is consistent with that Fre e Motion
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`Fitness case I me ntioned earlier. The te r ms fi rst an d second
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`are just used to d e scribe repe ated i nstances of a ter m in the
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`clai m.
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`JUDGE B ONI LLA: Ho w do you r espond to Patent
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`Owne r's argu ment that if you are going to have the m be the
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`sa me that doing s o requires this ad ditional step of c hanging
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`the align ment of t he wa fer?
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`MR. O'DELL: Le t me address that argu ment head
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`on. Moving to sli de 12, and this is part of DS S' inoperabilit y
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`argu ment , and if I can desc ribe this inoperability arg u ment as
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`follows: DSS sta tes that there are two differ ent tech niques for
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`achieving the sa me result.
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`The first one, acc ording to DSS , is described in the
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`patent as using two diffe rent patte rns, and the second
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`technique, accord ing to DSS , is des cribed in Jinbo as using the
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`sa me pattern albe it shifted, and DS S sa ying the evid ence
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`requiring an extra step of shifting t he pattern or the second
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`patterning step.
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`The Board's claim construction covers both of
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`these techniques. Petitioners sub mit that this inoperability
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`argu ment that an additional step is required b y the cl ai ms of
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`shifting the mask relative to t he wa fer is reall y an at te mpt to
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`li mit the clai ms t o only that disclo sed in the pref err ed
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`e mbodi ment.
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`As an analog y, if I can describe a p atent, consider
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`the patent whe re t he specification mentions a copper wire, a
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`clai m re cites a metal wi re, and a p rior art ref erence describes
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`an alu minu m wir e .
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`JUDGE B ONI LLA: Is that the sit uation we have
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`here, that Jinbo describes the r eali gn ment but the pa tent itself
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`does not?
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`MR. O'DELL: Ji nbo describes aligning, in the
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`second patterning step, it describes align ing the pattern offset
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`fro m the first alig n ment. I believe an align ment occ urs in
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`ever y ti me that p hotolithography i s used. Jinbo's second step,
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`the align ment has an offset align ment.
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`JUDGE B ONI LLA: The re's a shif t.
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`MR. O'DELL: It' s a shift.
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`JUDGE B ONI LLA: The patent, the challenged
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`patent here is that specification is going to that sa me shift.
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`MR. O'DELL: Yes, it does , Your Honor. First of
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`all, I would like to refe r to figures 2 and 4 of the dra wings in
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`the '084 patent, a nd it appears f ro m look ing at those figures
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`that it is the sa me pattern shifted.
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`So here we a re sh owing on the scre ens, I think 2 is
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`the botto m one and 4 is the top one , it is the sa me pa ttern
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`shifted, and this i s the sa me concep t that the Court re cognized
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`in its court order t hat the '084 pate nt -- and it also li sts these
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`figures along wit h other figures -- describes that the first and
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`second patterns c an be the sa me , just me rel y shifte d in the
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`'084 patent.
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`So the '084 patent teaches shifting i n these figures.
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`And not onl y t hat , it t eaches -- I would like to describe the
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`specification, the actual words of t he '084 patent an d, that is,
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`if we c an turn to slide 13, here I've reproduced a por tion of the
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`'084 patent at col u mn 6 , lines 12 t hrough 16.
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`And this portion of the paten t is describing the
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`second patterning step. And here i t sa ys: The se cond i maging
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`la yer is patterned in accordanc e wi th the second pattern to
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`for m a second pat terned la yer and a n y suitable lithographic
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`patterning technique ma y be used.
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`And there is no q uestion that alignment and
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`shifting were kno wn in the art and Jinbo is the easiest
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`evidence of that. Jinbo is a prior a rt docu ment that shows that
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`align ment and shi fting were well k nown concepts.
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`JUDGE B ONI LLA: You point us to figure 2 and 4
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`to show tha t the s pecification shows the shifting. Does the
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`specification description itself be yond the figures ta lk about
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`that also?
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`MR. O'DELL: Th e specification do es not use the
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`word shift.
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`JUDGE B ONI LLA: Does it use anything that
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`would suggest shifting?
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`MR. O'DELL: No, it does not sa y an ything to
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`suggest shifting other than this lan guage here but it also does
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`not describe diffe rent or non -duplicate. The specifi cation
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`reall y leaves it up to the dra wing.
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`JUDGE F RANKLIN: In the portion of the
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`specificatio n that you have reprodu ced here , refe rrin g to an y
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`suitable patterning technique, it se e ms that the Pate nt Owner
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`is placing a gre at e mphasis on that ter m suitable and providing
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`so me definition or explanation for it.
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`Wh at is your explanation of that te r m?
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`MR. O'DELL: Th ank you for that q uestion. So
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`according to the Patent Owner , using the sa me patterns for
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`both the first and second pattern, th e sa me geo metrie s, the
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`sa me patterns, is not suitable.
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`Yet, the Patent Owner ad mits that Jinbo is a
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`technique that ac hieves the sa me r esult. Jinbo is ev idence --
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`I' m not using it n ow as prior a rt - - Jinbo is evidence that it is
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`suitable and operable to use the sa me pattern .
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`JUDGE F RANKLIN: So are you s a ying that your
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`understanding of the ter m suitable there me a ns an y k nown
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`technique?
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`MR. O'DELL: An y known te chnique would work.
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`An y technique that works. And Ji nbo is evidence of both of
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`Case Nos. IPR2014-01030, and IPR2014-01493
`Patent No. 5,652,084
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`those, that using the sa me pattern works. It achieves the
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`result.
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`And, in fact , I bel ieve the DSS has slides that sa y
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`that Jinbo achieves this result, albeit through the use of using
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`the sa me patte rn. That means to me that the s a me pattern
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`works. Using the sa me pattern is s uitable. It is ope rable.
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`JUDGE KALAN: What about the c o mprising ter m
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`in the prea mble , does that su pport your a rgu ment that another
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`step could be included or does that work against you?
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`MR. O'DELL: Yes, thank you, Judge Kalan . The
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`clai m is open -end ed. The clai m does not sa y consisting of
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`these steps. DSS' argu ment is that additional steps would be
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`required, that is, shifting the alignment to achieve the result of
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`the clai m, but the clai m s a ys co mpr ising, and that me ans
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`additional steps can be added to the clai ms , which i s, in f act,
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`what man y d ependent clai ms do an d still be within t he scope
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`of the clai ms .
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`So DSS' argu men t that an additional align ment step
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`is needed or ne ce ssar y, A, contradi cts the figures of the
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`specification and contradicts this language that an y suitable
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`lithographic patterning technique can be used, but it also
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`contradicts the fa ct that the clai m uses the word co mprising.
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`The cl ai m is an o pen -ended clai m. The Patentee did not
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`choose to make th is a closed -ended consisting of clai m.
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`I' m going to turn to slide 14 now. In su mmar y, for
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`the first a rgu ment , the Board should confir m its claim
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`construction. Thi s issue has been a rgued and decide d in the
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`Institution Decisi on because this ar gu ment was made in DSS'
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`preli minar y response. It is further confir med b y the Mark man
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`hearing and clai m construction order for the District Court a nd
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`b y the patent exa mination of the '0 84 patent fa mil y.
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`Once the Board a ffir ms its results, this is
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`deter minative -- c lai m construction -- this is deter mi native.
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`That is, DSS pres ents no argu ments for patentabilit y based on
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`this clai m construction.
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`Before I go on to this next step, ar e there an y
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`questions?
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`JUDGE B ONI LLA: Just to let yo u know you have
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`less than a minut e of the ti me you' ve allocated for yourself.
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`MR. O'DELL: Oh, my goodness.
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`JUDGE B ONI LLA: You can take more ti me if you
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`like.
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`MR. O'DELL: I would like to tak e more ti me .
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`Thank you . I wil l move at a faster pace .
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`So the second a rgu ment is even un der DSS'
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`construction, Jinbo anticipates the clai ms . I would l ike to
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`make a fe w ver y quick points about this. On slide 15 I have
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`reprod uced figure 1 ( E) of Jinbo. Contrar y to DSS ' argu ment ,
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`Jinbo teaches two non -duplicate patterns.
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`Case Nos. IPR2014-01030, and IPR2014-01493
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`Figure 1 ( E) of Jinbo shown here s hows the result
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`of two patte rning steps. In the fi rst patterning step a first
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`pattern is used to make fe atures 13 b . The y are the s horter,
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`darker f eatures. And a second patterning step uses the second
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`pattern to produce fe atures 15 a. The y are the taller , lighter
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`figures or f eature s in the figure .
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`And as can be see n b y looking at th is figure, these
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`features a re in d if ferent locations. And this is ver y i mportant,
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`Your Honors. Th ese fe atures shown in this figure r e fer to
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`metal lines or ele ctrodes in an inte grated circuit and the y are
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`in different locati ons. Wh at that means is these a re going to
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`make diffe rent co nnec tions in that integrated circuit.
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`And this shows th at the t wo pattern s, the first and
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`second patterns used in Jinbo are d ifferent bec ause t he y
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`produce features in different locati ons. A shifted pa ttern is a
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`different pattern .
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`If you turn to slid e 16, we actuall y discussed this
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`with DSS' expert , Dr. Mack . And we t alked about shifting a
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`pattern and a specified distance to the left . And Dr . M ack,
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`DSS ' expert Dr. Mack could not b e more clea r. He stated: "A
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`pattern that's plac ed in a different position is a diffe rent
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`pattern."
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`Moving ahead to slide 18, I did sa y we were going
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`to discuss, the y a re separ ate in ti me, but I do want t o re mind
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