Trials@uspto.gov
`571-272-7822
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` Paper 10
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`Date: March 13, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY
`LIMITED,
`Petitioner,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`
`
`
`Case IPR2016-01367
`Patent RE41,980 E
`
`
`
`
`Before JUSTIN T. ARBES, MICHAEL J. FITZPATRICK, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`
`
`FITZPATRICK, Administrative Patent Judge.
`
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`571-272-7822
`
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` Paper 10
`
`Date: March 13, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY
`LIMITED,
`Petitioner,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`
`
`
`Case IPR2016-01367
`Patent RE41,980 E
`
`
`
`
`Before JUSTIN T. ARBES, MICHAEL J. FITZPATRICK, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`
`
`FITZPATRICK, Administrative Patent Judge.
`
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`IPR2016-01367
`Patent RE41,980 E
`
`
`I.
`
`INTRODUCTION
`
`Petitioner, Taiwan Semiconductor Manufacturing Company Limited,
`filed a Petition to institute an inter partes review of claims 18, 19, 30–32,
`34–36, 47–49, and 51 of U.S. Patent No. RE41,980 E (Ex. 1001, “the ’980
`patent”) pursuant to 35 U.S.C. § 311(a). Paper 2 (“Pet.”). Patent Owner,
`Godo Kaisha IP Bridge 1, filed a Preliminary Response under 35 U.S.C.
`§ 313. Paper 7 (“Prelim. Resp.”). In a January 5, 2017, Decision, we denied
`the Petition. Paper 8 (“Dec.”).
`Petitioner filed a Request for Rehearing of our Decision. Paper 9
`(“Reh’g Req.”). The Request is denied.
`
`II.
`
`STANDARD OF REVIEW
`
`“The burden of showing a decision should be modified lies with the
`party challenging the decision,” which party “must specifically identify all
`matters the party believes the Board misapprehended or overlooked, and the
`place where each matter was previously addressed” in a paper of record.
`37 C.F.R. § 42.71(d). And, because Petitioner seeks rehearing of our
`Decision denying the Petition, it must show an abuse of discretion. See
`37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will
`review the decision for an abuse of discretion.”).
`
`III.
`
`ANALYSIS
`
`All of the challenged claims recite, or incorporate by reference, “an
`interlayer insulating film.” We denied the Petition because Petitioner had
`not shown how the asserted prior art disclosed or taught this limitation.
`Dec. 13.
`
`2
`
`
`
`IPR2016-01367
`Patent RE41,980 E
`
`Petitioner did not propose an express construction for “an interlayer
`insulating film” or any other limitation. Pet. 19. With respect to
`construction of the claims, the Petition states only the following:
`
`Claim terms are given their ordinary and accustomed
`meaning as understood by a [person of ordinary skill in the art].
`Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005)
`(en banc). Because the ’980 patent will expire on September 8,
`2017, the Phillips standard should be applied to claim terms
`construed in this proceeding. See, e.g., 37 C.F.R. § 42.100(b).
`Pet. 19.
`Patent Owner proposed an express construction for “an interlayer
`insulating film.” Specifically, Patent Owner argued that it means “an
`insulating film located between but not within layers.” Prelim. Resp. 9. We
`largely agreed with Patent Owner, but we added the word “other,” yielding a
`construction as follows: an insulating film located between but not within
`other layers. Dec. 9. We determined that our construction was supported
`fully by intrinsic evidence and additionally by extrinsic evidence. See id. at
`7–10. Based on our construction, we determined that Petitioner had not
`shown how the prior art discloses or teaches “an interlayer insulating film,”
`as required by all the challenged claims. Id. at 12–13.
`On rehearing, Petitioner argues that we “misapprehended or
`overlooked the intrinsic and extrinsic evidence to misconstrue the term
`‘interlayer insulating film.’” Reh’g Req. 1. The Petition does not direct us
`to any such evidence to construe the claims. See Pet. 19. Indeed, Petitioner
`did not advance any express constructions, let alone one for the limitation on
`which its Request for Rehearing is based. See id. Rather, the evidence that
`Petitioner now contends we misapprehended or overlooked is that to which
`3
`
`
`
`IPR2016-01367
`Patent RE41,980 E
`
`Patent Owner directed us in support of its construction (which we largely
`adopted).
`It was Petitioner’s affirmative duty to explain how the challenged
`claims should be construed and how, as so construed, they are unpatentable.
`See 37 C.F.R. § 42.104(b)(3)–(4). Petitioner did not do this. The Petition
`states:
`Wollesen discloses an interlayer insulating film (e.g., dielectric
`layer 9) formed on the semiconductor substrate (1).3 Ex. 1006,
`FIG. 1. The dielectric layer 9 is an “interlayer” insulating film,
`as it is an electrically insulating film positioned between the
`conducting layers 8 and 10 in the semiconductor device.
`Ex. 1005, ¶ 65.
`[FN3:] Notably, the ’980 patent does not require that the
`claimed “interlayer insulating film” (i.e., interlayer
`insulating film 11 in the figures) be in direct contact with
`the “semiconductor substrate,” i.e., there can be other
`layers between the substrate and interlayer insulating film
`that are not shown in the figures. Ex. 1001, 7:18–28.
`Ex. 1005, ¶ 66.
`Pet. 25–26 (underlining added). Thus, Petitioner implicitly construed
`“interlayer insulating film” to mean one that is “between the conducting
`layers” (although, per Petitioner’s footnote 3, other layers may also exist
`therebetween). The problem with Petitioner’s implicit construction is that it
`is incomplete because it does not specify whether such a film may also be
`within one of the conducting layers.1 This was fatal because such is the
`structure of the very art that Petitioner asserted. More specifically,
`
`
`1 The ’980 patent does not describe or illustrate an interlayer insulating film
`that is both between conducting layers and within a conducting layer. See
`generally Ex. 1001.
`
`4
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`
`
`IPR2016-01367
`Patent RE41,980 E
`
`Wolleson’s dielectric layer 9 is both between conductive layers 8 and 10 and
`within conductive layer 8, as we explained in the Decision. See Ex. 1006,
`Fig. 1; Dec. 12–13.
`
`IV.
`
`CONCLUSION
`
`Petitioner has not carried its burden of demonstrating that the Board’s
`Decision should be modified. See 37 C.F.R. § 42.71(d).
`
`V.
`
`ORDER
`
`Petitioner’s Request for Rehearing is DENIED.
`
`5
`
`
`
`IPR2016-01367
`Patent RE41,980 E
`
`For Petitioner:
`
`E. Robert Yoches
`Stephen E. Kabakoff
`Joshua L. Goldberg
`FINNEGAN, HENDERSON, FARABOW
` GARRETT & DUNNER, LLP
`bob.yoches@finnegan.com
`stephen.kabakoff@finnegan.com
`joshua.goldberg@finnegan.com
`
`
`
`For Patent Owner:
`
`Michael J. Fink
`Neil Greenblum
`Arnold Turk
`GREENBLUM & BERNSTEIN, P.L.C.
`mfink@gbpatent.com
`ngreenblum@gbpatent.com
`aturk@gbpatent.com
`
`
`
`6
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