Trials@uspto.gov
`571-272-7822
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` Paper 11
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`Date: March 30, 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 IPR2016-01331
`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
`
`
`
`
`
`Page 1 of 7
`
`IP Bridge Exhibit 2003
`TSMC v. IP Bridge
`IPR2017-00931
`
`IP Bridge Exhibit 2005
`GlobalFoundries U.S. v. IP Bridge
`IPR2017-00903
`
`
`571-272-7822
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` Paper 11
`
`Date: March 30, 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 IPR2016-01331
`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
`
`
`
`
`
`Page 1 of 7
`
`IP Bridge Exhibit 2003
`TSMC v. IP Bridge
`IPR2017-00931
`
`IP Bridge Exhibit 2005
`GlobalFoundries U.S. v. IP Bridge
`IPR2017-00903
`
`
`
`IPR2016-01331
`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, 30–36,
`and 47–51 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 9 (“Dec.”).
`Petitioner filed a Request for Rehearing of our Decision. Paper 10
`(“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. 11–12.
`
`2
`
`Page 2 of 7
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`
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`IPR2016-01331
`Patent RE41,980 E
`
`Petitioner did not propose an express construction for “an interlayer
`insulating film” or any other limitation. Pet. 19–20. 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. 19–20.
`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. 8. 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. 8. We determined that our construction was supported
`fully by intrinsic evidence and additionally by extrinsic evidence. See id. at
`7–9. 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 10–11.
`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. 19–20. 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
`3
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`Page 3 of 7
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`IPR2016-01331
`Patent RE41,980 E
`
`that to which 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,
`in relevant part, merely states:
`
`Ting[1] discloses the semiconductor device 52 in FIG. 5
`comprises an interlayer insulating film (dielectric layer 25)
`including upper and lower regions 26 and 27 “formed to insulate
`the underlying layers from the subsequent conducting layer.”
`Ex. 1006, 7:4–12, FIG. 5.
`Pet. 25–26. Although the Petition explains, and offers evidence to show, the
`insulating aspect of Ting’s dielectric layer 25, it does not explain how or
`why Ting’s dielectric layer might constitute an interlayer insulating film
`within the meaning of the challenged claims.
`At best, the Petition implies that an “interlayer insulating film” is any
`structure that provides any insulation between conducting layers. The
`problem with such a construction is that it would be incomplete because it
`does not specify whether such a film may also be located or buried within
`one of the conducting layers.2 This was fatal because such is the structure of
`the very art that Petitioner asserted. More specifically, Ting’s dielectric
`layer 25 is both between conducting layers 21 and 36 and within the same
`
`
`1 U.S. Patent No. 5,169,680 to Ting, filed March 11, 1992, issued December
`8, 1992 (Ex. 1006).
`2 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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`Page 4 of 7
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`IPR2016-01331
`Patent RE41,980 E
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`layer as conducting layer 21, as we explained in the Decision. See Ex. 1006,
`Fig. 5; Dec. 10–11.
`Figure 5 of Ting, as annotated and colored by Petitioner, is
`reproduced below.
`
`
`Pet. 27. Figure 5, reproduced above as annotated and colored by Petitioner,
`shows a cross-sectional view of “completed semiconductor device 52.”
`Ex. 1006, 9:3–5. Consistent with Figure 5, Ting states that dielectric layer
`25 “has a lower region 27 comprised of silicon dioxide (SiO2) and an upper
`region 26 comprised of silicon nitride (Si2N4).” Id. at 7:9–12. Although
`lower region 27 is within the same layer as conducting layer 21, upper
`region 26 is not within either of the conducting layers 21 and 36.
`On rehearing, Petitioner now argues: “At least th[e] portion of
`[Ting’s] dielectric [layer] 25 that is not buried provides electrical insulation
`between layers in a vertical direction under the plain meaning of ‘interlayer
`insulating film.’” Reh’g Req. 13. This is a new argument. In the Decision
`5
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`Page 5 of 7
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`IPR2016-01331
`Patent RE41,980 E
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`denying institution, we noted that such an argument had not been made. We
`noted the following:
`
`[I]n Figure 5—the embodiment asserted by Petitioner—
`dielectric layer 25 “has a lower region 27 comprised of silicon
`dioxide (SiO2) and an upper region 26 comprised of silicon
`nitride (Si2N4).” Ex. 1006, 7:9–12. Petitioner does not assert
`that upper region 26 alone constitutes an “interlayer insulating
`film” within the meaning of claims 18 and 35. See Pet. 25–27.
`Dec. 11 n.5. We did not overlook the argument that upper region 26 alone
`constitutes an interlayer insulating film. Rather, the argument was not made.
`
`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.
`
`6
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`Page 6 of 7
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`IPR2016-01331
`Patent RE41,980 E
`
`For Petitioner:
`
`E. Robert Yoches
`Stephen E. Kabakoff
`FINNEGAN, HENDERSON, FARABOW GARRETT & DUNNER, LLP
`Bob.yoches@finnegan.com
`Stephen.kabakoff@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
`
`
`
`7
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`Page 7 of 7
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