throbber
Case IPR2017-00931 for
`U.S. Patent No. RE41,980
`
`Filed on behalf of Godo Kaisha IP Bridge 1
`
`By: Michael J. Fink (mfink@gbpatent.com)
`Greenblum & Bernstein, P.L.C.
`1950 Roland Clarke Place
`Reston, Virginia 20191
`Tel: (703) 716-1191
`Fax: (703) 716-1180
`
`
`
`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 IPR2017-00931
`U.S. Patent No. RE41,980
`____________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. §42.107
`
`
`Mail Stop PATENT BOARD, PTAB
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`Case IPR2017-00931 for
`U.S. Patent No. RE41,980
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION ....................................................................................... 1
`
`THE BOARD SHOULD APPLY ITS DISCRETION UNDER 35
`U.S.C. §§ 314(a) AND 325(d) AND DENY INSTITUTION ....................... 3
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`The ‘00931 Petition Challenges The Same Patent Claims,
`Asserts The Same Prior Art, On The Same Patentability
`Grounds, Asserted In The Earlier ‘01331 Case .................................. 3
`
`Petitioner Has Impermissibly Used The Board’s Decision As A
`Roadmap ............................................................................................ 6
`
`1.
`
`2.
`
`3.
`
`Petitioner Has Used The Board’s Decision In The ‘01331
`Case As A Roadmap For Claim Construction .......................... 6
`
`Petitioner Has Used The Board’s Decision In The ‘01331
`Case As A Roadmap For Its Revised Arguments About
`The Prior Art ...........................................................................10
`
`The Board Should Deny Institution In This Case Under
`The “Roadmap” Theory ..........................................................13
`
`Petitioner Is Impermissibly Attempting To Rectify Mistakes,
`Change Its Arguments, And Fix Deficiencies In Its Earlier
`Petitions ............................................................................................15
`
`Instituting Trial On The ‘00931 Petition Would Be A Further
`Waste Of The Board’s Time, Efforts And Resources ........................19
`
`Petitioner’s Numerous Challenges To Patent Owner’s Patents Is
`Harassment And Unfair To Patent Owner .........................................21
`
`The Factors Considered When Determining Whether To
`Exercise Discretion To Institute An Inter Partes Review Weigh
`Against Institution ............................................................................23
`
`III. CONCLUSION ..........................................................................................28
`
`
`
`i
`
`

`

`Case IPR2017-00931 for
`U.S. Patent No. RE41,980
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`
`Alarm.com Inc. v. Vivint, Inc.,
`IPR2016-01091, Paper 11 (PTAB November 23, 2016).....................................27
`
`Blue Coat Systems Inc. v. Finjan, Inc.,
`IPR2016-01441, Paper 14 (PTAB January 23, 2017) .........................................24
`
`Blue Coat Systems LLC v. Finjan, Inc.,
`IPR2016-01443, Paper 13 (PTAB January 23, 2017) ................................... 21, 24
`
`Butamax Advanced Biofuels LLC v. Gevo, Inc.,
`IPR2014-00581, Paper 8 (PTAB October 14, 2014) .............................. 13, 18, 21
`
`Cepheid v. Roche Molecular Systems, Inc.,
`IPR2015-00881, Paper 9 (PTAB Sept. 17, 2015) ......................................... 14, 15
`
`Conopco, Inc. v. The Procter & Gamble Co.,
`IPR2014-00506, Paper 17 (PTAB July 7, 2014) ................................................. 5
`
`CustomPlay, LLC v. ClearPlay, Inc.,
`IPR2014-00783, Paper 9 (PTAB November 7, 2014) ........................................13
`
`Ethicon Endo-Surgery, Inc. v. Covidien AG,
`IPR2016-00944, Paper 8 (PTAB October 24, 2016) ........................................... 9
`
`Great West Casualty Co. v. Intellectual Ventures II,
`IPR2016-00453, Paper 12 (PTAB June 9, 2016) .................................... 19, 22, 24
`
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir. 2016) ........................................................................... 3
`
`Initiative for Responsibility in Drug Pricing, LLC v. Wyeth, LLC,
`IPR2014-01259, Paper 8 (PTAB February 13, 2015) .........................................20
`
`LG Electronics v. Core Wireless Licensing S.A.R.L.,
`IPR2016-00986, Paper 12 (PTAB August 22, 2016) ................ 7, 8, 10, 17, 18, 19
`
`ii
`
`

`

`Case IPR2017-00931 for
`U.S. Patent No. RE41,980
`
`
`Medtronic, Inc. v. Nuvasive, Inc.,
`IPR2014-00487, Paper 8 (PTAB September 11, 2014) ......................................20
`
`Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc.,
`IPR2014- 0436, Paper 17 (PTAB June 19, 2014) ...............................................20
`
`Microsoft Corp. v. Bradium Technologies, LLC,
`IPR2016-00449, Paper 9 (PTAB July 25, 2016) .................................... 13, 14, 15
`
`Nestle USA, Inc. v. Steuben Foods, Inc.,
`IPR2014-01235, Paper 12 (PTAB December 22, 2014) ............................... 14, 15
`
`NetApp Inc. v. Crossroads Sys., Inc.,
`IPR2015-00772, Paper 12 (PTAB September 3, 2015) ......................................13
`
`NRT Technology Corp. v. Everi Payments Inc.,
`CBM2016-00080, Paper 12 (PTAB November 10, 2016) .............................. 9, 17
`
`Nvidia Corp. v. Samsung Elec. Co., Ltd.,
`IPR2016-00134, Paper 9 (PTAB May 4, 2016) ........................................ 6, 18, 24
`
`Samsung Elec. Co. v. Rembrandt Wireless Techs., LP,
`IPR2015-00114, Paper 14 (PTAB January 28, 2015) ................................... 18, 20
`
`Unified Patents, Inc. v. PersonalWeb Techs., LLC,
`IPR2014-00702, Paper 13 (PTAB July 24, 2014) ..............................................20
`
`Xactware Sols, Inc., v. Eagle View Tech., Inc.,
`IPR2017-00021, Paper No. 9 (PTAB April 14, 2017) ...................... 22, 23, 26, 27
`
`ZTE Corp. and ZTE (USA) Inc. v. ContentGuard Holdings, Inc.,
`IPR2013-00454, Paper 12 (PTAB September 25, 2013) ....................................20
`
`
`
`Statutes
`
`35 U.S.C. § 314(a) .......................................................................... 2, 3, 6, 9, 12, 26
`
`35 U.S.C. § 316(a)(11) ..........................................................................................23
`
`iii
`
`

`

`Case IPR2017-00931 for
`U.S. Patent No. RE41,980
`
`35 U.S.C. § 316(b) ................................................................................................. 5
`
`35 U.S.C. §325(d) ........................................................ 2, 3, 4, 5, 6, 9, 12, 13, 14, 15
`
`
`
`Other Authorities
`
`157 Cong. Rec. S1042 (daily ed. Mar. 1, 2011) (Statement of Sen. Kyl)................ 5
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012) ............... 5
`
`
`
`Regulations
`
`37 C.F.R. § 42.1(b) ................................................................................................ 5
`
`37 C.F.R. § 42.104(b)(3)-(4) ............................................................................. 8, 15
`
`37 C.F.R. § 42.108(a)............................................................................................. 3
`
`
`
`iv
`
`

`

`Case IPR2017-00931 for
`U.S. Patent No. RE41,980
`
`
`EXHIBIT LIST
`
`DECISION Denying Institution of Inter Partes Review,
`IPR2016-01331, Paper 9, January 5, 2017.
`
`DECISION Denying Institution of Inter Partes Review,
`IPR2016-01367, Paper 8, January 5, 2017.
`
`DECISION Denying Request for Rehearing, IPR2016-01331,
`Paper 11, March 30, 2017.
`
`DECISION Denying Request for Rehearing, IPR2016-01367,
`Paper 10, March 13, 2017.
`
`
`Exhibit 2001:
`
`
`Exhibit 2002:
`
`
`Exhibit 2003:
`
`
`Exhibit 2004:
`
`
`
`v
`
`

`

`Case IPR2017-00931 for
`U.S. Patent No. RE41,980
`
`I.
`
`INTRODUCTION
`
`Patent Owner, Godo Kaisha IP Bridge 1 (“IP Bridge” or “Patent Owner”),
`
`submits this Preliminary Response to the Petition for Inter Partes Review (“the
`
`‘00931 petition”) filed by Taiwan Semiconductor Manufacturing Company
`
`Limited (“TSMC” or “Petitioner”) on February 17, 2017, challenging the
`
`patentability of certain claims of U.S. Patent No. RE41,980 (Exhibit 1001, “the
`
`‘980 Patent”).
`
`This is Petitioner’s third petition challenging the patentability of claims of
`
`the ‘980 patent. Petitioner previously filed a petition requesting review of claims
`
`18, 19, 30-36, and 47-51 of the ‘980 patent in IPR2016-01331 (“the ‘01331 case”)
`
`and filed another petition requesting review of claims 18, 19, 30-32, 34-36, 47-49
`
`and 51 of the ‘980 patent in IPR2016-01367 (“the ‘01367 case”). The Board
`
`denied institution of both the ‘01331 case and the ‘01367 case on January 5, 2017.
`
`Exhibits 2001, 2002. Petitioner then requested rehearing in both cases on February
`
`6, 2017. IPR2016-01331, Paper 10; IPR2016-01367, Paper 9. The Board denied
`
`the Request for Rehearing in the ‘01367 case on March 13, 2017 (Exhibit 2004),
`
`and denied the Request for Rehearing in the ‘01331 case on March 30, 2017
`
`(Exhibit 2003). Prior to the Board deciding Petitioner’s Requests for Rehearing,
`
`Petitioner filed this third petition challenging the ‘980 patent (the ‘00931 petition).
`
`1
`
`

`

`Case IPR2017-00931 for
`U.S. Patent No. RE41,980
`
`
`The Board should deny institution of the proceeding requested in the ‘00931
`
`petition under 35 U.S.C. §§ 314(a) and 325(d) for any and/or all of the following
`
`reasons:
`
`1. The ‘00931 petition challenges the same patent claims, asserts the same
`
`prior art, on the same grounds of patentability, asserted in the earlier
`
`‘01331 case;
`
`2. Petitioner is impermissibly using the Board's Decision in the ‘01331 case
`
`as a roadmap;
`
`3. Petitioner is impermissibly attempting to rectify mistakes, change its
`
`arguments, and fix deficiencies in its earlier petitions;
`
`4. Instituting trial on the ‘00931 petition would be a waste of the Board’s
`
`time, efforts and resources;
`
`5. Petitioner’s numerous IPR challenges to Patent Owner’s patents is
`
`harassment and unfair to Patent Owner; and,
`
`6. The factors used as a guide for the Board’s decision to exercise discretion
`
`whether to initiate an IPR proceeding weigh heavily against institution.
`
`For any one or more of these reasons, as explained in more detail herein, the
`
`Board should deny institution.
`
`2
`
`

`

`Case IPR2017-00931 for
`U.S. Patent No. RE41,980
`
`
`II. THE BOARD SHOULD APPLY ITS DISCRETION UNDER 35 U.S.C.
`§§ 314(a) AND 325(d) AND DENY INSTITUTION
`
`Institution of an inter partes review is discretionary. See 35 U.S.C. § 314(a)
`
`(authorizing institution of an inter partes review under particular circumstances,
`
`but not requiring institution under any circumstances); 37 C.F.R. § 42.108(a) (“the
`
`Board may authorize the review to proceed”)(emphasis added); Harmonic Inc. v.
`
`Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (explaining that under §
`
`314(a), “the PTO is permitted, but never compelled, to institute an IPR
`
`proceeding”). Thus, the Board has discretion to deny institution of any IPR
`
`petition.
`
`A. The ‘00931 Petition Challenges The Same Patent Claims, Asserts
`The Same Prior Art, On The Same Patentability Grounds,
`Asserted In The Earlier ‘01331 Case
`
`As in the ‘01331 case, the ‘00931 petition challenges the patentability of the
`
`same claims of the ‘980 patent over the same prior art on the same grounds of
`
`patentability, i.e., (1) U.S. Patent No. 5,169,680 (“Ting”)(Exhibit 1006) under 35
`
`U.S.C. § 102, or (2) Ting in view of U.S. Patent No. 5,527,737 (“Jeng”)(Exhibit
`
`1007) under 35 U.S.C. § 103. ‘00931 petition, p. 20. Additionally, the expert
`
`declaration submitted in the ‘00931 case (Exhibit 1005) is substantially similar to
`
`the declaration by the same expert submitted in the ‘01331 case (Exhibit 1005).
`
`3
`
`

`

`The previous ‘01331 petition challenged the patentability of claims 18, 19,
`
`30-36, and 47-51 of the ‘980 patent under 35 U.S.C. §§ 102 and 103:
`
`Case IPR2017-00931 for
`U.S. Patent No. RE41,980
`
`
`IPR2016-01331, Petition, p. 19.
`
`The present ‘00931 petition challenges the patentability of the same claims
`
`on the same grounds, 35 U.S.C. §§ 102 and 103:
`
`
`
`
`
`IPR2017-00931, Petition, p. 20.
`
`The Board has already thoroughly considered the patentability of the
`
`challenged claims of the ‘980 patent over Ting, and Ting in view of Jeng, in the
`
`‘01331 case and rejected Petitioner’s arguments. “[I]n determining whether to
`
`institute or order a proceeding …, the Director may take into account whether, and
`
`reject the petition or request because, the same or substantially the same prior art or
`
`arguments previously were presented to the Office.” 35 U.S.C. § 325(d)(emphasis
`
`added). Under 35 U.S.C. § 325(d), the Board “has broad discretion to deny a
`
`4
`
`

`

`Case IPR2017-00931 for
`U.S. Patent No. RE41,980
`
`
`petition that raises substantially the same prior art or arguments previously
`
`presented to the Office.” Conopco, Inc. v. The Procter & Gamble Co., No.
`
`IPR2014-00506, Paper 17, Decision Denying Institution of Inter Partes Review at
`
`6 (PTAB July 7, 2014).
`
`The legislative history of Section 325(d) confirms Congress’ intent that the
`
`Board can reject duplicative IPR petitions. For example, Senator Jon Kyl stated
`
`that Section 325(d) “allows the Patent Office to reject any request for a proceeding,
`
`including a request for ex parte reexamination, if the same or substantially the
`
`same prior art or arguments previously were presented to the Office with respect to
`
`that patent.” 157 Cong. Rec. S1042 (daily ed. Mar. 1, 2011) (Statement of Sen.
`
`Kyl). Thus, the Board can reject a petition where “the same or substantially the
`
`same prior art or arguments previously were presented to the Office.” 35 U.S.C. §
`
`325(d); see also Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48765
`
`(Aug. 14, 2012). The Board’s discretion to deny duplicative petitions is necessary
`
`to avoid inefficient and wasteful use of the Board’s resources and time. See 35
`
`U.S.C. § 316(b)(regulations should take into account, inter alia, “the effect of any
`
`such regulation on the efficient administration of the Office, and the ability of the
`
`Office to timely complete proceedings instituted under this chapter”); 37 C.F.R. §
`
`42.1(b)(“This part shall be construed to secure the just, speedy, and inexpensive
`
`resolution of every proceeding.”).
`
`5
`
`

`

`Case IPR2017-00931 for
`U.S. Patent No. RE41,980
`
`
`Moreover, “Petitioner cannot expect automatic acceptance of multiple
`
`petitions for consideration, if they are against the same claims of the same patent
`
`and filed so long apart that Petitioner received the benefit of having studied Patent
`
`Owner’s Preliminary Response in the first petition or the Board’s decision on
`
`whether to institute review.” Nvidia Corp. v. Samsung Elec. Co., Ltd., IPR2016-
`
`00134, Paper 9, pp. 7-8 (PTAB May 4, 2016).
`
`The Board should not expend its resources reevaluating the same prior art
`
`and patentability grounds that it already thoroughly considered in the ‘01331 case.
`
`Accordingly, the Board should apply its discretion under 35 U.S.C. §§ 314(a) and
`
`325(d) and deny institution.
`
`B.
`
`Petitioner Has Impermissibly Used The Board’s Decision As A
`Roadmap
`
`Petitioner candidly admits that it has used the Board’s decision in the ‘1331
`
`case as a roadmap to prepare the present ‘00931 petition:
`
`This petition modifies the mapping of the “interlayer insulating
`
`film” to … satisfy the Board’s claim construction...
`
`‘00931 petition, pp. 1-2 (emphasis added).
`
`1. Petitioner Has Used The Board’s Decision In The ‘01331 Case
`As A Roadmap For Claim Construction
`
`Petitioner asserts that the Board’s claim construction of “interlayer
`
`insulating film” was unexpected. Petitioner did not propose specific constructions
`
`6
`
`

`

`Case IPR2017-00931 for
`U.S. Patent No. RE41,980
`
`
`for any of the claim limitations in the previous ‘01331 petition. Instead, Petitioner
`
`merely stated that the Phillips standard should be applied to claim terms. ‘01331
`
`petition, p. 19.
`
`In LG Electronics v. Core Wireless Licensing S.A.R.L., IPR2016-00986,
`
`Paper 12 (PTAB August 22, 2016), the Board stated that “Petitioner is required to
`
`construe the claims in the Petition.” Id., p. 12. “If there is substantial doubt on
`
`how to construe a claim term, a petitioner is free to include alternative
`
`constructions in its petition, and to make arguments accordingly.” Id., p. 14.
`
`The Board’s claim construction was not unexpected. For reasons known
`
`only to Petitioner, Petitioner opted not to propose specific constructions for any of
`
`the recited claim terms. The Board construed the claim term “an interlayer
`
`insulating film” to mean “an insulating film located between but not within other
`
`layers,” which was largely based on Patent Owner’s proposed claim construction.
`
`Exhibit 2001, p. 9, Exhibit 2003, pp. 3-4. Based on that claim construction, the
`
`Board determined that Petitioner had not shown how the prior art disclosed or
`
`taught the recited “an interlayer insulating film.” Id., pp. 12-13. On rehearing in
`
`the ‘01331 case, the Board specifically held that Petitioner did not carry it burden
`
`to explain how the challenged claims should be construed, and once construed,
`
`why the challenged claims would be unpatentable:
`
`7
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`

`

`Case IPR2017-00931 for
`U.S. Patent No. RE41,980
`
`
`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.
`
`Exhibit 2003, p. 4 (emphasis added).
`
`Not only did Petitioner fail to specifically construe any of the claim terms of
`
`the ‘980 patent in the previous ‘01331 petition, Petitioner did not propose specific
`
`constructions or suggest particular meanings for any claim terms, regardless of
`
`whether the broadest reasonable interpretation (“BRI”) standard or the Phillips
`
`standard applied, in twelve (12) other IPR petitions filed by Petitioner challenging
`
`patents owned by Patent Owner IP Bridge.1 “Petitioner is required to construe the
`
`claims in the Petition,” and “is responsible to assert in its own petitions … the
`
`claim construction that it desires and urges the Board to adopt.” LG Electronics v.
`
`Core Wireless Licensing S.A.R.L., IPR2016-00986, Paper 12, p. 12 (PTAB August
`
`22, 2016). Interestingly, in the present ‘00931 petition, Petitioner still does not
`
`
`
`1 See IPR2016-01246, Paper 2, p. 16; IPR2016-01247, Paper 2, p. 16; IPR2016-
`
`1249, Paper 2, p. 11; IPR2016-1264, Paper 2, p. 11; IPR2016-01331, Paper 2, pp.
`
`19-20; IPR2016-01367, Paper 2, p. 19; IPR2016-01376; Paper 2, p. 28; IPR2016-
`
`01377, Paper 2, pp. 30-31; IPR2016-01378, Paper 2, p .24; IPR2016-01379, Paper
`
`2, pp. 27-28; IPR2016-01439, Paper 2, p. 17; IPR2016-01442, Paper 2, pp. 16-17.
`
`8
`
`

`

`Case IPR2017-00931 for
`U.S. Patent No. RE41,980
`
`
`assert a construction for the claim term “an interlayer insulating film,” nor accept
`
`that the Board’s construction of that term is correct.2 The Petition simply restates
`
`Patent Owner’s proposed claim construction, the Board’s claim construction, and
`
`the district court’s claim construction. ‘00931 petition, p. 21.
`
`Petitioner has used the Board’s claim construction from the previous ‘01331
`
`case as a roadmap in the present ‘00931 case. This is precisely the type of
`
`situation under which the Board should apply its discretion under 35 U.S.C. §§
`
`314(a) and 325(d) to deny institution of a follow-on petition. Ethicon Endo-
`
`Surgery, Inc. v. Covidien AG, IPR2016-00944, Paper 8, pp. 7-8 (PTAB October 24,
`
`2016)(Denied institution where “Petition uses our previous decision as a roadmap
`
`to remedy the deficiency in 1275 IPR.”); NRT Technology Corp. v. Everi Payments
`
`Inc., CBM2016-00080, Paper 12, pp. 10-11(PTAB November 10, 2016)(Board
`
`denied petition where Petitioner “attempts to bolster challenges it had previously
`
`
`
`2 Petitioner maintains that the Board’s claim construction is incorrect:
`
`In IPR2016-01331, Petitioner filed a Request for Rehearing to explain
`
`why the negative limitation in the Board’s construction (“but not
`
`within other layers”) was inconsistent with both the intrinsic and
`
`extrinsic evidence, and Petitioner stands by the position set forth in
`
`its request. IPR2016-01331, Paper No. 10.
`
`‘00931 petition, p. 2 (emphasis added).
`
`
`
`9
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`

`

`Case IPR2017-00931 for
`U.S. Patent No. RE41,980
`
`
`advanced unsuccessfully.”); LG Electronics v. Core Wireless Licensing S.A.R.L.,
`
`IPR2016-00986, Paper 12 (PTAB August 22, 2016).
`
`As the present ‘00931 petition admittedly has used the Board’s claim
`
`construction from the previous ‘01331 decision as a roadmap, the Board should
`
`deny institution of this IPR proceeding.
`
`2. Petitioner Has Used The Board’s Decision In The ‘01331 Case
`As A Roadmap For Its Revised Arguments About The Prior
`Art
`
`In addition to using the Board’s previous decision as a roadmap for claim
`
`construction, Petitioner has also used the Board’s decision in the previous ‘01331
`
`case as a roadmap for its arguments about the prior art, in particular the Ting
`
`reference. In the previous ‘01331 decision, the Board noted:
`
`[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.
`
`Exhibit 2001, p. 11, n.5 (emphasis added).
`
`On rehearing, Petitioner argued that at least the 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.” Id., p. 5. The
`
`10
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`

`

`Case IPR2017-00931 for
`U.S. Patent No. RE41,980
`
`
`Board determined that the petition had not directed the Board to any evidence to
`
`construe the claims, nor advanced any express constructions, let alone one for the
`
`limitation on which its Request for Rehearing was based, and that Petitioner had
`
`not met its “affirmative duty to explain how the challenged claims should be
`
`construed and how, as so construed, they are unpatentable.” Exhibit 2003, pp. 3-4.
`
`The Board stated that the Petition in the previous ‘01331 case, in relevant part,
`
`merely stated:
`
`Ting1 [footnote omitted] 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.
`
`Id.
`
`
`The Board further found that the Petition in the previous ‘01331 case did
`
`“not explain how or why Ting’s dielectric layer might constitute an interlayer
`
`insulating film within the meaning of the challenged claims.” Exhibit 2003, p. 4.
`
`The Board stated:
`
` 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
`
`11
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`

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`Case IPR2017-00931 for
`U.S. Patent No. RE41,980
`
`
`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 layer as conducting layer 21, as we
`
`explained in the Decision. See Ex. 1006, Fig. 5; Dec. 10–11.
`
`***
`
`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.
`
`Id., pp. 4-5.
`
`Accordingly, in its decision on rehearing, the Board determined that it “did
`
`not overlook the argument that upper region 26 alone constitutes an interlayer
`
`insulating film. Rather, the argument was not made.” Id.
`
`In the present ‘00931 petition, using the Board’s decision in the previous
`
`‘01331 case as a roadmap, Petitioner again asserts that upper region 26 alone
`
`constitutes an interlayer insulating film. ‘00931 petition, pp. 1-2. Having denied
`
`Petitioner’s Request for Rehearing asserting this same argument now asserted in
`
`the ‘00931 petition, the Board should exercise its discretion and deny the ‘00931
`
`petition under 35 U.S.C. §§ 314(a) and 325(d). Moreover, as the present ‘00931
`
`petition admittedly uses the Board’s discussion of the prior art reference Ting from
`
`the previous ‘01331 decision as a roadmap for its present patentability arguments,
`
`the Board should deny institution of this IPR proceeding.
`
`12
`
`

`

`3. The Board Should Deny Institution In This Case Under The
`“Roadmap” Theory
`
`Case IPR2017-00931 for
`U.S. Patent No. RE41,980
`
`
`The Board should exercise it discretion in this present ‘00931 case to deny
`
`institution under 35 U.S.C. § 325(d) based on a “roadmap” theory. Although there
`
`is no established per se rule of the Board requiring that it deny institution based on
`
`a “roadmap” test, Microsoft Corp. v. Bradium Technologies, LLC, IPR2016-00449,
`
`Paper 9, p. 10 (PTAB July 25, 2016), the Board has repeatedly declined to institute
`
`a later follow-on IPR proceeding where, as here, the Petitioner exploits the Board’s
`
`decision from an earlier IPR proceeding as a roadmap. See, e.g., NetApp Inc. v.
`
`Crossroads Sys., Inc., IPR2015-00772, Paper 12, p. 7 (PTAB September 3,
`
`2015)(“Petitioner’s use of the guidance in the 1233 Institution Decision to improve
`
`the present Petition weighs in favor of exercising our discretion to deny the
`
`Petition.”); CustomPlay, LLC v. ClearPlay, Inc., IPR2014-00783, Paper 9, p. 9
`
`(PTAB November 7, 2014)(denial of institution decision “should not act as a how-
`
`to guide for the same Petitioner filing a second petition for inter partes review
`
`challenging claims that it unsuccessfully challenged in the first petition or claims
`
`that it reasonably could have challenged in the first petition”); Butamax Advanced
`
`Biofuels LLC v. Gevo, Inc., IPR2014-00581, Paper 8, pp. 12–13 (PTAB October
`
`14, 2014)(rejecting a petition that used “our prior decision as a roadmap to remedy
`
`[the petitioner’s] prior deficient challenge,” and noting that “[a]llowing similar,
`
`13
`
`

`

`Case IPR2017-00931 for
`U.S. Patent No. RE41,980
`
`
`serial challenges to the same patent, by the same petitioner, risks harassment of
`
`patent owners and frustration of Congress’ intent in enacting the Leahy-Smith
`
`America Invents Act”).
`
`Although there are cases where the Board refused to deny institution based
`
`on a roadmap theory, those cases are significantly different from the present
`
`‘00931 case. For example, in Microsoft, the second petition cited prior art not
`
`cited in the first petition. Id. p. 10 (“Although Petitioner does not explain why it
`
`did not cite Reddy in its first petition…”). Furthermore, the Board found that the
`
`newly cited prior art in the second petition “discloses an approach and provides
`
`substantive information that is qualitatively different from the references cited” in
`
`the first petition. Id. p. 11 (emphasis added). Thus, the Microsoft case is clearly
`
`inapplicable to the present circumstances because in the present ‘00931 case,
`
`Petitioner cites the exact same prior art cited in the previous ‘01331 case.
`
`In Nestle USA, Inc. v. Steuben Foods, Inc., IPR2014-01235, Paper 12
`
`(PTAB December 22, 2014), the Board noted that § 325(d) does not require denial
`
`of repeat petitions, but instituted the proceeding because the second petition cited
`
`prior art and raised new arguments not previously considered. Id. pp. 6-7.
`
`Similarly, in Cepheid v. Roche Molecular Systems, Inc., IPR2015-00881, Paper 9
`
`(PTAB Sept. 17, 2015), the Board instituted a second petition because new claims
`
`were challenged and new prior art was cited. Id., pp. 5-6.
`
`14
`
`

`

`Case IPR2017-00931 for
`U.S. Patent No. RE41,980
`
`
`Unlike the follow-on petitions in Microsoft, Nestle and Cepheid, the Petition
`
`in the present ‘00931 case does not cite new prior art, new grounds of
`
`unpatentability, or new arguments not previously considered by the Board. Rather,
`
`the present ‘00931 case asserts the same prior art, the same grounds of
`
`unpatentability, and substantially the same arguments asserted in the previous
`
`‘01331 case.
`
`Accordingly, the Board should exercise it discretion to deny institution
`
`under 35 U.S.C. § 325(d).
`
`C.
`
`Petitioner Is Impermissibly Attempting To Rectify Mistakes,
`Change Its Arguments, And Fix Deficiencies In Its Earlier
`Petitions
`
`Petitioner states that it “is not attempting to rectify mistakes in its first
`
`petition.” ‘00931 petition, p. 69. Petitioner additionally states that it “is not
`
`attempting to change an argument or fix deficiencies in the first petition.” Id.
`
`Contrary to these statements, Petitioner is attempting to rectify mistakes,
`
`change its arguments, and fix deficiencies in its earlier petitions (‘01331 case and
`
`‘01367 case). Petitioner’s did not carry its burden in either the ‘01331 case or the
`
`‘01367 case 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
`
`acknowledged that the Phillips standard should be applied to the claim terms,
`
`(‘01331 petition, p. 19, ‘01367 petition, p. 19), but made no effort to construe any
`
`15
`
`

`

`Case IPR2017-00931 for
`U.S. Patent No. RE41,980
`
`
`of the claims. Petitioner now asserts that it “could not have predicted the Board’s
`
`claim construction.” ‘00931 petition, p. 69. However, having failed to even
`
`attempt to construe the claims of the ‘980 patent in the ‘01331 petition and the
`
`‘01367 petition, Petitioner should not now be permitted to rectify its mistake of not
`
`providing alternative claim constructions in the earlier filed petitions. Moreover,
`
`Petitioner should not now be permitted to change its arguments to conform to the
`
`Board’s claim construction, nor be permitted to fix the deficiencies in its earlier
`
`petitions, in particular in the ‘01331 petition, where it failed to explain how or why
`
`Ting’s dielectric layer might constitute an interlayer insulating film within the
`
`meaning of the challenged claims. See Exhibit 2003, p. 4.
`
`In an attempt at a second bite at the apple, Petitioner recasts its argument
`
`taking into account the Board’s claim construction and the Board’s analysis of the
`
`prior art in an attempt to overcome its earlier shortcomings. For example, as
`
`discussed earlier, in the previous ‘01331 petition, Petitioner’s argued that Ting’s
`
`“dielectric layer 25” showed the claimed interlayer insulating film. The Board
`
`rejected Petitioner’s argument, finding that “dielectric layer 25 is not an interlayer
`
`insulating film within the meaning of claims 18 and 35.” Exhibit 2001, p. 11. The
`
`Board noted:
`
`Ting states that in Figure 5—the embodiment asserted by
`
`Petitioner—dielectric layer 25 “has a lower region 27
`
`16
`
`

`

`Case IPR2017-00931 for
`U.S. Patent No. RE41,980
`
`
`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.
`
`Exhibit 2001, p. 11, n.5 (emphasis added).
`
`Petitioner now realizing its earlier mistakes and deficiencies argues that
`
`Ting’s “upper region 26 of dielectric layer 25” shows an “interlayer insulating
`
`film.” ‘00931 petition, p. 2. It is thus clear that Petitioner is impermissibly using
`
`the Board’s decision in the previous ‘01331 case to rectify its mistakes, change its
`
`arguments, and fix deficiencies in its earlier petitions. NRT Technology Corp. v.
`
`Everi Payments Inc., CBM2016-00080, Paper 12, pp. 10-11 (PTAB November 10,
`
`2016); LG Electronics v. Core Wireless Licensing S.A.R.L., IPR2016-00986, Paper
`
`12 (PTAB August 22, 2016).
`
`Petitioner additionally has supplemented its arguments and supporting
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`expert’s declaration (Exhibit 1005)

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