Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 10
`Entered: May 22, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNITED MICROELECTRONICS CORP., UMC GROUP (USA),
`SEMICONDUCTOR MANUFACTURING INTERNATIONAL CORP.,
`SEMICONDUCTOR MANUFACTURING INTERNATIONAL
`(SHANGHAI) CORP., SEMICONDUCTOR MANUFACTURING
`INTERNATIONAL (BEIJINIG) CORP., and SMIC, AMERICAS
`Petitioner,
`
`
`
`
`
`v.
`
`LONE STAR SILICON INNOVATIONS LLC
`Patent Owner.
`____________
`
`Case IPR2017-01513
`Patent 5,973,372
`____________
`
`
`Before GRACE KARAFFA OBERMANN, JENNIFER MEYER
`CHAGNON, and ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`C.F.R. § 42.71(d)
`
`
`
`
`
`

`

`IPR2017-01513
`Patent 5,973,372
`
`
`I. INTRODUCTION
`Petitioner filed a Petition (Paper 1, “Pet.”) requesting an inter partes
`review of claims 1 and 4–6 of U.S. Patent No. 5,973,372 (Ex. 1001). Patent
`Owner filed a Preliminary Response (Paper 7, “Prelim. Resp.”). We entered
`a decision (Paper 8, “Dec.”) that denied the Petition upon determining that
`the information presented did not support institution of trial. Petitioner filed
`a request for rehearing of that decision. Paper 9 (“Req. Reh’g”). This paper
`resolves the request for rehearing.
`In response to a request for rehearing, we review a decision whether
`to institute trial for an abuse of discretion. 37 C.F.R. § 42.71(c). “The
`burden of showing a decision should be modified lies with the party
`challenging the decision.” 37 C.F.R. § 42.71(d). Further, “[t]he request
`must specifically identify all matters the party believes the Board
`misapprehended or overlooked, and the place where each matter was
`previously addressed in a motion, an opposition, or a reply.” Id. We deny
`the request because Petitioner does not establish an abuse of discretion.
`
`II. DISCUSSION
`The word “adjacent” appears twice in claim 1 (the only independent
`claim challenged in the Petition). Ex. 1001, 7:42–8:8. The institution
`decision turned on the proper construction of the word “adjacent” in claim 1.
`Dec. 8.
`Taking account of the “persuasive information” presented by Patent
`Owner in the Preliminary Response (Dec. 13 (citing Prelim. Resp. 25–31)),
`we determined that the Petition was based on an incorrect construction of the
`claim term “adjacent” and, as a result, advanced patentability challenges that
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`IPR2017-01513
`Patent 5,973,372
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`rested on information (including opinion testimony) not “tethered adequately
`to the correct claim construction.” Dec. 16; see Pet. 16–21 (Petitioner’s
`proposed claim construction); see also Dec. 8–18 (discussing correct claim
`construction and insufficiency of the information presented to support trial
`institution). Accordingly, we denied the Petition because the information
`presented did not show a reasonable likelihood that Petitioner would prevail
`at trial with respect to at least one patent claim. Dec. 8–18; 35 U.S.C.
`§ 314(a) (authorizing trial only when that threshold showing is made).
`Petitioner’s request for rehearing asserts arguments pertaining to
`(1) the provisions of 37 C.F.R. § 42.108(c) (“Rule 42.108(c)”) (Req.
`Reh’g 3); (2) the Administrative Procedure Act (“APA”) (id. at 5); (3) the
`claim construction adopted in the institution decision (id. at 6–8); and
`(4) factual findings made on the preliminary record (id. at 8–14). We
`organize our discussion into four parts, addressing each argument in turn.
`
`A. Rule 42.108(c)
`We first turn to the argument that the Board abused its discretion by
`“ignoring” Rule 42.108(c). Req. Reh’g 3. Under that rule, when a patent
`owner submits testimonial evidence with a preliminary response, the Board
`views any “genuine issue of material fact created by such testimonial
`evidence” “in the light most favorable to the petitioner solely for purposes of
`deciding whether to institute an inter partes review.” 37 C.F.R. § 42.108(c).
`Petitioner asserts that the preliminary record included conflicting opinion
`testimonies and, therefore, the Board was obligated to institute trial to
`resolve the conflict. Req. Reh’g 3–5 (advancing that argument, but
`identifying no particular factual dispute overlooked by the Board).
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`IPR2017-01513
`Patent 5,973,372
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`
`In Petitioner’s view, Rule 42.108(c) sets up a “process” by which
`“factual disputes between experts” must be subjected to “further
`examination of the veracity of the respective opinions.” Id. at 4. By way of
`support, however, Petitioner directs us to non-binding Board decisions, none
`of which suggests that trial institution is warranted whenever the Board
`discerns a difference of opinion between two opposing declarants. Id. at 3–4
`(citations omitted). In that regard, Petitioner’s analysis does not account for
`the words “genuine” and “material” in the terms of Rule 42.108(c). Id.
`In addition, Rule 42.108(c) does not undercut the statutory mandate
`that precludes trial institution where, as here, the information presented in a
`petition and preliminary response fails to make out the threshold showing for
`review. See 35 U.S.C. § 314 (a) (authorizing review only upon a showing of
`“a reasonable likelihood that the petitioner would prevail with respect to at
`least 1” challenged claim). Taken to its natural end, Petitioner’s view of the
`rule would compel the Board to institute trial whenever a preliminary record
`includes declarations that reflect differing opinions—which is, of course, an
`untenable result. Petitioner’s argument is inconsistent with Section 314(a),
`which specifies a condition under which review may be instituted, but does
`not specify conditions under which review must be instituted. Id.; see
`Dec. 8–18 (articulating reasons why Petitioner, in this case, is not reasonably
`likely to prevail at trial with respect to at least one patent claim).
`Petitioner’s further observation—that “the relative strength of”
`opposing witness “opinions are appropriate for the routine discovery
`conducted during” a trial—is of no avail. Req. Reh’g 3 (citing 37 C.F.R.
`§ 42.51(b)(1)). The Board is under no obligation to subject a patent owner
`to the burden and expense of discovery and trial where a petition asserts
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`patentability challenges that are keyed to an incorrect claim construction.
`On that point, our rules provide that a petition must identify “[h]ow the
`challenged claim is to be construed.” 37 C.F.R. § 42.104(b)(3).
`Accordingly, we are unpersuaded that the Board abused its discretion
`by “ignoring” Rule 42.108(c). Req. Reh’g 3.
`
`B. Administrative Procedure Act
`Petitioner asserts that, by denying review “without providing the
`
`Petitioner an opportunity to examine” Patent Owner’s declarant, the Board
`violated due process protections codified in the APA. Req. Reh’g 5. As an
`initial matter, we determine that Petitioner does not establish that a rehearing
`request in our forum is an appropriate vehicle for asserting an APA
`violation. See generally Req. Reh’g (nowhere addressing that point); see
`also 37 C.F.R. § 42.71(d) (“Rule 42.71(d)”) (circumscribing permissible
`bases for a request for rehearing); Taiwan Semiconductor Mfg. Co., Ltd. v.
`Godo Kaisha IP Bridge I, Case IPR2017-01862 (PTAB Mar. 12, 2017)
`(Paper 14, 3) (questioning whether “allegations of an APA violation are
`properly raised in” a request for rehearing under Rule 42.71(d)).
`Setting aside for a moment the question of whether an APA violation
`properly may be raised under Rule 42.71(d), we are not persuaded by
`Petitioner’s contention. Petitioner argues that the Board must “provide the
`parties with an opportunity to address a claim construction presented for the
`first time in [a] final written opinion.” Req. Reh’g 5–6. But we did not
`issue a “final written opinion.” Id. Instead, we determined that Petitioner
`did not meet the threshold showing required for trial institution. 35 U.S.C.
`
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`§ 314(a). Petitioner identifies no authority that compels the Board to
`institute trial where the challenge is keyed to an incorrect claim construction.
`Before trial is instituted, during the preliminary stage of a proceeding,
`the Board’s function is to assess whether the information presented in a
`petition and any preliminary response filed “shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the”
`challenged patent claims. 35 U.S.C. § 314(a). As a culmination of that
`assessment, the Board may, and routinely does, decline to institute trial
`where the patentability challenge asserted in a petition is keyed to an
`incorrect claim construction. See, e.g., Schlumberger Tech. Corp. v.
`EnerPol, LLC, Case IPR2018-00077 (PTAB Apr. 25, 2018) (Paper 16, 6–
`17); United Patents, Inc. v. Uniloc Luxembourg S.A., Case IPR2018-00057
`(PTAB May 11, 2018) (Paper 9, 3–8); Duo Security Inc. v. Strikeforce Tech.,
`Inc., Case IPR2017-01064 (PTAB Oct. 16, 2017) (Paper 7, 6–11); Google
`Inc. v. InfoGation Corp., Case IPR2017-00819 (PTAB Sept. 11, 2017)
`(Paper 16, 7–14, 17–19, 21–22); Eiko Global, LLC v. Blackbird Tech LLC,
`Case IPR2017-00980 (PTAB Sept. 1, 2017) (Paper 16, 5–36).
`Petitioner had a full and fair opportunity to address the claim
`construction issue in the Petition and took full advantage of that opportunity.
`Pet. 14–22. Further, as Petitioner concedes (Req. Reh’g 5 n.1), Petitioner
`could have sought leave to submit a reply to the Preliminary Response,
`which identified the claim construction ultimately adopted by the Board. In
`addition, Petitioner, in the request for rehearing, had a full and fair
`opportunity to raise any of its own claim construction arguments that were
`allegedly misapprehended or overlooked by the Board, but Petitioner did not
`do so (as discussed in the next section). Our substantive disagreement with
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`IPR2017-01513
`Patent 5,973,372
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`the claim construction in the Petition does not amount to a due process
`violation under the APA.
`
`C. Claim Construction
`Petitioner does not assert that the Board adopted an incorrect claim
`construction in the institution decision. Req. Reh’g 6–8; see id. at 6
`(assuming, for purposes of rehearing, that Patent Owner’s “construction is
`found to be correct”). Instead, Petitioner asserts that, even if Patent Owner’s
`claim construction is correct, the Board should have viewed the information
`presented in the Petition as sufficient to make out the threshold showing for
`review, because Petitioner’s proposed construction was “narrower and a
`subset of” Patent Owner’s construction. Id. at 7; see id. at 6–8 (for full
`argument on that point). That argument is unpersuasive for two reasons.
`First, Petitioner does not show that its proposed claim construction
`was “narrower” or “a subset” of the construction advanced by Patent Owner.
`Id. at 7. The Petition stated “that the only[1] reasonable construction of the
`‘disposed adjacent’ terms of claim 1 is ‘formed adjacent’ such that
`
`
`1 The Petition also contemplated that Patent Owner might advance a
`“different construction” under which “the metal silicide layer can be
`adjacent to a layer of epitaxial silicon previously formed on the upper
`surface of the shallow junction.” Pet. 21–22. Petitioner argues that the
`Board “did not acknowledge” that “alternative construction.” Req. Reh’g 8.
`In fact, we expressly acknowledged it. Dec. 17 n.3. Given that Petitioner
`averred that “this construction is not supported by the” specification of the
`patent at issue (Pet. 21–22) and Patent Owner, ultimately, did not advance it,
`we discern no error in our decision declining to further address that
`alternative construction. See Dec. 9–16 (discussing claim construction);
`Req. Reh’g 8 (the Board “abused its discretion” by failing to “acknowledge
`the alternative construction”).
`
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`something is formed at one point in the process that does not need to
`remain in the same relative position throughout the fabrication process.”
`Pet. 20–21 (citing Ex. 1002 ¶¶ 42–45) (emphasis added). On that basis,
`Petitioner advanced challenges that depended on a construction of claim 1
`that is broad enough to embrace an integrated circuit “in which a claimed
`feature is present during an intermediate step of the fabrication process but
`not necessarily in subsequent process steps or the final product.” Dec. 11;
`see Pet. 20, 23–39 (advancing that proposed construction). The Board
`rejected that view, observing that, as properly construed, claim 1 is not broad
`enough to encompass a device, such as the integrated circuit disclosed in
`Saito,2 in which “a claimed feature is present during an intermediate step of
`the fabrication process” but “is removed by selective etching in a subsequent
`process step and, thus, is absent in the integrated circuit ultimately produced
`by the process.” Dec. 11–12; cf. Pet. 3, 17, 20–21.
`We declined to adopt Petitioner’s expansive view of claim 1, which
`would enlarge the scope of the apparatus claim to capture structure present
`only during an intermediate step of fabrication. Instead, we determined that
`“the plain terms of claim 1 require that the metal silicide layer and the
`epitaxial silicon layer simultaneously are located ‘adjacent the shallow
`junction’ in the specified integrated circuit.” Dec. 12 (emphasis added).
`On this record, we are not persuaded that Petitioner proposed a claim
`construction that is “narrower” or “a subset” of the construction advanced by
`Patent Owner in the Preliminary Response. Req. Reh’g 7.
`
`
`2 Saito et al., Japanese Patent Publication No. JPH08-204187, published
`August 9, 1996, with certified English translation, Ex. 1005.
`
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`
`Second, although the request for rehearing argues that “Petitioner’s
`obviousness arguments are equally applicable to the broader construction”
`(Req. Reh’g 8), Petitioner does not identify any argument or evidence in the
`Petition that we misapprehended or overlooked. The Board is not required
`to “play archeologist with the record” or endeavor to discover a challenge
`that might have been asserted had a petitioner identified the correct claim
`construction. DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (Fed. Cir.
`1999). A petitioner should not expect the Board to search the record in an
`attempt to piece together a successful argument where, as here, the challenge
`actually stated in the Petition is not “tethered adequately to the correct claim
`construction.” Dec. 16; see 37 C.F.R. § 42.22(a)(2) (a petition must include
`“[a] full statement of the reasons for the relief requested”). Our analysis
`properly focused on the arguments set forth in the Petition. Dec. 8–18.
`
`D. Factual Findings
`Petitioner submits that the Board violated a mandate to “articulate its
`reasoning” in a “Final Written Decision.” Req. Reh’g 9 (quotation omitted).
`The Board, however, did not issue a final written decision in this proceeding.
`Dec. 1. We denied review based on the information presented in a petition
`and preliminary response. Id. at 8–18; see 35 C.F.R. § 314(a) (authorizing
`the Director, and by delegation the Board, to assess the information
`presented in a petition and any preliminary response filed to determine
`whether a petitioner is reasonably likely to prevail at trial with respect to at
`least one patent claim and elect to institute trial, or not, on that basis).
`Petitioner’s assertion that our factual findings are unsupported by
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`“substantial evidence”—a standard applicable to factual findings made on a
`full trial record—is misplaced. Req. Reh’g 9.
`Petitioner also submits that “[t]he entirety of the Board’s analysis as
`to why the claims are not obvious” “spans 8 lines of the” institution decision
`and includes “a string cite to the Preliminary Response.” Req. Reh’g 8. The
`Board pointed out with sufficient clarity why the information presented
`failed to meet the threshold for institution. For example, we indicated where
`Patent Owner, in the first instance, identified the correct claim construction
`and, also, persuasively argued that the information presented failed to
`establish a reasonable likelihood that Petitioner would prevail at trial with
`respect to at least one challenged patent claim under the correct claim
`construction. Dec. 13, 17. We also explained why Patent Owner’s proposed
`construction was correct (id. at 9–16) and, further, considered the claim
`charts advanced by Petitioner’s declarant, which did not “articulate clearly
`how the prior art discloses or suggests the” properly construed “adjacency
`limitations of claim 1 in a completed integrated circuit.” Id. at 17.
`
`We are mindful that the rehearing request raises new arguments, not
`articulated clearly in the Petition. For example, the request for rehearing
`argues that “the titanium silicide film” in Saito’s process3 “is not completely
`
`
`3 Petitioner’s rehearing arguments, pertaining to certain other grounds of
`unpatentability addressed in the institution decision, rise and fall with the
`arguments presented in connection with the ground based on Saito. Req.
`Reh’g 13 (regarding “Ground 3,” the Board abused its discretion “[f]or the
`same reasons as for Ground 1”); id. at 13–14 (asserting that the Board erred
`in connection with “Ground 4” “for the same reasons as articulated above”
`in connection with “FIG. 6 of Saito”); id. at 14 (arguing that Board erred in
`connection with “Ground 5” “[f]or the reasons given above” in the context
`of “the Saito FIG. 6 embodiment”).
`
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`removed” (Req. Reh’g 10) and that a genuine dispute arises regarding
`“whether the 100-200nm disclosure in Saito renders obvious” the challenged
`claims when evaluated under the correct construction of “adjacent”; that is,
`“close to; laying near” (id. at 11–12) (bridging sentence); but see Dec. 16
`(correct construction is “close to; lying near”). Petitioner does not identify
`where, if at all, those arguments were presented in the Petition. Req.
`Reh’g 10, 11–12. Petitioner also attempts to recast other arguments in view
`of the correct claim construction. For example, Petitioner argues that a
`metal “silicide film remains throughout the process illustrated in” Saito’s
`Figure 1 and that “a functioning transistor was created as of FIG. 1(c) and
`processing could stop after this step.” Id. at 10. Those arguments were not
`presented in the Petition in the context of the correct claim construction.
`Petitioner identifies no abuse of discretion in the Board’s
`determination that the Petition did not explain adequately how or why the
`asserted prior art references disclose or suggest the properly-construed
`adjacency requirement of claim 1. See Dec. 16–17 (bridging paragraph,
`articulating reasons for that determination). In that regard, the Petition
`argued “that the term ‘adjacent’ in claim 1 must be read to ‘mean “directly
`adjacent” or “in physical contact with” during the formation of each layer,’
`and not necessarily in the final structure.” Id. at 11 (quoting Pet. 17, 20–
`21) (emphasis added). The request for rehearing represents a post hoc
`attempt to back away from that construction, recast the arguments and prior
`art asserted in the Petition, and present a new version of the patentability
`challenges under the correct claim construction. Compare Req. Reh’g 8–14,
`with Pet. 23–68. A request for rehearing is not an opportunity to present
`new arguments, therefore, we reject that endeavor. It would be manifestly
`
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`unfair to Patent Owner for us to entertain those new arguments at this late
`juncture. See Req. Reh’g 8–14 (asserting new arguments keyed to the
`correct claim construction as identified in the institution decision).
`
`With respect to the challenge based on Yu,4 Petitioner submits that
`Patent Owner presented arguments in the Preliminary Response, directed to
`Petitioner’s incorrect claim construction, without explaining adequately why
`the challenged claims “are not met under its own, [allegedly] broader
`construction.” Req. Reh’g 12. Petitioner contends that Patent Owner
`“identifies only” reasons why “Petitioner has not met its burden.” Id.
`Pointing out why a petitioner has not met its burden, however, is precisely
`the function of a preliminary response. See 37 C.F.R. § 42.107(a) (a patent
`owner may file a preliminary response to set forth “reasons why no inter
`partes review should be instituted”).
`Patent Owner was under no obligation to file a preliminary response,
`much less “explain why” the challenged patent claims “are not met under its
`own” proposed construction. Req. Reh’g 12. Petitioner bears “the burden
`from the onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity” by reference to the record “the
`evidence that supports the grounds for the challenge to each claim”)). That
`burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware,
`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)
`(discussing the burden of proof in our administrative review process).
`
`
`4 Yu, US 5,409,853, issued April 25, 1995, Ex. 1007 (“Yu”).
`
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`
`Under these circumstances, Petitioner shows no abuse of discretion in
`the factual findings set forth in our institution decision.
`
`III. CONCLUSION
`For the above reasons, we deny Petitioner’s request for rehearing of
`
`our decision declining to institute inter partes review.
`
`IV. ORDER
`
`
`
`It is
`ORDERED that Petitioner’s request for rehearing is denied.
`
`
`
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`IPR2017-01513
`Patent 5,973,372
`
`PETITIONER:
`
`Benjamin E. Weed
`Jay C. Chiu
`Tina Thomas
`K&L GATES LLP
`benjamin.weed.PTAB@klgates.com
`jay.chiu@klgates.com
`tina.thomas@klgates.com
`
`Jeffrey L. Johnson
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`3j6ptabdocket@orrick.com
`
`PATENT OWNER:
`
`Timothy P. Maloney
`David A. Gosse
`Nicholas T. Peters
`FITCH, EVEN, TABIN & FLANNERY LLP
`tim@fitcheven.com
`dgosse@fitcheven.com
`ntpete@fitcheven.com
`
`
`14
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`