Paper: 35
`Trials@uspto.gov
`571-272-7822 Entered: March 18, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HAMAMATSU PHOTONICS K.K.,
`Petitioner,
`
`v.
`
`SEMICAPS PTE LTD.,
`Patent Owner.
`____________
`
`Case IPR2017-02110
`Patent 7,623,982 B2
`____________
`
`
`
`Before KEN B. BARRETT, CHARLES J. BOUDREAU, and
`MONICA S. ULLAGADDI, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`
`Finding All Challenged Claims Not Shown to Be Unpatentable
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`and
`Dismissing Patent Owner’s Contingent Motion to Amend
`35 U.S.C. § 316(d) and 37 C.F.R. § 42.121
`
`

`

`IPR2017-02110
`Patent 7,623,982 B2
`
`
`INTRODUCTION
`I.
`A. Background and Summary
`Hamamatsu Photonics K.K. (“Petitioner”)1 filed a Petition requesting
`
`inter partes review of U.S. Patent No. 7,623,982 B2 (“the ’982 patent,”
`Ex. 1001). Paper 1 (“Pet.”). The Petition challenges the patentability of
`claims 1, 4–7, and 21–25 of the ’982 patent (“the challenged claims”) on the
`grounds of anticipation under 35 U.S.C. § 102 and obviousness under
`35 U.S.C. § 103. Petitioner asserted a total of seven grounds. Id. at 3–4.
`SEMICAPS Pte Ltd. (“Patent Owner”)2 filed a Preliminary Response to the
`Petition. Paper 7 (“Prelim. Resp.”).
`
`On March 19, 2018, an inter partes review was instituted on
`Petitioner’s challenge of all the challenged claims 1, 4–7, and 21–25, but not
`as to all of the asserted grounds. Paper 8 (“Inst. Dec.”), 34–35.
`
`On April 24, 2018, the Supreme Court issued its decision in SAS
`Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018). On May 3, 2018, we issued
`an order modifying our institution decision to institute on all of the
`challenged claims and all of the grounds presented in the Petition. Paper 12.
`
`Subsequently, Patent Owner filed a Response (Paper 21, “PO Resp.”)
`to the Petition, Petitioner filed a Corrected Reply to Patent Owner Response
`(Paper 25, “Pet. Reply”), and Patent Owner filed a Sur-Reply (Paper 30,
`“PO Sur-Reply”), with our authorization (Paper 27).
`
`
`1 Petitioner identifies Hamamatsu Photonics K.K. as the real-party-in-
`interest. Pet. 1; Paper 14.
`2 Patent Owner identifies SEMICAPS Pte Ltd. as the real-party-in-interest.
`Paper 5, 1.
`
`2
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`

`IPR2017-02110
`Patent 7,623,982 B2
`
`Patent Owner filed, concurrently with its Response to the Petition, a
`
`Motion to Amend. Paper 22 (“MTA”). The Motion to Amend is contingent
`upon the patentability determination of challenged claims 1, 4–7, and 21–25,
`and requests the issuance of the corresponding one of proposed substitute
`claims 26–35 for each claim determined to be unpatentable. Id. at 1.
`Petitioner filed a Corrected Opposition to Patent Owner’s Motion to Amend
`(Paper 26, “MTA Opp.”), and Patent Owner filed a Reply in Support of Its
`Motion to Amend (Paper 28, “MTA Reply”).
`
`An oral hearing was held on December 3, 2018, and a transcript of the
`hearing is included in the record. Paper 34 (“Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is entered pursuant to 35 U.S.C. § 318(a). After consideration of
`the parties’ arguments and evidence, and for the reasons discussed below,
`we determine that Petitioner has not shown by a preponderance of the
`evidence that claims 1, 4–7, and 21–25 of the ’982 patent are unpatentable.
`Accordingly, we dismiss as moot Patent Owner’s contingent Motion to
`Amend.
`
`B. Related Proceedings
`One or both parties identify, as matters involving or related to the
`
`’982 patent, SEMICAPS Pte Ltd. v. Hamamatsu Photonics K.K., Hamamatsu
`Corp., and Photonics Management Corp., Case No. 3:17-cv-03340 (N.D.
`Cal. 2017), and Patent Trial and Appeal Board case IPR2017-02112, which
`was filed by Petitioner and involves a challenge to claims 2, 3, and 8–20 of
`the ’982 patent. Pet. 2; Paper 5.
`
`3
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`IPR2017-02110
`Patent 7,623,982 B2
`
`
`C. The ’982 Patent
`The ’982 patent is titled “Method of Testing an Electronic Circuit and
`
`Apparatus Thereof.” The testing of the circuit is performed by radiating a
`laser beam onto the circuit, determining a plurality of samples of a response
`signal output by the circuit, accumulating those samples to generate a value,
`and generating a test result based on the value. Ex. 1001, Abstract. Based
`on the generated value, a fault in the circuit may be represented on a display
`as a bright spot at a pixel location corresponding to the location of the fault
`in the circuit. Id. at 4:16–24, 4:34–38. According to the ’982 patent, the
`disclosed method and apparatus provide an improvement to conventional,
`laser-based fault detection systems by increasing the detection sensitivity,
`which has particular application with advanced integrated circuits (“IC”).
`See id. at 1:28–37.
`
`A redacted version of Figure 1 of the ’982 patent shown below.
`
`4
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`IPR2017-02110
`Patent 7,623,982 B2
`
`The redacted version of Figure 1 depicts an exemplary embodiment of the
`apparatus of the ’982 patent with the omission of the digital image of the
`electronic circuit under test and the digital image generated as the result of
`the processing. See id. at 2:29–30, 4:8–9, 4:16–18. As indicated by
`Figure 1, the depicted system includes laser beam source 103, control
`system 105, measuring circuit 107, signal processor 109, and display
`unit 117. Id. at 2:65–3:3, 4:16–19. “Any suitable laser beam source 103
`may be used,” and the specification identifies, as an exemplary laser beam
`source, that which is described in U.S. Patent No. 6,897,664 B1 to Bruce
`(Ex. 1010). Id. at 3:4–13. “The laser beam can be a continuous laser beam
`or a pulsed laser beam.” Id. at 3:29–30. Signal processor 109 accumulates
`the plurality of samples to generate a value and generates a test result based
`on that value. Id. at 3:65–67.
`
`D. Illustrative Claims
`Of the challenged claims of the ’982 patent, claims 1 and 21 are
`
`independent claims. The remaining challenged claims depend directly or
`indirectly from claim 1 or claim 21. Claims 1 and 21, reproduced below, are
`illustrative:
`1. A method of testing an electronic circuit, comprising:
`
`radiating a laser beam onto the electronic circuit,
`
`determining a plurality of samples of a response signal
`output by the electronic circuit during the period when the laser
`beam is radiated,
`
`accumulating the plurality of samples to generate a value,
`and
`
`
`generating a test result based on the value.
`
`5
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`IPR2017-02110
`Patent 7,623,982 B2
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`
`21. An apparatus, comprising:
`
`a laser beam source, wherein the laser beam source
`radiates a laser beam onto the electronic circuit,
`
`a control system operable to direct the laser beam source
`to dwell on a location on the electronic circuit,
`
`a measuring circuit, wherein the measuring circuit
`determines a plurality of samples of a response signal output by
`the electronic circuit during the period when the laser beam is
`radiated, and
`the signal processor
`
`a signal processor, wherein
`accumulates the plurality of samples to generate a value, and
`
`generates a test result based on the value.
`Ex. 1001, 10:60–67, 12:19–31.
`
`E. Applied References and Evidence
`
`Reference
`JP2003-179108A, published June 27, 2003 (“Hamada”3)
`ACT Quah et al., DC-Coupled Laser Induced Detection
`System for Fault Localization in Microelectronic Failure
`Analysis4 (“Quah”)
`F. Beaudoin et al., From Static Thermal and Photoelectric
`Laser Stimulation (TLS/PLS) to Dynamic Laser Testing,
`43 MICROELECTRONICS RELIABILITY 1681–86 (2003)
`(“Beaudoin”)
`U.S. Patent No. 6,897,664 B1, issued May 24, 2005
`(“Bruce”)
`
`Exhibit No.
`Ex. 1003/1004
`Ex. 1005
`
`Ex. 1009
`
`Ex. 1010
`
`
`3 Exhibit 1003 is a Japanese-language publication. All references to
`Hamada in this decision are to the English translation (Ex. 1004) of the
`publication.
`4 As discussed below, the parties disagree as to when Quah was published.
`6
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`IPR2017-02110
`Patent 7,623,982 B2
`
`Petitioner also relies on the Declaration of Melvin Ray Mercer, Ph.D.
`
`dated September 8, 2017 (Ex. 1014), the Declaration of Kiyoshi Nikawa,
`Ph.D. dated Sept. 11, 2018 (Ex. 1025), and the Second Declaration of
`Melvin Ray Mercer, Ph.D. dated Sept. 18, 2018 (Ex. 1026) in support of its
`arguments. Patent Owner relies on the Declaration of Michael Bruce, Ph.D.
`dated December 18, 2017 (Ex. 2004), the Declaration of Alfred Quah dated
`Oct. 24, 2017 (Ex. 2011), and the Declaration of Dr. Gary Woods dated
`June 15, 2018 (Ex. 2029) in support of its arguments. The parties rely on
`other exhibits as discussed below.
`
`
`
`F. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`Reference(s)
`Basis
`Claims
`Hamada
`§ 102(b)
`1, 21, and 22
`Quah
`§ 102(b)
`1, 4–7, 21, and 23–25
`Hamada
`§ 103(a)
`1, 21, and 22
`Hamada and Beaudoin
`§ 103(a)
`4, 5, 7, 23, and 24
`Hamada and Bruce
`§ 103(a)
`4–7 and 22–25
`Hamada and Quah
`§ 103(a)
`4–7 and 23–25
`Quah
`§ 103(a)
`1, 4–7, 21, and 23–25
`
`II. ANALYSIS
`A. Principles of Law
`Petitioner bears the burden of proving unpatentability of the claims
`
`challenged in the Petition, and that burden never shifts to Patent Owner.
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`(Fed. Cir. 2015). To prevail, Petitioner must establish by a preponderance of
`
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`IPR2017-02110
`Patent 7,623,982 B2
`
`the evidence that the challenged claims are unpatentable. 35 U.S.C.
`§ 316(e); 37 C.F.R. § 42.1(d).
`
`“A claim is anticipated only if each and every element as set forth in
`the claim is found, either expressly or inherently described, in a single prior
`art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
`631 (Fed. Cir. 1987).
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) any objective evidence of
`non-obviousness.5 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`B. The Level of Ordinary Skill in the Art
`Petitioner, relying on the testimony of its declarant, Dr. Mercer,
`
`asserts, in the Petition, that the person of ordinary skill in the art would be
`one who has experience with testing electronic circuits and who
`has a working knowledge of apparatus for testing integrated
`circuits, semiconductor devices, and other electronic circuits.
`[Ex.] 1014 ¶ 33. This person would have (1) at least an
`undergraduate degree in Electrical Engineering or Physics, or
`comparable training, and (2) at least two years of industrial or
`other professional experience
`in designing, developing,
`
`5 The parties have not directed our attention to any objective evidence of
`non-obviousness.
`
`8
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`IPR2017-02110
`Patent 7,623,982 B2
`
`
`analyzing, and/or utilizing electronic circuit testing equipment.
`Id. A higher level of training/experience in one area could
`compensate for a deficit in the other. Id.
`Pet. 11–12. Patent Owner initially agreed with Petitioner’s definition of the
`level of ordinary skill in the art. Prelim. Resp. 27. After Institution and after
`deposing Dr. Mercer, Patent Owner began advocating for an elevated and
`very specific level of experience. PO Resp. 17. According to Patent Owner:
`a POSITA would have at least two years of experience in this
`type of laser-based testing of semiconductor circuits [involved in
`the ‘982 patent] and would be familiar with the use of laser
`stimulation to localize defects in semiconductor devices,
`including static laser stimulation (e.g. TIVA, OBIRCH),
`dynamic laser stimulation (e.g. LADA, SDL) and their
`fundamental differences.
`Id. (citing Ex. 2029 ¶¶ 30–32). Patent Owner characterizes “[t]his type of
`laser-based testing [as] the area of focus of the ’982 patent, as well as that of
`the references relied upon in the petition.” Id. Notwithstanding the
`purported “area of focus,” Patent Owner’s new definition is much more
`specific than the subject matter of the independent claims of the ’982
`patent—which do not specify, for example, the type of laser stimulation or
`require a pulsed laser—and is directed to, at most, certain specific
`embodiments disclosed in the Specification. See, e.g., Ex. 1001, 10:60–67
`(independent claim 1), 11:8–9 (dependent claim 4: “The method of claim 1,
`wherein the laser beam is a pulsed laser beam.”); cf. PO Resp. 19 (Patent
`Owner characterizing “the use and operation of lock-in amplifiers [as] a
`common and critical component of pulsed laser-based systems”).
`
`Patent Owner attempts to use its elevated definition as a vehicle to
`make the argument that Petitioner’s expert, Dr. Mercer, is not a person of
`
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`IPR2017-02110
`Patent 7,623,982 B2
`
`ordinary skill and to attack his credibility.6 See PO Resp. 18–20 (segueing,
`still under the heading of “The Level of Ordinary Skill in the Art,” into an
`argument that Patent Owner’s two experts have more experience and
`expertise “in the relevant field” as compared to Petitioner’s expert); id. at 20
`(concluding this same section with the argument that Dr. Mercer’s opinions
`should be afforded little weight). However, in directing its arguments
`almost exclusively at attacking Dr. Mercer, Patent Owner fails to adequately
`address the pertinent issue—whether Petitioner’s proposed hypothetical
`person of ordinary skill in the art would lack the requisite experience and
`understanding of the art. Patent Owner does not identify adequately a
`substantive difference between Petitioner’s hypothetical person of ordinary
`skill in the art and Patent Owner’s. See PO Resp. 17–20. For example,
`Patent Owner does not argue that an electrical engineer or physicist with two
`years of experience utilizing electronic circuit testing equipment would lack
`adequate knowledge of the use of lasers in circuit testing. To the contrary,
`Patent Owner’s expert, Dr. Woods, “generally agree[s] with petitioner’s
`definition of a [person of ordinary skill in the art]”—including the type of
`education and level of experience—and testified that “[t]hese techniques [of
`OBIRCH and TIVA] were known and widely used around the time of the
`invention of the ’982 patent to determine the location of defects in a
`semiconductor device and would have been known to those of ordinary skill
`in the art.” Ex. 2029 ¶¶ 30–31.
`
`
`6 Patent Owner did not file a motion to exclude the testimony of Dr. Mercer
`on the basis that he is unqualified to offer opinion testimony regarding the
`knowledge of a person of ordinary skill in the art.
`10
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`

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`IPR2017-02110
`Patent 7,623,982 B2
`
`To the extent that Patent Owner’s proposed definition of the level of
`
`ordinary skill is more than merely an elaboration upon Petitioner’s, we find
`it to be directed to a super-expert in a very narrowly defined field and
`calculated to undermine Dr. Mercer’s credibility while simultaneously
`promoting the credentials of its own experts. We do not find this
`litigation-induced argument persuasive.
`
`We determine that the definition offered by Dr. Mercer comports with
`the qualifications a person would have needed to understand and implement
`the teachings of the ’982 patent and the prior art of record. Cf. Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may
`reflect an appropriate level of skill in the art). Accordingly, we apply
`Dr. Mercer’s definition of the level of ordinary skill in the art.
`
`C. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b) (2017)7; see also Cuozzo
`Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under the
`broadest reasonable construction standard, claim terms are given their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art in the context of the entire patent disclosure. In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`
`7 A recent amendment to this rule does not apply here because the Petition
`was filed before November 13, 2018. See Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,340 (Oct. 11,
`2018).
`
`11
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`IPR2017-02110
`Patent 7,623,982 B2
`
`
`“accumulating” and “accumulates”
`Independent claims 1 and 21 recite, respectively, “accumulating” and
`
`“accumulates.”
`
`Petitioner maintains that these terms “relate to the plurality of samples
`being accumulated to generate a value” and “[t]he accumulation process
`described in the ’982 patent involves adding together the plurality of
`samples.” Pet. 4–5 (citing Ex. 1001, 4:63–65, 8:20–9:19, Fig. 6).
`Petitioner’s proposed construction for “accumulating” is, in part, “adding or
`performing any act that includes adding as a step.” Id. at 5; see Pet.
`Reply 6–7 (“accumulating” would encompass “adding”).
`
`Patent Owner similarly contends that “accumulating” “refer[s] to
`collecting a number of individual samples to be mathematically processed,
`for example to generate a single value from the multiple samples.” PO
`Resp. 20–21. Patent Owner asserts that “[t]he specification illustrates the
`accumulation of these values using an equation showing summation, or
`adding, of the values” and that “the ordinary meaning of ‘accumulate’ is to
`gather together, increase, or add.” Id. at 20 (citing Ex. 1001, 8:55–62;
`Ex. 2007, 12 (American Heritage Dictionary)).
`
`Thus, the parties agree that accumulating encompasses, at least,
`adding values together. This understanding is consistent with the
`specification’s discussion of accumulated samples. See, e.g., Ex. 1001,
`8:20–29.
`
`Petitioner initially asserted in the Petition that “accumulating” should
`be construed to include the act of averaging. Pet. 5. In the Institution
`Decision, we declined to construe “accumulating” as necessarily including
`the act of averaging. Inst. Dec. 7–8. In its Reply, Petitioner no longer
`
`12
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`IPR2017-02110
`Patent 7,623,982 B2
`
`advocates this as a matter of claim construction. See Pet. Reply 6–7. As
`discussed below, the parties address the issue as a factual matter, and
`specifically as to whether a prior art reference’s use of the term “average”
`discloses “accumulating” within the meaning of the claims of the ’982
`patent.
`
`We again, as we did in the Institution Decision, Inst. Dec. 9, construe
`the term “accumulating” merely as encompassing the process of addition.
`
`We determine that, for purposes of resolving the dispositive issues in
`this decision, no other claim terms require express construction.
`
`D. The Alleged Anticipation of Claims 1, 21, and 22 by Hamada
`Petitioner, relying on the testimony of Dr. Mercer (Ex. 1014), alleges
`
`that independent method claim 1, independent apparatus claim 21, and
`dependent apparatus claim 22 (which depends directly from claim 21) are
`anticipated by Hamada. See Pet. 12–21 (addressing together claims 1
`and 21). Patent Owner argues that Hamada does not disclose “determining a
`plurality of samples of a response signal . . . during the period when the laser
`beam is radiated” or “accumulating the plurality of samples to generate a
`value.” PO Resp. 2.
`1. Hamada (Ex. 1004)
`Hamada discloses a method and device for inspection of a
`
`semiconductor device by irradiating it with an optical beam and measuring
`the resistance change in the circuit to determine a defective portion of the
`circuit. Ex. 1004 ¶ 9. Figure 1 of Hamada is reproduced below.
`
`13
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`
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`Figure 1 “is a block diagram showing a configuration of an inspection
`device for inspecting a semiconductor device.” Id. ¶ 21. Figure 1 depicts, as
`the “device under test” (“DUT”), an integrated circuit (a semiconductor
`device). Also depicted are: “test signal generator 3 for generating a test
`signal of the same pattern repeating multiple times periodically and applying
`the same to the device under test 1 [the integrated circuit]”; optical beam
`generator 5 for scanning a desired location on the integrated circuit with an
`optical beam and irradiating the desired location for a fixed time; electrical
`current meter 6 for measuring an operation current at various locations on
`the integrated circuit for a fixed time; timing processor 8 for controlling the
`operation timing for the test signal generator 3, the operation timing for the
`optical beam generator 5, and the electrical current meter 6 through a
`controller 7; and signal processing and display device 9 for calculating an
`average current at a respective scanning site based on an operational current
`measured when the respective site of the integrated circuit is measured,
`converting the same to a contrast image, and displaying the same. Id.
`
`14
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`Patent 7,623,982 B2
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`Figure 2, including Figures 2(a), 2(b), and 2(c), of Hamada is
`
`reproduced below:
`
`
`Figure 2(a) is a timing chart showing an LSI (large scale integrated circuit)
`test signal applied to the integrated circuit. Id. ¶ 23. As shown in
`Figure 2(b), “the optical beam generator 5 scans each of the sites 1, 2, 3 on
`the device under test 1 stepwise with the optical beam, irradiating the sites 1,
`2, and 3 for a fixed time T1.” Id. “[A]s shown in FIG. 2(c), the electrical
`current meter 6 measures the operation current at the site 1, site 2, and site 3
`on the device under test 1 for a fixed time T10.” Id. ¶ 24. “In this
`embodiment, the operation current is measured only for the fixed time T10
`in synchronization with the H-level interval; the operation current is not
`measured during the L-level interval.” Id.
`
`Hamada explains:
`[B]ased on the operation current measured at the sites 1, 2, and 3
`of the device under test 1 at the measurement time T10 by the
`electrical current meter 6, the signal processing and display
`device 9 calculates the average current at each of the sites
`scanned by the optical beam generator 5, converts the calculation
`into a contrast image and displays the same.
`
`Id.
`
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`
`2. “determining a plurality of samples” and “accumulating the
`plurality of samples”
`The dispositive issue regarding Hamada is whether it discloses
`
`determining and accumulating a plurality of samples.
`
`Independent method claim 1 recites:
`
`determining a plurality of samples of a response signal
`output by the electronic circuit during the period when the laser
`beam is radiated, [and]
`
`accumulating the plurality of samples to generate a value.
`
`
`
`Ex. 1001, 10:62–66. Independent apparatus claim 21 recites a measuring
`circuit and a signal processor that, respectively, determines and accumulates
`the plurality of samples. Id. at 12:24–30. The parties do not draw any
`substantive distinction between the claims for purposes of resolving the
`dispositive issues. See Pet. 15–19 (addressing the determining/determines
`limitation with a single discussion); PO Resp. 31 (arguing that the purported
`“novel approach” “is captured in the [determining and accumulating]
`limitations substantively required by every claim of the ’982 patent”). We
`focus our discussion on claim 1, and our analysis applies equally to
`independent claim 21.
`
`As an initial matter, we note that Petitioner does not point to any
`explicit disclosure in Hamada of determining a plurality of samples when the
`laser beam is radiated or of accumulating, or even adding, the plurality of
`samples. Petitioner’s theory, at least in part, is rooted in inherency8,
`
`
`8 “Inherency . . . may not be established by probabilities or possibilities.
`The mere fact that a certain thing may result from a given set of
`circumstances is not sufficient. . . . If, however, the disclosure is sufficient
`to show that the natural result flowing from the operation as taught would
`16
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`Patent 7,623,982 B2
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`notwithstanding Petitioner’s denial of that assertion. See PO Resp. 37
`(Patent Owner asserting that “[Petitioner’s] argument constitutes an
`anticipation by inherent disclosure argument, i.e., ‘average’ inherently
`discloses multiple samples”); Pet. Reply 14 (“Petitioner has never made an
`inherency argument. . . . Petitioner’s argument is and has always been that
`Hamada discloses the accumulating and determining steps because ‘[b]y
`definition, ‘averaging’ requires the addition of the values of a number of
`samples.’”); see also Ex. 1014 ¶¶ 87, 90–93 (Petitioner’s expert repeatedly
`using the term “necessarily” in the opinions related to Hamada’s purported
`disclosure of a plurality of samples). Additionally, much of Petitioner’s
`argument hinges on the proper meaning of Hamada’s Japanese terms
`translated here as “average” and “calculate.” See, e.g., Pet. 16 (arguments
`referring to the “calculation of an average current”), Pet. Reply 10 (arguing
`that the Japanese-language term translated as “calculate” should be
`understood to refer to digital, rather than analog, processing).
`
`Regardless as to the proper characterization of Petitioner’s theory, we,
`for the reasons discussed below, determine that Petition has failed to
`establish by a preponderance of the evidence that Hamada discloses the
`“determining a plurality of samples” and “accumulating the plurality of
`samples,” as required by independent claim 1 and the corresponding
`limitations of independent claim 21.
`
`
`result in the performance of the questioned function, it seems to be well
`settled that the disclosure should be regarded as sufficient.” In re Oelrich,
`666 F.2d 578, 581 (CCPA 1981) (quoting Hansgirg v. Kemmer, 102
`F.2d 212, 214 (CCPA 1939)).
`
`17
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`

`IPR2017-02110
`Patent 7,623,982 B2
`
`
`Determining a Plurality of Samples
`For the recited step of “determining a plurality of samples of a
`
`response signal output by the electronic circuit during the period when the
`laser beam is radiated,” Petitioner points to Hamada’s paragraphs 21–25 as
`disclosing the electrical current meter determining a plurality of samples of
`the response signal output of the DUT (the integrated circuit). Pet. 16.
`Specifically, Petitioner contends:
`
`Hamada’s indication that the calculation of an average
`current at each of sites 1, 2, and 3 is performed based on the
`operation current measured by electrical current meter 6 at each
`respective site, 1003/1004 ¶¶ [0021], [0022], [0024], means that
`Hamada determines or measures a plurality of samples of the
`response signal at each of the sites. 1014 ¶ 93. By definition,
`“averaging” requires the addition of the values of a number of
`samples resulting in a sum, and a division of that sum by the
`number of samples that were added. 1015; 1014 ¶ 93. Thus,
`Hamada’s disclosure that the average current is determined at
`each of sites 1, 2, and 3 teaches that electrical current meter 6
`determines multiple samples of the response signal output by
`DUT 1 for each of the sites. 1003/1004 ¶¶ [0021], [0022],
`[0024], 1014 ¶ 94.
`Id. at 16–17 (emphasis added).9 Petitioner further contends that Hamada
`additionally discloses the “determining a plurality of samples” step in
`describing the measurements relative to the repeating LSI test signal. Id.
`at 17–19 (citing, inter alia, Ex. 1004, Fig. 2; Ex. 1014 ¶¶ 89–97).
`
`
`9 Petitioner places great weight on the purported applicable definition of the
`English word “average.” We note that Petitioner’s “[b]y definition”
`argument technically is not applied to the term utilized by the author of the
`article—which would have been a Japanese term—but rather involves a
`proposed definition for the English word selected by Petitioner’s translator
`when translating the article from Japanese.
`18
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`IPR2017-02110
`Patent 7,623,982 B2
`
`Petitioner, in support of its “[b]y definition” argument, relies on a
`
`definition of “average” from a general dictionary,10 and specifically one
`identified by Petitioner as “Oxford Living Dictionaries,
`https://en.oxforddictionaries.com/definition/average, Oxford University
`Press, 2017.” Pet. vi (Exhibit List), 16 (citing Ex. 1015); see Ex. 1015 (an
`online dictionary lacking facial identification via, e.g., a footer). Petitioner
`also relies on the testimony of Dr. Mercer, which offers little more than
`Petitioner’s argument phrased as an opinion and also is based on the general
`dictionary. See Ex. 1014 ¶¶ 93, 94. Dr. Mercer opines that “the reference to
`calculating an average current at each of the sites in Hamada necessarily
`means that Hamada determines or measures a plurality of samples.” Id. ¶ 93
`(citing Ex. 1015).
`
`Patent Owner argues that “[a person of ordinary skill in the art] would
`not interpret ‘average current’ in Hamada to mean that multiple samples of
`the response signal were obtained.” PO Resp. 34. Unlike Petitioner’s
`argument and Dr. Mercer’s opinion based on a general dictionary, Patent
`Owner’s argument, relying on the testimony of Dr. Woods, presents a
`technology-based case. Id. at 32–40 (citing, inter alia, Ex. 2029 ¶¶ 42–43,
`75). Patent Owner contends that Hamada’s system was like similar systems
`of the time, which utilized analog averaging by, for example, a low-pass
`filter, and thereafter used an analog-to-digital (A/D) converter to create a
`
`
`10 Assuming Petitioner is referring to the first definition set forth in the
`dictionary, it appears that Petitioner actually is relying on the definition of
`“mean,” which is identified as one of several forms of an “average.” See
`Ex. 1015, 1.
`
`19
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`IPR2017-02110
`Patent 7,623,982 B2
`
`digital signal for display purposes. Id. at 32–3411 (citing Ex. 2029 ¶¶ 42–43,
`75; Ex. 2025 (Kiyoshi); Ex. 1012 (Nishida)); see also id. at 38–39. Patent
`Owner asserts that such an analog averaging process produces a single
`analog measurement and does not, as Petitioner argues, involve determining
`a plurality of samples. Id. at 32. Dr. Woods testifies credibly that:
`In terms of determining an average current, a low-pass filter or
`an integrator circuit can be used to obtain an average current,
`which does not involve sampling. This was the primary
`technique used in the scanning microscopes used for laser-based
`testing of semiconductor circuits at the time of the Nikawa,
`Nishida, Kiyoshi, Cole, and Hamada references.
`Ex. 2029 ¶ 43. Dr. Woods notes that Hamada cites to the Kiyoshi reference
`and further testifies credibly that:
`[f]rom inspecting the figures and the translation of this [Kiyoshi]
`publication (Ex. 2025), it is clear that the Hamada system, based
`on NEC’s Kiyoshi application, also operates like the system
`described in NEC’s Nikawa patent; all these systems measure the
`output current variation caused by the laser irradiation using a
`single analog average current measurement per location.
`Ex. 2029 ¶ 42 (citing Ex. 2025 ¶ 35, Fig. 6).
`
`In Reply, Petitioner pivots from its original “[b]y definition” position
`and argues that Hamada must utilize digital processing utilizing multiple
`samples because “Hamada does not disclose any A/D converter located
`downstream from current meter 6 of Figure 1.” Pet. Reply 9 (citing
`Ex. 1026 ¶ 23). Even if Petitioner is correct, we do not find the lack of
`
`
`11 We do not view, as Petitioner argues, Pet. Reply 10–11, Patent Owner’s
`arguments as incorporation by reference of the other references, but as an
`assertion that those re