Paper 9
`Trials@uspto.gov
`Tel: 571-272-7822 Entered: February 1, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`Before GRACE KARAFFA OBERMANN, BRYAN F. MOORE, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`NIKON CORPORATION,
`Petitioner,
`
`v.
`
`CARL ZEISS AG AND ASML NETHERLANDS B.V.,
`Patent Owner.
`____________
`
`Case IPR2018-00686
`Patent 9,728,574 B2
`____________
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822 Entered: February 1, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`Before GRACE KARAFFA OBERMANN, BRYAN F. MOORE, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`NIKON CORPORATION,
`Petitioner,
`
`v.
`
`CARL ZEISS AG AND ASML NETHERLANDS B.V.,
`Patent Owner.
`____________
`
`Case IPR2018-00686
`Patent 9,728,574 B2
`____________
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`IPR2018-00686
`Patent 9,728,574 B2
`
`BACKGROUND
`I.
`Nikon Corporation (“Petitioner”) requests inter partes review of
`claims 1–5,1 7–10, 16, 24, and 30–33 of U.S. Patent No. 9,728,574 B2 (“the
`’574 patent,” Ex. 1001) pursuant to 35 U.S.C. §§ 311 et seq. Paper 2
`(“Pet.”). Petitioner relies on the testimony of Dr. Stuart Kleinfelder.
`Ex. 1011. Carl Zeiss AG and ASML Netherlands B.V. (“Patent Owner”)
`filed a preliminary response. Paper 6 (“Prelim. Resp.”). Upon consideration
`of the Petition and Preliminary Response, we concluded the information
`presented did not show there is not a reasonable likelihood that Petitioner
`would prevail in establishing the unpatentability of claims 1–5, 7–10, 16, 24,
`and 30–33 of the ’574 patent. Paper 7, 2 (“Institution Decision,” “Inst.
`Dec.”).
`On October 26, 2018, Petitioner filed a Request for Rehearing (Paper
`8 (“Reh’g Req.”)) of our Institution Decision, requesting reconsideration of
`our decision denying institution of inter partes review of claims 1–5, 7–10,
`16, 24, and 30–33 of the ’574 patent. Petitioner argues that the “Board
`misapprehended matters relating to Grounds 1 and 2.” Reh’g Req. 1.
`We have considered Petitioner’s Request for Rehearing, and, for the
`reasons set forth below, Petitioner’s Request is denied.
`
`II.
`
`STANDARD OF REVIEW
`
`37 C.F.R. § 42.71(d) provides that:
`A party dissatisfied with a decision may file a request for
`rehearing, without prior authorization from the Board. The
`burden of showing a decision should be modified lies with the
`party challenging the decision. The request must specifically
`
`1 The Petition, in an apparent typographic error, omits claim 5 from its
`listing of challenged claims on page 1.
`
`
`
`IPR2018-00686
`Patent 9,728,574 B2
`
`identify all matters the party believes the Board misapprehended
`or overlooked, and the place where each matter was previously
`addressed in a motion, opposition, or a reply.
`(Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756,
`48768 (Aug. 14, 2012). Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a
`decision on petition, a panel will review the decision for an abuse of
`discretion.” An abuse of discretion occurs when a “decision was based on
`an erroneous conclusion of law or clearly erroneous factual findings, or . . . a
`clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties
`Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).
`
`III. DISCUSSION
`
`A. 35 U.S.C. § 325(d)
`
`In the Institution Decision, we denied institution of Ground 1 based on
`our discretion under 35 U.S.C. § 325(d). Inst. Dec. 17. Specifically, we
`determined that the Kaifu reference relied on by Petitioner was considered
`during prosecution. Id. Petitioner asserts that we misapprehended or
`overlooked its arguments regarding why its contentions as to Kaifu were not
`considered by the Examiner.
`
`[S]ubstantial discrepancies between the treatment of Kaifu and
`Kaifu ‘003 in the file histories of the grandparent application and
`the ’574 application suggest that FIGs. 19A and 19B of Kaifu
`were forgotton [sic] or misapplied by the Examiner during the
`prosecution of the ’574 patent . . . [Claims that were] rejected and
`canceled [over Kaifu ’003 in the grandparent] were very similar
`in scope to the challenged claims, and yet during the prosecution
`of the ’574 patent, the Examiner apparently forgot that the
`allegedly missing limitations of the challenged claims were
`previously found to be disclosed in FIGs. 8a/b of Kaifu ‘003 in
`the grandparent application.
`Reh’g Req. 2–3. Petitioner goes on to state that
`
`3
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`IPR2018-00686
`Patent 9,728,574 B2
`
`very similar limitations to the so-called distinguishing features of
`the ’574 patent claims [18–20] were rejected in the grandparent
`application over figures identical to FIGs. 19A/B of Kaifu and
`yet inexplicably the next communication in response to
`applicant’s arguments in the ’574 patent prosecution history was
`a notice of allowance. The most apparent conclusion is that, as
`stated by the Applicant on multiple occasions in the prosecution
`history of the ’574 patent, the Examiner relied solely upon FIG.
`1 from Kaifu and forgot about FIGs. 19A/B of Kaifu.
`Reh’g Req. 7–8. In other words, Petitioner repeats its contention that the
`Examiner relied only on Figure 1 of Kaifu and, as support, states that claims
`similar to the challenged claims were cancelled/rejected over the related
`Kaifu ’003 reference in the grandparent application.
`To the extent Petitioner is suggesting we did not consider that some
`claims were cancelled while others were allowed over Kaifu ’003 in the
`grandparent, we state here that we did consider that fact when evaluating the
`arguments to reach the Institution Decision. See Inst. Dec. 11 (citing
`Ex. 1007 (file history of grandparent application), 453–454 (rejection of
`claim 18–20), 493 (indicating claims 18–20 were cancelled). Nevertheless,
`the fact that some claims were cancelled in the grandparent over Kaifu ’003
`while others were allowed did not persuade us that the Examiner of the ’574
`patent overlooked FIGs. 19A/B of Kaifu. Thus, we considered these
`arguments by Petitioner. Inst. Dec. 14, 17 (“[W]e find it is at least unclear
`whether the Examiner limited his examination to Figure 1 and did not
`consider Figures 19A/B . . . we are not convinced the Examiner failed to
`consider Figures 19A/B of Kaifu.”).
`Petitioner also asserts we overlooked the fact that some of Patent
`Owner’s arguments regarding § 325(d) were limited to independent claims 9
`and 24 and did not encompass claims 1 and 30. Reh’g Req. 9. Specifically,
`
`4
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`IPR2018-00686
`Patent 9,728,574 B2
`
`Petitioner notes that a limitation allegedly similar to the “currently being
`scanned” limitation considered in the grandparent application is found only
`in claims 9 and 24 not claims 1 and 30. Id. at 8–9.
`We considered this fact. In its Preliminary Response, Patent Owner
`offers two separate rationales for the application of § 325(d) under different
`headings—one general argument and one argument specific to claims 9 and
`24.2 We considered both arguments in the Institution Decision. See Inst.
`Dec. 12 (considering general arguments discussed at Prelim. Resp. 42–47);
`id. at 15 (considering arguments specific to claim 9 discussed at Prelim.
`Resp. 50–52). In sum, we applied a multiple factor test considering all the
`claims and all the arguments including the fact that the art presented by
`Petitioner was before the Examiner throughout the prosecution of the ’574
`patent, its parent, and its grandparent, and we decided to use our discretion
`to reject Ground 1 of the Petition. Inst. Dec. 10–17.
`For the reasons above, Petitioner’s arguments regarding Kaifu on
`rehearing are simply expanding or reiterating arguments already made in the
`Petition. A request for rehearing is not merely the opportunity for the
`requester to reargue positions, elaborate on previous positions, or to disagree
`with the analysis or conclusions of the panel. See Nestlé Purina Petcare Co.
`v. Oil–Dri Corp. of Amer., Case IPR2015–00737, slip op. at 8 (PTAB Feb.
`9, 2017) (Paper 39) (“Merely disagreeing with our analysis or conclusions
`does not serve as a proper basis for a request for rehearing.”). Instead, the
`
`2 “V. GROUND 1 IS DEFICIENT BECAUSE KAIFU IS THE SAME
`PRIOR ART PREVIOUSLY CONSIDERED BY THE OFFICE” (Prelim.
`Resp. 42–47) and “VI. C. The Office has already found that Kaifu’s Figs.
`19A/B fail to disclose or suggest ‘selectively electrically coupling’ as
`independent claims 9 and 24 recite” (id. at 52–54).
`5
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`IPR2018-00686
`Patent 9,728,574 B2
`
`requester must identify previously-presented arguments and/or evidence that
`the panel overlooked or misapprehended. Petitioner fails to do so here, and
`thus has failed to demonstrate evidence of abuse of discretion by the panel.
`For the reasons above, Petitioner’s Request for Rehearing fails to
`show that we overlooked any arguments.
`
`B. Claim 2 - “one or more signals”
`In the Decision, we found that the earliest priority date for the ’574
`patent is January 31, 2006 (the filing date of the grandparent application),
`and the Yamashita reference, relied on in Ground 2, was published
`December 13, 2012, after that priority date. Specifically, we found that
`“since the parent and grandparent undisputedly disclosed the use of one
`select signal, claim 2 [reciting ‘one or more signals’] can be supported by a
`description even without a reference to ‘more signals.’” Inst. Dec. 28.
`Petitioner argues that we misapprehended the law in making that finding.
`Reh’g. Req. 9–10 (quoting PowerOasis, Inc. v. T-Mobile USA, Inc., 522
`F.3d 1299, 1306 (Fed. Cir. 2008) (“The written description requirement is
`not a question of whether one skilled in the art might be able to construct the
`patentee’s device from the teachings of the disclosure. . . . Rather, it is a
`question whether the application necessarily discloses that particular
`device.”)).
`In particular, Petitioner asserts we cited cases that used the wrong
`standard, i.e. the standard for anticipation and infringement rather than the
`standard for written description. Id. at 4. Our Decision did not, however,
`turn on principles of anticipation or infringement but rather on the scope of
`the phrase “one or more signals.” See Inst. Dec. 28 (finding that disclosure
`
`6
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`IPR2018-00686
`Patent 9,728,574 B2
`
`of a single select signal supports a claim to “one or more select signals”
`because the latter phrase reads on a single select signal).
`Nevertheless, for clarity, we restate here and apply the standard for
`written description. To satisfy the written description requirement of 35
`U.S.C. § 112 ¶ 1, the specification must “clearly allow persons of ordinary
`skill in the art to recognize that the inventor invented what is claimed.”
`Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
`(internal brackets omitted) (en banc) (quoting Vas–Cath Inc. v. Mahurkar,
`935 F.2d 1555, 1563 (Fed. Cir. 1991)). Thus, the specification must
`reasonably convey to those skilled in the art that the inventor possessed, at
`the time of filing, the subject matter that he or she has claimed. Id. “[T]he
`level of detail required to satisfy the written description requirement varies
`depending on the nature and scope of the claims and on the complexity and
`predictability of the relevant technology.” Id. Whether a specification
`complies with the written description requirement is a question of fact. Id. at
`1351, 1355. Entitlement to a filing date extends only to subject matter that
`is disclosed, not to that which is obvious. Lockwood v. Am. Airlines, Inc.,
`107 F.3d 1565, 1571–72 (Fed. Cir. 1997).
`Petitioner argues that the claim term “one or more select signals” is an
`alternative recitation, with the alternatives being one signal and more
`signals. Reh’g Req. 9. We disagree.
`The claim scope relevant for a written description requirement is the
`scope “as construed” by the court. See Johnson Worldwide Assocs., Inc. v.
`Zebco Corp., 175 F.3d 985, 994 (Fed. Cir. 1999). Claim 2 recites “wherein
`the transferring is performed in response to one or more select signals.”
`Petitioner asserts that the claim language was amended, in prosecution, from
`
`7
`
`
`
`IPR2018-00686
`Patent 9,728,574 B2
`
`reciting “comprising coupling the first sensing node to the second sensing
`node in response to a select signal,” and there was no support in the written
`description of the parent and grandparent applications for the added “more
`select signals.” Pet. 21 (citing Ex. 1003, 112, 148). Nevertheless, the
`Examiner allowed the claim as a continuation not a continuation-in-part.
`See generally, Ex. 1001. Apparently, neither the Applicant nor the
`Examiner found that this claim language required an update to the
`Specification. We agree with the Examiner.
`We determine that because the open ended term “comprising” was
`used in the original claim reciting “a” signal, the recitation of “a” signal and
`“one or more” signals would have the same scope. An indefinite article,
`such as “a,” in patent parlance encompasses “one or more” when used, as
`here, in open-ended claims containing the transitional phrase “comprising.”
`KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000).
`“Unless the claim is specific as to the number of elements, the article ‘a’
`receives a singular interpretation only in rare circumstances when the
`patentee evinces a clear intent to so limit the article.” Id. Thus, the claim as
`amended, which removes the open ended preface “comprising” and changes
`the modifier of “select signals” from “a” to “one or more,” does not change
`the scope of the claim in that respect. It merely is a different phrasing.
`Thus, as we stated in the Institution Decision, any description of a
`system with one signal would necessarily support a claim to one or more
`signals. Inst. Dec. 28. Additionally, the claim, as amended, does not
`suggest there is choice between alternatives that would meet this claim. For
`example, the claim does not require a choice between a first type of signal
`
`8
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`
`
`IPR2018-00686
`Patent 9,728,574 B2
`
`and a second type of signal. The claim recites “one” signal, which can be
`optionally accompanied (“or”) by “more” signals.
`In arguing the claim does include alternative recitations, Petitioner
`relies on Tech. Licensing Corp. v. Videotek Inc., 545 F.3d 1316, 1322 (Fed.
`Cir. 2008) (“Tech”). Reh’g Req. 11. In Tech, a limitation of the claim in a
`CIP application recited “coupling said video type signal through a capacitor
`or other circuit.” Id. at 1322. Our reviewing court found that, although
`coupling said video type signal through “a capacitor” was disclosed in the
`parent application, support for the “other circuit” language was added in the
`child patent. Id. at 1333. As a result, the court affirmed the trial court’s
`holding that the parent application did not show the inventor was in
`possession of the invention as of the filing date of the parent application. Id.
`at 1334.
`As an initial matter, in Tech, the inventor acknowledged that the
`“other circuit” was new matter and added description in the child patent to
`support the “other circuit.” Id. at 1333 (“[A]lthough [the inventor] found
`support for the capacitor in the original written description, the only support
`that the inventor acknowledged for the “other circuit” was the new matter
`added in 1995.”). Here, other than the claims, there was no new description
`added to the specification regarding “more signals.” See Pet. 21.
`We determine that Tech is distinguishable from the present matter
`because the claim in Tech recited two distinct alternatives—a capacitor or
`“other circuit,” i.e., not a capacitor. The court in Tech determined that
`disclosure of only one alternative (the capacitor) in the parent application did
`not support a claim reciting the additional alternative (other circuit) added in
`the child application. Tech, 545 F.3d at 1334. The conclusion that
`
`9
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`IPR2018-00686
`Patent 9,728,574 B2
`
`disclosure of a system using a capacitor would not provide written
`description support to the recitation of an “other circuit” follows from the
`simple fact that the claim itself distinguishes the “other circuit” from a
`capacitor by reciting them as distinct alternatives.
`Here, there are no distinct alternatives recited. The claim simply
`allows that, in addition to the one signal, you may have others. Thus, the
`single signal disclosed does provide written description support for one or
`more signals as claimed because a single signal meets the literal claim
`recitation of “one or more.” The patentee is not required to describe in the
`specification every conceivable embodiment of his invention. See Rexnord
`Corp. v. Laitram Corp., 274 F.3d 1336, 1344 (Fed. Cir. 2001). As noted
`above, the claim does not require a first type of signal or a second type of
`signal, as would make the claim analogous to that considered in Tech. The
`claim recites simply “one or more.”
`For the reasons above, Petitioner’s Request for Rehearing fails to
`show that we misapprehended the law in reaching the result. Rather, the
`Petitioner’s arguments in the Request for Rehearing appear to be premised
`on construing the claim in way that we did not accept in the Institution
`Decision and do not accept on Rehearing.
`C. Conclusion
`The requester must identify previously-presented arguments and/or
`evidence that the panel overlooked or misapprehended. Petitioner fails to do
`so here, and thus has failed to show an abuse of discretion in our Decision.
`
`
`
`10
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`IPR2018-00686
`Patent 9,728,574 B2
`
`IV. ORDER
`
`Accordingly, it is hereby:
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
`
`
`
`11
`
`
`
`IPR2018-00686
`Patent 9,728,574 B2
`
`PETITIONER:
`
`David L. Fehrman
`dfehrman@mofo.com
`
`Kenneth W. Newton
`knewton@mofo.com
`
`
`
`PATENT OWNER:
`
`Kurt Glitzenstein
`glitzenstein@fr.com
`
`John Phillips
`phillips@fr.com
`
`Christopher Marchese
`marchese@fr.com
`
`Kim Leung
`leung@fr.com
`
`
`
`
`12
`
`
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