Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 11
`Entered: October 1, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NIKON CORPORATION,
`Petitioner,
`
`v.
`
`ASML NETHERLANDS B.V.
`CARL ZEISS AG,
`Patent Owner.
`____________
`
`Case IPR2018-00687
`Patent 6,731,335 B1
`____________
`
`
`Before JEFFREY S. SMITH, DAVID C. MCKONE, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`DECISION
`PATENT OWNER’S REQUEST FOR REHEARING
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`571-272-7822
`
`
`Paper No. 11
`Entered: October 1, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NIKON CORPORATION,
`Petitioner,
`
`v.
`
`ASML NETHERLANDS B.V.
`CARL ZEISS AG,
`Patent Owner.
`____________
`
`Case IPR2018-00687
`Patent 6,731,335 B1
`____________
`
`
`Before JEFFREY S. SMITH, DAVID C. MCKONE, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`DECISION
`PATENT OWNER’S REQUEST FOR REHEARING
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`IPR2018-00687
`Patent 6,731,335 B1
`
`
`I. INTRODUCTION
`Nikon Corporation (“Petitioner”) filed a Petition (Paper 2, “Pet.”) to
`institute an inter partes review of claims 1–12 of U.S. Patent No. 6,731,335
`B1 (Ex. 1001, “the ’335 patent”). Carl Zeiss AG and ASML Netherlands
`B.V. (collectively, “Patent Owner”) filed a Preliminary Response (Paper 6,
`“Prelim. Resp.”). Pursuant to 35 U.S.C. § 314, in our Institution Decision
`(Paper 7, “Dec.”), we instituted this proceeding as to claims 1–12. Dec. 40–
`41.
`
`In a Request for Rehearing (Paper 9, “Req.”), Patent Owner contends
`that we erred by concluding that a skilled artisan would have been motivated
`to look outside Takahashi (Ex. 1006, EP 0 757 476 A2, Feb. 5, 1997) for
`ways to eliminate dark current and residual charges. Req. 3. For the reasons
`below, we deny Patent Owner’s Request for Rehearing.
`
`
`II. ANALYSIS
`When rehearing a decision on institution, the Board reviews the
`decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of
`discretion may be indicated if a decision is based on an erroneous
`interpretation of law, if a factual finding is not supported by substantial
`evidence, or if the decision represents an unreasonable judgment in weighing
`relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281
`(Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir.
`2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The
`burden of showing that the Decision should be modified is on Patent Owner,
`the party challenging the Decision. See 37 C.F.R. § 42.71(d). In addition,
`“[t]he request must specifically identify all matters the party believes the
`
`2
`
`
`
`IPR2018-00687
`Patent 6,731,335 B1
`
`Board misapprehended or overlooked, and the place where each matter was
`previously addressed in a motion, an opposition, or a reply.” Id.
`In the Petition and Preliminary Response, the parties disputed whether
`it would have been obvious to modify Takahashi to arrive at step 1(a) of
`claim 1, namely, “(a) fully depleting the first and second photodiodes.”
`Petitioner presented argument and expert testimony that it would have been
`obvious. Pet. 23, 26, 38; Ex. 1002 (Declaration of Stuart Kleinfelder Ph.D.)
`¶¶ 72–73. Patent Owner argued that Takahashi already taught techniques for
`reducing dark current and residual charges left in photodiodes and, thus, a
`skilled artisan “would have had no motivation to modify the art to adopt an
`alternative technique where, as here, its implementation would be non-
`productive” and “[a]s such, the art’s disclosure in that regard is a strong
`teaching away that militates in favor of non-obviousness.” Prelim.
`Resp. 17–22, 29. In the Institution Decision, we fully considered the parties’
`respective arguments and evidence, credited Petitioner’s expert testimony,
`and preliminarily agreed with Petitioner that a skilled artisan would have had
`reasons to modify Takahashi. Dec. 16–20.
`In the Rehearing Request, Patent Owner reiterates its argument that a
`skilled artisan “would not have ‘seen a benefit’ to modifying Takahashi with
`any other teachings on this issue” because “Takahashi includes structural
`components that eliminate dark current and residual charges”; rather, Patent
`Owner argues, “neither the Decision nor the Petition identifies any ‘benefit’
`that the step of fully depleting the photodiodes would provide to the
`Takahashi apparatus, especially since Takahashi already had structural
`solutions for addressing dark current and residual charges.” Req. 3–4
`(quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 424 (2007)). Patent
`
`3
`
`
`
`IPR2018-00687
`Patent 6,731,335 B1
`
`Owner then takes issue with our citation to In re Mouttet, 686 F.3d 1332
`(Fed. Cir. 2012), and argues that we should follow Winner International
`Royalty Corp. v. Wang, 202 F.3d 1340 (Fed. Cir. 2000), instead. Req. 4–8.
`We are not persuaded by Patent Owner. Patent Owner does not
`contend that we overlooked or misapprehended its argument. Indeed, we
`discussed it in detail. Dec. 16–20. Patent Owner also does not persuade us
`that we misapprehended the law of obviousness. Rather, Patent Owner
`simply disagrees with our Institution Decision on this issue. Nevertheless,
`mere disagreement with our conclusion is not a proper basis for rehearing.
`Accordingly, we deny Patent Owner’s Request for Rehearing.
`We note that our determination that there would have been reasons to
`modify Takahashi is not final and that Patent Owner is not precluded from
`raising in its Patent Owner Response the arguments presented in the Request
`for Rehearing.
`
`
`III. CONCLUSION
`Patent Owner has not shown that we misapprehended the law or
`overlooked its arguments. Accordingly, we decline to change our Decision.
`
`
`IV. ORDER
`
`For the reasons given:
`Patent Owner’s Request for Rehearing is denied.
`
`
`
`
`
`4
`
`
`
`IPR2018-00687
`Patent 6,731,335 B1
`
`PETITIONER:
`David L. Fehrman
`David T. Yang
`MORRISON & FOERSTER LLP
`dfehrman@mofo.com
`dyang@mofo.com
`
`PATENT OWNER:
`Kurt L. Glitzenstein
`John C. Phillips
`Chris Marchese
`Kim Leung
`FISH & RICHARDSON P.C.
`Glitzenstein@fr.com
`phillips@fr.com
`marchese@fr.com
`leung@fr.com
`
`
`5
`
`
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