`Case 1:14-cv-01432-LPS Document 220-1 Filed 07/19/19 Page 1 of 47 PageID #: 15546
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`
`
`EXHIBIT A
`EXHIBIT A
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`
`
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`
`
`2017-2474, -2475, -2476, -2478, -2479, -2480, -2482, -2483,
`2018-1050, -1079, -1080, -1081, -1082
`United States Court of Appeals
`for the Federal Circuit
`
`SAMSUNG ELECTRONICS CO. LTD., MICRON TECHNOLOGY, INC.,
`SK HYNIX, INC.
`Appellants,
`
`v.
`ELM 3DS INNOVATIONS LLC,
`Appellee.
`
`
`
` Appeals from the United States Patent and Trademark Office, Patent Trial and
`Appeal Board in Inter Partes Review Nos. IPR2016-00386, IPR2016-00387,
`IPR2016-00388, IPR2016-00390, IPR2016-00391, IPR2016-00393,
`IPR2016-00394, IPR2016- 00395, IPR2016-00708, IPR2016-00687,
`IPR2016-00691, IPR2016-00770, and IPR2016-00786
`APPELLEE ELM 3DS INNOVATIONS LLC’s
`COMBINED PETITION FOR PANEL REHEARING
`AND REHEARING EN BANC
`Michael T. Renaud
`mtrenaud@mintz.com
`James M. Wodarski
`jwodarski@mintz.com
`William A. Meunier
`wameunier@mintz.com
`Michael C. Newman
`mcnewman@mintz.com
`MINTZ LEVIN COHN FERRIS
` GLOVSKY AND POPEO PC
`One Financial Center
`Boston, MA 02111
`Tel. (617) 542.6000
` Fax (617) 542.2241
`Counsel for Appellee Elm 3DS Innovations LLC
`
`July 12, 2019
`
`
`
`COUNSEL PRESS, LLC
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`
`
`
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`
`
`
`
`
`
`
`
`
`
`
`
`
` (888) 277-3259
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`CERTIFICATE OF INTEREST
`
`Counsel for Appellee Elm 3DS Innovations LLC certifies the following:
`
`1. The full name of every party represented by me is:
`
`Elm 3DS Innovations LLC
`
`2. The name of the real party in interest (if the party named in the caption is
`
`not the real party in interest) represented by me is:
`
`None.
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`3. All parent corporations and any publicly held companies that own 10
`
`percent or more of the stock of the party represented by me are:
`
`None.
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`4. The names of all law firms and the partners or associates that appeared for
`
`the party now represented by me in the trial court or agency or are
`
`expected to appear in this Court (and who have not entered an appearance
`
`in this Court) are:
`
`Robins Kaplan LLP (Cyrus A. Morton and Kelsey Thorkelson).
`
`Carmichael IP, PLLC (James Carmichael).
`
`5. The title and number of any case known to counsel to be pending in this or
`
`any other court or agency that will directly affect or be directly affected by
`
`this court’s decision in the pending appeal:
`
`i
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`
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`The following cases pending before the Delaware District Court: Elm
`
`3DS Innovations LLC v. Samsung Electronics Co. Ltd., Civil Action No.
`
`1:14-cv-01430-LPS, Elm 3DS Innovations LLC v. Micron Technology
`
`Inc., Civil Action No. 1:14-cv-01431-LPS, and Elm 3DS Innovations LLC
`
`v. SK hynix Inc., Civil Action No. 1:14-cv-01432-LPS.
`
`Dated: July 12, 2019
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`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ William A. Meunier
`William A. Meunier
`
`
`
`
`
`ii
`
`
`
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`TABLE OF CONTENTS
`
`CERTIFICATE OF INTEREST ................................................................................. i
`TABLE OF AUTHORITIES .................................................................................... iv
`FEDERAL CIRCUIT RULE 35(b)(2) STATEMENT OF COUNSEL .................... 1
`I.
`Summary .......................................................................................................... 2
`II.
`Points of Law or Fact Overlooked or Misapprehended By The Panel ............ 4
`III. The Panel Should Grant Rehearing To Omit The 50 Microns
`Requirement ..................................................................................................... 5
`A.
`The Court Need Not Resolve The 50 Microns Dispute ........................ 5
`B.
`Examples Are Not Clear And Unambiguous Disavowals .................... 7
`C.
`“50 Microns” Was An Example Of A Sufficiently Low Value,
`Not A Clear And Unambiguous Disavowal ........................................ 10
`1.
`“50 Microns” Was Merely An Example Of A
`Sufficiently Low Thinness ........................................................ 11
`The Prosecution History’s Indefiniteness Rejection
`Response Did Not Clearly And Unambiguously Disavow
`Substantially Flexible Substrates Thicker Than 50
`Microns ..................................................................................... 12
`There Is No Evidence That A POSITA Would
`Understand That Substantially Flexible Substrates
`Thicker Than 50 Microns Were Disavowed ............................. 15
`The Claim Differentiation Doctrine Confirms There Was
`No Disavowal Of Sufficiently Thinned Substrates That
`Are Thicker Than 50 Microns ................................................... 17
`IV. The En Banc Court Should Grant Rehearing To Consider and Modify
`Its “Substantially Flexible” Construction To Omit The 50 Microns
`Requirement ................................................................................................... 18
`Conclusion ..................................................................................................... 19
`
`V.
`
`
`
`
`
`
`iii
`
`2.
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`3.
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`4.
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`
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Federal Cases
`Aventis Pharma S.A. v. Hospira, Inc.,
`675 F.3d 1324 (Fed. Cir. 2012) ...................................................................passim
`Bayer-Cropscience AG v. Dow Agrosciences LLC,
`728 F.3d 1324 (Fed. Cir. 2013) ...................................................................... 6, 19
`Dealertrack, Inc. v. Huber,
`674 F.3d 1315 (Fed. Cir. 2012) .................................................................. 1, 9, 19
`Elkay Mfg. Co. v. Ebco Mfg. Co.,
`192 F.3d 973 (Fed. Cir. 1999) .................................................................. 1, 16, 19
`In re Trans Tex. Holdings Corp.,
`498 F.3d 1290 (Fed. Cir. 2007) .................................................................. 1, 9, 19
`K-2 Corp. v. Salomon S.A.,
`191 F.3d 1356 (Fed. Cir. 1999) ............................................................................ 7
`Leo Pharm. Prods. v. Rea,
`726 F.3d 1346 (Fed. Cir. 2013) ............................................................................ 6
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ...................................................................passim
`
`SanDisk Corp. v. Memoroex Prods.
`415 F.3d 1278 (Fed. Cir. 2005) .......................................................................... 14
`Seachange Int’l, Inc. v. C-COR, Inc.,
`413 F.3d 1361 (Fed. Cir. 2005) .......................................................................... 17
`Thorner v. Sony Computer Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) ............................................................ 1, 9, 16, 19
`Toshiba Corp. v. Imation Corp.,
`681 F.3d 1358 (Fed. Cir. 2012) ............................................................ 1, 7, 14, 19
`
`
`
`iv
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`
`FEDERAL CIRCUIT RULE 35(b)(2) STATEMENT OF COUNSEL
`
`Based on my professional judgment, I believe the panel decision is contrary
`
`to the following decisions of this Court:
`
` Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324 (Fed. Cir.
`
`2012);
`
` Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362 (Fed. Cir.
`
`2012);
`
` Toshiba Corp. v. Imation Corp., 681 F.3d 1358 (Fed. Cir. 2012);
`
` Dealertrack, Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012);
`
` In re Trans Tex. Holdings Corp., 498 F.3d 1290 (Fed. Cir. 2007);
`
` Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005);
`
` Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973 (Fed. Cir. 1999).
`
`
`
`Date: July 12, 2019
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ William A. Meunier
`Attorney for Appellee
`
`
`
`
`
`
`
`1
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`
`I.
`
`Summary
`In construing “substantially flexible,” the Court properly acknowledged that
`
`“5 x 108 dynes/cm2” was just an example of a sufficiently low dielectric stress, and
`
`thus could not be read into the construction. But even though “50 microns” was
`
`just an example of a sufficient thinness, the Court improperly read “50 microns”
`
`into the construction of “substantially flexible.” This resulted in an internal
`
`inconsistency, and also contradicted the Federal Circuit’s controlling precedent
`
`against treating examples as limiting disavowals.
`
`Therefore, Patent Owner/Appellee Elm 3DS Innovations LLC petitions for a
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`panel or en banc rehearing on one narrow issue: whether the Court should amend
`
`its “substantially flexible” construction to require only that a semiconductor
`
`substrate be thinned (and subsequently polished or smoothed) so that it is largely
`
`able to bend without breaking, without further requiring that the substrate be
`
`thinned to a specified value of 50 microns or less. This change will not impact the
`
`ultimate disposition, as no issue turned on the 50 micron value.
`
`Particularly, Elm requests that the Court amend its June 12, 2019 Opinion
`
`and “substantially flexible” construction as follows:
`
`[W]e interpret a substantially flexible semiconductor substrate as a
`
`semiconductor substrate that is thinned to 50 µm and subsequently
`
`2
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`polished or smoothed so that it is able to largely able to bend without
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`breaking.
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`Op., Doc. 68, at 11 (proposed amendment added).
`
`
`
`Elm does not challenge the Court’s conclusion that the full scope of
`
`“substantially flexible” was disavowed during prosecution to require making the
`
`substrate sufficiently thin and subsequently polished such that it is able to bend
`
`without breaking. But Elm respectfully submits that there was no clear and
`
`unambiguous disavowal requiring the thinness be further limited to 50 microns.
`
`Rather, a thinness of 50 microns is merely an example of a sufficient thinness that,
`
`along with other factors, can make the substrate substantially flexible.
`
`
`
`The correct analysis of the “thinned” disclaimer should be consistent with
`
`the Court’s parallel analysis of the low stress dialectic disclaimer, in which the
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`Court concluded that “[w]e see nothing in the specification or prosecution history
`
`that limits the dielectric to a particular stress value. Both merely provide as an
`
`example that a tensile stress of 5 x 108 dynes/cm2 is sufficient.” Op. at 10-11
`
`(emphasis added). Similarly, the intrinsic evidence identified a thinness of 50
`
`microns as an example of a sufficient thinness:
`
` “A substantially flexible semiconductor substrate may be achieved by
`
`grinding until considerably thin, for example to a thickness of less than
`
`3
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`50 microns, and polishing the resulting surface.” J.A. 10313; J.A. 10316
`
`(emphasis added).
`
` “Two features are required to achieve substantial flexibility. One is that
`
`the semiconductor material must be sufficiently thin, e.g., 50 microns or
`
`less.” J.A. 16038 (emphasis added).
`
`The Court’s reading 50 microns into the construction was thus erroneous and
`
`inconsistent with its low stress dielectric analysis.
`
`The deletion of “50 microns” will not affect the Court’s affirmance, which
`
`relied solely on the missing low stress dielectric requirement, and not on any 50
`
`microns requirement. Because the 50 microns limitation played no part in the
`
`Court’s affirmance, the Court need not even address or resolve the issue of whether
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`thinning the substrate to 50 microns is a necessary part of the “substantially
`
`flexible” construction.
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`However, if the Court does address this issue, the Court should modify its
`
`construction to omit this 50 microns requirement.
`
`II.
`
`Points of Law or Fact Overlooked or Misapprehended By The Panel
`The following points of law or fact were overlooked or misapprehended by
`
`the Court in its panel decision:
`
`4
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` The issue of whether 50 microns was a requirement of the “substantially
`
`flexible” construction was unnecessary to its affirmance of the decisions
`
`below and need not be addressed or resolved on appeal;
`
` the intrinsic record clearly and unambiguously identified 50 microns as
`
`merely one example of a sufficient thinness that, along with other factors,
`
`can make the substrate substantially flexible;
`
` the intrinsic record did not clearly and unambiguously disavow
`
`substantially flexible substrates that are thicker than 50 microns; and
`
` it was improper and contrary to this Court’s precedent to construe
`
`“substantially flexible” to include a 50 microns requirement where the
`
`intrinsic record unambiguously identified 50 microns as merely an
`
`example of a sufficient thinness that, along with other factors, can make
`
`the
`
`substrate
`
`substantially
`
`flexible, and did not clearly and
`
`unambiguously disavow substantially flexible substrates that are thicker
`
`than 50 microns.
`
`III. The Panel Should Grant Rehearing To Omit The 50 Microns
`Requirement
`A. The Court Need Not Resolve The 50 Microns Dispute
`The Court’s June 12, 2019 Opinion affirmed each of PTAB’s final written
`
`decisions finding that Appellants/Petitioners failed to establish the unpatentability
`
`of any of the Challenged Patents and claims. Op., Doc. 68, at 2, 18. This was
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`5
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`based on Appellants’/Petitioners’ failure to establish the obviousness of the low
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`stress dielectric limitation required in each claim. Op., Doc. 68, at 18. The Court’s
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`affirmance did not turn on “50 microns” and, therefore, will not be affected by
`
`deleting the “50 microns” requirement from the Court’s “substantially flexible”
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`construction.
`
`Accordingly, the Court need not and should not resolve the issue “50
`
`microns” is a part of the “substantially flexible” construction. “In other cases, this
`
`court has limited its claim-construction analysis to go no further than was required
`
`to affirm or otherwise rule on the judgment appealed.” Bayer-Cropscience AG v.
`
`Dow Agrosciences LLC, 728 F.3d 1324, 1331-32 (Fed. Cir. 2013); see also Leo
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`Pharm. Prods. v. Rea, 726 F.3d 1346, 1352-53 (Fed. Cir. 2013) (“Because it is
`
`unnecessary for this court to adopt a specific alternative construction to resolve this
`
`appeal, this court declines to do so, leaving that question to a later forum where the
`
`issue is determinative.”). This is particularly apt here where the construction
`
`dispute and evidence focused on whether “substantially flexible” required
`
`flexibility versus rigidity, and not on a particular thinness of 50 microns. See, e.g.,
`
`J.A. 42 (“although [Appellants argue] that the prior art shows a particular thinning
`
`of a substrate, [Appellants do] not argue that the combination of [the prior art] who
`
`have conveyed to one of ordinary skill in the art a substrate that is (largely) able to
`
`bend without breaking”).
`
`6
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`However, if the Court does address the issue, the Court should modify its
`
`construction to omit “50 microns.”
`
`B.
`Examples Are Not Clear And Unambiguous Disavowals
`“A statement in the prosecution history can only amount to a disclaimer if
`
`
`
`the applicant ‘clearly and unambiguously’ disavowed claim scope.” Toshiba Corp.
`
`v. Imation Corp., 681 F.3d 1358, 1367 (Fed. Cir. 2012) (internal citations omitted).
`
`The Appellants/Petitioners bear the burden of establishing the required clear and
`
`ambiguous disavowal. K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1363 (Fed. Cir.
`
`1999).
`
`
`
`In its June 12, 2019 Opinion, the Court correctly acknowledged that
`
`providing examples of a sufficient value does not amount to a clear and
`
`unambiguous disavowal limiting the claims to that particular value. See Op. at 10-
`
`11. Specifically, the Court considered whether prosecution language such as the
`
`following was a clear and unambiguous disavowal requiring not only that the
`
`claimed substantially flexible circuit layer have a sufficiently low stress dialectic
`
`material, but also that this low stress dielectric material have a stress of 5 x 108
`
`dynes/cm2 or less:
`
` “For a circuit layer to be substantially flexible, Applicant has found that
`
`the dielectric material must have low tensile stress, for example, 5 x 108
`
`dynes/cm2.”
`
`7
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` “[T]he dielectric material used in processing the semiconductor material
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`must be sufficiently low stress. Otherwise, substantial flexibility is
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`defeated. As set forth in the present specification, stress of 5 x 108
`
`dynes/cm2 or less has been demonstrated to satisfy this requirement.”
`
`Op. at 10, quoting J.A. J.A. 10314 and 6038 (emphasis added).
`
`The Court properly determined that this language was only a disavowal
`
`requiring the claimed substantially flexible circuit layer have a sufficiently low
`
`stress dialectic material. Op. at 10-11. The disavowal did not also include a
`
`requirement that the low stress dielectric material be limited to a particular value—
`
`5 x 108 dynes/cm2 or less—because that stated value was only an example of a
`
`stress value that is sufficiently low enough to achieve the claimed substantial
`
`flexibility. In the Court’s words:
`
`Considered in its entirety, the prosecution history clearly and
`
`unambiguously demonstrates that a substantially flexible circuit
`
`layer, and similar terms, must contain a substantially flexible
`
`semiconductor substrate and a sufficiently low tensile stress
`
`dielectric material. We see nothing in the specification or
`
`prosecution history that limits the dielectric to a particular
`
`stress value. Both merely provide as an example that a
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`tensile stress of 5 x 108 dynes/cm2 is sufficient.
`
`8
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`Op. at 10-11 (emphasis added).
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`
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`The Court’s analysis and its rejection of the “5 x 108 dynes/cm2” example as
`
`part of the disavowal is consistent with the Federal Circuit’s precedent prohibiting
`
`treating exemplary embodiments as disavowals or special definitions limiting the
`
`ordinary meaning of a claim term. For example, Phillips confirmed this Court’s
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`longstanding express rejection of confining claims to exemplary embodiments—
`
`even if only one exemplary embodiment is identified—particularly where the
`
`patentee is “provid[ing] an example of how to practice the invention.” Phillips v.
`
`AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005). The Court has consistently
`
`applied this precedent, stating that any argument that claim scope should be limited
`
`to “examples … conflicts with our decision in Phillips.” See In re Trans Tex.
`
`Holdings Corp., 498 F.3d 1290, 1298-99 (Fed. Cir. 2007); Dealertrack, Inc. v.
`
`Huber, 674 F.3d 1315, 1322 (Fed. Cir. 2012) (confirming that declining to treat
`
`“example[s]” as limiting is “the only reading that does not violate this court’s
`
`repeated prohibition against importing limitations from the specification”); see
`
`also, e.g., Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir.
`
`2012) (“to disavow claim scope … it is not enough that the only embodiments, or
`
`all embodiments, contain a particular limitation”); Thorner v. Sony Computer
`
`Entm’t Am. LLC, 669 F.3d 1362, 1366-67 (Fed. Cir. 2012).
`
`9
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`
`C.
`
`“50 Microns” Was An Example Of A Sufficiently Low Value, Not
`A Clear And Unambiguous Disavowal
`The Court did not follow this same analysis and precedent when it
`
`determined that the disavowal requiring a sufficiently thinned substrate should
`
`further include the exemplary sufficient thinness of 50 microns. Op., Doc. 68, at
`
`11. Just like the exemplary low stress value of 5 x 108 dynes/cm2, the prosecution
`
`history identified a thinness of 50 microns as a mere example of a substrate
`
`thinness. Thus, while Elm does not now challenge that the full scope of
`
`“substantially flexible” was disavowed so as to require making the substrate
`
`sufficiently thin such that it is able to bend without breaking, Elm respectfully
`
`submits that there was no clear and unambiguous disavowal requiring that this
`
`sufficient thinness be further limited to 50 microns or less.
`
`There was no such disavowal for at least the following reasons:
`
`
`
`The intrinsic record clearly and unambiguously identified 50 microns
`
`as merely an example of a thinness sufficient to achieve “substantial flexibility.”
`
`
`
`The Office Action response did not clearly and unambiguously
`
`disavow substantially flexible substrates that are thicker than 50 microns.
`
`
`
`At most, the Office Action response is ambiguous, and, in the context
`
`of the other clear and explicit statements that 50 microns is an example and not a
`
`requirement, is not a clear and unambiguous disavowal.
`
`10
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`
`
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`The claim differentiation doctrine confirms there was no disavowal of
`
`flexible substrates that are thicker than 50 microns.
`
`The Court’s low stress dielectric disavowal analysis is therefore equally
`
`applicable here and compels the deletion of “50 microns” from the “substantially
`
`flexible” construction.
`
`1.
`
`“50 Microns” Was Merely An Example Of A Sufficiently
`Low Thinness
`During prosecution, Applicant repeatedly and explicitly stated that 50
`
`microns was just an example of a thinness sufficient to achieve the claimed
`
`flexibility. For example, to overcome the Bertin reference relied on by
`
`Appellants/Petitioners, Applicant stated in numerous different Office Action
`
`Responses that:
`
`A substantially flexible semiconductor substrate may be
`
`achieved by grinding until considerably thin, for example to a
`
`thickness of less than 50 microns, and polishing the resulting
`
`surface.
`
`E.g., J.A. 10313; J.A. 10316 (emphasis added).
`
`
`
`Similarly, in a different Office Action Response, Applicants again made
`
`clear that 50 microns was only an example of a sufficiently thin semiconductor
`
`substrate, and that the only real requirement was sufficient thinness, not a thinness
`
`of precisely 50 microns or less:
`
`11
`
`
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`
`Two features are required to achieve substantial flexibility.
`
`One is that the semiconductor material must be sufficiently
`
`thin, e.g., 50 microns or less.
`
`J.A. 16038 (emphasis added).
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`
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`These repeated statements that 50 microns was just an example of a
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`sufficiently thin substrate are consistent with the specification, which likewise
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`repeatedly referred to a substantially flexible substrate as thinned, without any
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`mention or requirement that the substrate be thinned to a specific value of 50
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`microns or less. For example: “The thinned (substantially flexible) substrate
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`circuit layers of the 3DS memory circuit are typically …” and “The thinned
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`(substantially flexible) substrate circuit layer are preferably … .” E.g., J.A. 885 at
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`8:34-46 (emphasis added).
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`2.
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`The Prosecution History’s Indefiniteness Rejection
`Response Did Not Clearly And Unambiguously Disavow
`Substantially Flexible Substrates Thicker Than 50 Microns
`Applicant’s response to an indefiniteness rejection in one of the applications
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`was consistent with these explicit prosecution history statements that 50 microns is
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`merely an example of a thinness sufficient to achieve the claimed flexibility. In
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`response to the indefiniteness rejection, Applicant cited to the following
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`specification passage describing an example of how a “substantially flexible”
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`substrate may be achieved in one embodiment:
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`2A. Grind the backside or exposed surface of the second circuit
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`substrate to a thickness of less than 50 µm and then polish or
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`smooth
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`the surface.
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` The
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`thinned substrate
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`is now a
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`substantially flexible substrate.
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`J.A. 1159 at 9:14-17; J.A. 10275. Consistent with the foregoing prosecution
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`history statements, nothing in this passage “clearly and unambiguously” states that
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`50 microns or less is the only thinness sufficient to achieve the claim flexibility; it
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`merely describes an embodiment in which the utilized sufficient thinness was 50
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`microns or less. J.A. 1159 at 9:14-17.
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`
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`And in citing this passage to overcome the indefiniteness rejection,
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`Applicant did not “clearly and unambiguously” require that the sufficient thinness
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`be limited to 50 microns. Rather, the Applicant restated this passage’s description
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`of an embodiment in which the sufficient thinness was 50 microns or less and,
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`critically, did not state that it was limiting the meaning of “substantially flexible”
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`to the precise values used in this embodiment, but instead explicitly stated that the
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`meaning of “substantially flexible” is consistent with this description in the
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`specification:
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`As described in this passage, a semiconductor substrate is
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`caused to be substantially flexible by thinning it to 50 microns
`
`or less and polishing or smoothing the thinned semiconductor
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`substrate to relive stress. The phrase “substantially flexible”
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`is used in the claims consistent with this description, which
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`is unambiguous.
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`J.A. 10275 (emphasis added). A substrate that is sufficiently thinned enough (and
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`then polished or smoothed) to make it substantially flexible is “consistent with” the
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`specification’s description, regardless of whether that sufficient thinness is the “50
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`microns or less” used in the described exemplary embodiment. This indefiniteness
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`rejection response thus does not “clearly and unambiguously” disavow flexible
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`substrates that are thicker than 50 microns because “[t]here is no ‘clear and
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`unmistakable’ disclaimer if a prosecution argument is subject to more than one
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`reasonable interpretation, one of which is consistent with the proffered meaning of
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`the disputed term.” SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1287
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`(Fed. Cir. 2005).
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`
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`This §112 rejection response is thus analogous to the one addressed in
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`Toshiba Corp. v. Imation Corp., 681 F.3d 1358 (Fed. Cir. 2012). In Toshiba, the
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`Court found that the identification of a specification’s example as a “recording
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`plane” in response to a §112 rejection did not necessarily limit the meaning of
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`“recoding plane” to the identified example and, therefore, “is not a clear and
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`unambiguous disavowal of claim scope.” Id. at 1370-71. The same is true here –
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`explaining that thinning a substrate to 50 microns is sufficient to make the
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`substrate substantially flexible does not necessarily mean that a thinness greater
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`than 50 microns could not also be sufficiently thin enough to achieve the described
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`substantial flexibility.
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`3.
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`There Is No Evidence That A POSITA Would Understand
`That Substantially Flexible Substrates Thicker Than 50
`Microns Were Disavowed
`Phillips recognized that “persons of ordinary skill in the art rarely would
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`
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`confine their definitions of terms to the exact representations depicted in the
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`embodiments,” Phillips, 414 F.3d at 1323, and Appellants/Petitioners identified no
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`evidence that a POSITA would understand that, based on this “consistent with”
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`office action response, a substrate must be thinned to 50 microns or less in order to
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`be sufficiently thin enough to achieve substantial flexibility. Indeed, despite
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`bearing the burden of proving disavowal, Appellants/Petitioners provided no
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`expert testimony or evidence of how a POSITA would understand this office
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`action response at all, much less testimony and evidence showing that a POSITA
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`would understand it to disavow any substrate that was thinned to achieve
`
`substantial flexibility but was thicker than 50 microns. There could be no such
`
`evidence because a POSITA would understand that the thickness required to
`
`achieve substantial flexibility is not a constant value (of 50 microns or otherwise),
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`but is variable calculated based on, among other things, the substrate’s material
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`and its given surface area. See, e.g., J.A. 44-46.
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`At most, the current record establishes only that the foregoing “consistent
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`with” argument is ambiguous, which is not sufficient to be the required “clear and
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`unambiguous” disavowal of all substantially flexible substrates thicker than 50
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`microns. This Court has repeatedly held that the standard for disavowal is
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`“exacting” and “stringent,” while also noting that the prosecution history often
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`lacks the clarity necessary for claim construction purposes “because the
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`prosecution history represents an ongoing negotiation between the PTO and the
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`applicant, rather than the final product of the negotiation.” Aventis, 675 F.3d at
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`1330; Thorner, 669 F.3d at 1366; Phillips, 414 F.3d at 1329. This at-most
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`ambiguous statement on which Appellants/Petitioners provided no evidence does
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`not meet an “exacting” and “stringent” standard of a clear and unambiguous
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`disavowal.
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`
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`Indeed, the Court must assess disavowal “based on the totality of the
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`prosecution history.” Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 979 (Fed.
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`Cir. 1999) (emphasis added). Here, in addition to the foregoing at-most ambiguous
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`“consistent with” argument, the totality of the prosecution history also includes
`
`explicit and clear statements that the 50 microns was only an example of a
`
`sufficient substrate thinness, statements that were made both two months before
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`(J.A. 10313) and three-four months after (J.A. 10316; J.A. 16038) the “consistent
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`with” statement.
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`Thus, Appellants/Petitioners have not proven the at-best ambiguous
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`“consistent with” argument is a clear and ambiguous disavowal of substrates that
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`are sufficiently thin enough to achieve the claimed substantial flexibility but are
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`thicker than 50 microns, particularly in light of all of the statemen