Case 1:14-cv-01432-LPS Document 238-11 Filed 12/12/19 Page 1 of 42 PageID #: 16226
`
`Exhibit K
`
`

`

`Case 1:14-cv-01432-LPS Document 238-11 Filed 12/12/19 Page 2 of 42 PageID #: 16227
`
`Nos. 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
`__________________________________________________________________
`
`APPELLANTS’ REPLY BRIEF
`__________________________________________________________________
`
`Craig E. Countryman
`Ryan L. Frei
`Oliver J Richards
`Fish & Richardson P.C.
`12390 El Camino Real
`San Diego, CA 92130
`(858) 678-5070
`countryman@fr.com
`rfrei@fr.com
`ojr@fr.com
`
`
`
`Naveen Modi
`Allan M. Soobert
`Phillip W. Citroen
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`(202)551-1700
`naveenmodi@paulhastings.com
`allansoobert@paulhastings.com
`phillipcitroen@paulhastings.com
`
`
`
`Ruffin B. Cordell
`Timothy W. Riffe
`Adam Shartzer
`R. Andrew Schwentker
`Christopher W. Dryer
`Fish & Richardson P.C.
`901 15th St. NW, Ste. 700
`Washington, DC 20005
`(202)783-5070
`cordell@fr.com
`riffe@fr.com
`shartzer@fr.com
`schwentker@fr.com
`Counsel for Micron Technology Inc., and SK hynix, Inc.
`
`June 5, 2018
`
`
`
`Counsel for Samsung Electronics, Co., Ltd
`
`
`

`

`Case 1:14-cv-01432-LPS Document 238-11 Filed 12/12/19 Page 3 of 42 PageID #: 16228
`
`CERTIFICATE OF INTEREST
`
`1.
`
`The full name of every party represented by me is: Micron Technology,
`
`Inc.
`
`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: Micron Semiconductor Products,
`
`Inc. and Micron Consumer Products Group, Inc.
`
`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.
`
`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:
`
`O’Melveny & Myers LLP: John Kappos, Xin-Yi (Vincent) Zhou, and Brian
`
`Cook
`
`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: Elm 3DS Innovations LLC v. Samsung Electronics Co. Ltd.
`
`et al., No. 1:14-cv-01430-LPS (D. Del.), Elm 3DS Innovations LLC v. Micron Technology, Inc.
`
`et al., No. 1:14-cv-01431-LPS (D. Del.), and Elm 3DS Innovations LLC v. SK Hynix Inc.,
`
`et al., No. 1:14-cv-01432-LPS (D. Del.).
`
`Dated: June 5, 2018
`
`
`
`
`
`
`
`
`
`/s/ Craig E. Countryman
`
`
`Craig E. Countryman
`
`
`
`
`
`i
`
`

`

`Case 1:14-cv-01432-LPS Document 238-11 Filed 12/12/19 Page 4 of 42 PageID #: 16229
`
`CERTIFICATE OF INTEREST
`
`1.
`
`2.
`
`The full name of every party represented by me is: SK hynix, Inc.
`
`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.
`
`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: SK Telecom Co.
`
`Ltd.
`
`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 have not entered an appearance in this Court) are:
`
`K&L Gates: Jason A. Engel, Benjamin E. Weed, Howard Chen, and Harold
`
`Davis
`
`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: Elm 3DS Innovations LLC v. Samsung Electronics
`
`Co. Ltd. et al., No. 1:14-cv-01430-LPS (D. Del.), Elm 3DS Innovations LLC v. Micron
`
`Technology, Inc. et al., No. 1:14-cv-01431-LPS (D. Del.), and Elm 3DS Innovations LLC v.
`
`SK Hynix Inc., et al., No. 1:14-cv-01432-LPS (D. Del.).
`
`Dated: June 5, 2018
`
`
`
`/s/ Craig E. Countryman
`Craig E. Countryman
`
`
`
`
`
`
`
`ii
`
`

`

`Case 1:14-cv-01432-LPS Document 238-11 Filed 12/12/19 Page 5 of 42 PageID #: 16230
`
`CERTIFICATE OF INTEREST
`
`1.
`
`The full name of every party represented by me is: Samsung Electronics
`
`Co., Ltd.
`
`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: Samsung Electronics Co., Ltd.
`
`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.
`
`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 have not entered an appearance in this Court) are: Andrew
`
`B. Grossman (no longer with Paul Hastings LLP).
`
`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: Elm 3DS Innovations LLC v. Samsung Electronics
`
`Co. Ltd. et al., No. 1:14-cv-01430-LPS (D. Del.), Elm 3DS Innovations LLC v. Micron
`
`Technology, Inc. et al., No. 1:14-cv-01431-LPS (D. Del.), and Elm 3DS Innovations LLC v.
`
`SK Hynix Inc., et al., No. 1:14-cv-01432-LPS (D. Del.).
`
`Dated: June 5, 2018
`
`
`
`
`
`
`
`
`/s/Naveen Modi
`
`
`Naveen Modi
`
`
`
`
`
`iii
`
`

`

`Case 1:14-cv-01432-LPS Document 238-11 Filed 12/12/19 Page 6 of 42 PageID #: 16231
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION .................................................................................................................. 1 
`
`ARGUMENT ............................................................................................................................ 2 
`
`I. 
`
`The Court Should Reverse the Board’s Non-
`Obviousness Determination ............................................................................ 2 
`
`A. 
`
`The Board Erred in Finding that the Prior Art
`Did Not Disclose the “Substantially Flexible”
`Limitations ............................................................................................... 2 
`
`1. 
`
`2. 
`
`3. 
`
`The Intrinsic Evidence Defines the Term
`“Substantially Flexible” According to the
`Context in Which It Was Used ................................................ 3 
`
`The Claims Must Be Construed According
`to the Intrinsic Evidence, Not General
`Purpose Dictionaries .................................................................. 9 
`
`The Board Erred in Concluding the Prior
`Art Did Not Teach Substantially Flexible
`Substrates and Circuit Layers ................................................. 14 
`
`B. 
`
`The Board Erred in Finding It Was Not Obvious
`to Substitute Leedy’s Low-Tensile Stress
`Dielectric into Bertin and Yu ............................................................. 17 
`
`1. 
`
`2. 
`
`3. 
`
`Skilled Artisans Had Motivation to
`Combine Leedy’s Low-Tensile Stress
`Dielectric with Bertin and Yu ................................................. 18 
`
`Skilled Artisans Had a Reasonable
`Expectation of Success in Combining
`Bertin or Yu with Leedy .......................................................... 23 
`
`The Board Erroneously Required
`Appellants to Prove Combinability of
`Unclaimed Elements ................................................................ 27 
`
`iv
`
`

`

`Case 1:14-cv-01432-LPS Document 238-11 Filed 12/12/19 Page 7 of 42 PageID #: 16232
`
`TABLE OF CONTENTS (continued)
`
`4. 
`
`The Board Reached Its Conclusion Only
`by Ignoring Key Arguments and Evidence .......................... 29 
`
`CONCLUSION ...................................................................................................................... 31 
`
`PAGE
`
`v
`
`

`

`Case 1:14-cv-01432-LPS Document 238-11 Filed 12/12/19 Page 8 of 42 PageID #: 16233
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`
`Aventis Pharma S.A. v. Hospira, Inc.,
`675 F.3d 1324 (Fed. Cir. 2012) ........................................................................................ 11
`
`Edwards Lifesciences LLC v. Cook Inc.,
`582 F.3d 1322 (Fed. Cir. 2009) ........................................................................................ 13
`
`Eon-Net LP v. Flagstar Bancorp,
`653 F.3d 1314 (Fed. Cir. 2011) ........................................................................................ 12
`
`Ericsson Inc. v. Intellectual Ventures I LLC,
`No. 2016-1671, 2018 WL 2407172 (Fed. Cir. May 29, 2018) ..................................... 31
`
`Hill-Rom Servs., Inc. v. Stryker Corp.,
`755 F.3d 1367 (Fed. Cir. 2014) ........................................................................................ 11
`
`Homeland Housewares, LLC v. Whirlpool Corp.,
`865 F.3d 1372 (Fed. Cir. 2017) ........................................................................................ 26
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ........................................................................................ 28
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ..................................................................................................... passim
`
`Linear Tech. Corp. v. Int’l Trade Comm’n,
`566 F.3d 1049 (Fed. Cir. 2009) ........................................................................................ 11
`
`Motor Vehicle Mfrs. Ass’n of U.S., Inc. v. State Farm Mut. Auto. Ins. Co.,
`463 U.S. 29 (1983) ............................................................................................................. 30
`
`Netcraft Corp. v. eBay, Inc.,
`549 F.3d 1394 (Fed. Cir. 2008) ........................................................................................ 13
`
`Nystrom v. Trex Co.,
`424 F.3d 1136 (Fed. Cir. 2005) ........................................................................................ 13
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ........................................................... 9, 10, 12
`
`vi
`
`

`

`Case 1:14-cv-01432-LPS Document 238-11 Filed 12/12/19 Page 9 of 42 PageID #: 16234
`TABLE OF AUTHORITIES (CONTINUED)
`
`
`
`Page(s)
`
`Robinson v. United States,
`305 F.3d 1330 (Fed. Cir. 2002) ........................................................................................ 12
`
`Starhome GmbH v. AT & T Mobility LLC,
`743 F.3d 849 (Fed. Cir. 2014) .......................................................................................... 12
`
`Texas Digital Sys., Inc. v. Telegenix, Inc.,
`308 F.3d 1193 (Fed. Cir. 2002) .......................................................................................... 9
`
`Thorner v. Sony Computer Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) ................................................................................. 10, 11
`
`Toshiba Corp. v. Imation Corp.,
`681 F.3d 1358 (Fed. Cir. 2012) ........................................................................................ 11
`
`Trustees of Columbia Univ. in City of New York v. Symantec Corp.,
`811 F.3d 1359 (Fed. Cir. 2016) ........................................................................................ 10
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996) .......................................................................................... 14
`
`vii
`
`

`

`Case 1:14-cv-01432-LPS Document 238-11 Filed 12/12/19 Page 10 of 42 PageID #: 16235
`
`
`
`INTRODUCTION
`
`The Board’s decision should be set aside because it rests on multiple legal
`
`errors. The Board’s mistake on claim construction was to elevate a generalist
`
`dictionary above Elm’s definitional statements in the specification and Elm’s
`
`representations to the Patent Office. Elm’s brief is silent on the key prosecution
`
`history, where Elm overcame an indefiniteness rejection only by adopting a definition
`
`of “substantially flexible substrate” that is exactly what Appellants propose now. Elm
`
`also ignores that its construction reads out the preferred embodiments by excluding
`
`prior art that showed substrates with the same characteristics as substrates the
`
`specification describes as “substantially flexible.” The Court should thus correct the
`
`Board’s construction, especially in view of the parties’ parallel district court litigations,
`
`which are no longer stayed, and have a claim construction hearing set for March 2019.
`
`The Board’s main legal error on obviousness was to demand levels of
`
`motivation to combine and expected success that are inconsistent with KSR. Elm
`
`tries to recharacterize the obviousness dispute as entirely factual, but Elm misses the
`
`point: the prior art itself expressly provided a motivation, and Elm’s own challenged
`
`patents show the combination was straightforward. That should have been the end of
`
`the analysis. Elm’s purportedly contrary expert testimony is all premised on a view of
`
`the prior art that the Board expressly refused to adopt and thus cannot support the
`
`Board’s judgment.
`
`1
`
`

`

`Case 1:14-cv-01432-LPS Document 238-11 Filed 12/12/19 Page 11 of 42 PageID #: 16236
`
`
`
`ARGUMENT
`
`I.
`
`The Court Should Reverse the Board’s Non-Obviousness Determination
`A.
`
`The Board Erred in Finding that the Prior Art Did Not Disclose
`the “Substantially Flexible” Limitations
`
`The prior art discloses the “substantially flexible” substrate and “substantially
`
`flexible” integrated circuit layer limitations. The intrinsic evidence lays out specific
`
`definitions for these terms—(1) a “substantially flexible” substrate is one that has
`
`been thinned to a thickness of less than 50 µm and then polished or smoothed, and
`
`(2) a “substantially flexible” circuit layer is one that comprises a substantially flexible
`
`substrate where the dielectric material used in processing the substrate has a stress of
`
`5x108 dynes/cm2 tensile or less. E.g. Appx883 at 3:5–8; Appx886 at 9:3–7;
`
`Appx10275; Appx10313; Appx16038. The patentee adopted those definitions to
`
`overcome an indefiniteness rejection and obtain its patents. The Board erred in
`
`disregarding them and finding that Bertin/Poole and Yu—which indisputably disclose
`
`the same thinned, polished substrates that are less than 50 µm thick—did not disclose
`
`a “substantially flexible” substrate.
`
`Elm does not dispute that this Court must reach claim construction to decide
`
`these appeals, as the Board resolved some claims based only on its erroneous
`
`construction. Indeed, the Board’s decision as to claims 60, 67, 70, and 77 of the ’239
`
`patent; claim 1 of the ’542 patent; claim 1 of the ’119 patent; and claim 58 of the ’570
`
`patent rested entirely on the Board’s erroneous construction, so a reversal on claim
`
`2
`
`

`

`Case 1:14-cv-01432-LPS Document 238-11 Filed 12/12/19 Page 12 of 42 PageID #: 16237
`
`
`
`construction merits at least vacatur with respect to these claims. A written opinion on
`
`claim construction will also be critical for the parties’ district court cases, because a
`
`construction consistent with Elm’s representations in the intrinsic evidence would
`
`result in non-infringement judgments for many products.
`
`Rather than meeting appellants’ arguments head-on, Elm instead responds by
`
`ignoring the key intrinsic evidence and relying largely on a generalist dictionary. But
`
`claim construction is not a vocabulary test. The question is not what the claim term
`
`means in the abstract, but what the term means in the context of the specification and
`
`the prosecution history. The context here—express statements made by Elm in the
`
`specification and the prosecution history—cannot be ignored in favor of a generalist
`
`dictionary definition that does little to define the boundaries of the claim.
`
`1.
`
`The Intrinsic Evidence Defines the Term “Substantially
`Flexible” According to the Context in Which It Was Used
`
`Elm takes issue (e.g. at 48) with the fact that Appellants have proposed two
`
`different definitions for “substantially flexible” depending on the context in which the
`
`term is used. These distinct definitions, though, directly follow from statements made
`
`by Elm in the specification of the challenged patents and during the prosecution of
`
`the challenged patents.
`
`During prosecution, Elm told the examiner that a “substantially flexible
`
`substrate” was one that had been thinned to less than 50 µm, and then polished or
`
`smoothed. Specifically, the examiner rejected several claims of the ’499 patent
`
`3
`
`

`

`Case 1:14-cv-01432-LPS Document 238-11 Filed 12/12/19 Page 13 of 42 PageID #: 16238
`
`
`
`because the “substantially flexible” limitation did not “clearly set for[th] the metes and
`
`bounds of the patent protection desired.” Appx10260. In response, Elm did not
`
`point the examiner to a dictionary but instead relied on the specification, which it said
`
`“clearly explained” the meaning of the term and showed that “[a] semiconductor
`
`substrate is caused to be substantially flexible by thinning it to 50 microns or less and
`
`polishing or smoothing the thinned semiconductor to relieve stress.” Appx10275; see
`
`also Appx10293. In other words, the examiner asked Elm to explain what it meant by
`
`a “substantially flexible substrate,” and Elm provided a definition. Having set forth
`
`that definition in order to obtain the patent in the first instance, Elm cannot repudiate
`
`that definition which sets the boundaries of the claims. If thinning the substrate were
`
`just an example of what made something “substantially flexible,” then the boundaries
`
`of the claim would still not have been defined with reasonable certainty, and Elm
`
`would not have overcome the indefiniteness rejection. Elm’s brief is silent on this
`
`dispositive prosecution history.
`
`Elm’s statements during prosecution mirror the specification’s consistent
`
`description of a “substantially flexible substrate.” As Elm told the ’499 examiner, the
`
`specification gives clear directions as to how to make a substrate “substantially
`
`flexible”—“[g]rind the backside or exposed surface of the second circuit substrate to a
`
`thickness of less than 50 µm and then polish or smooth the surface. The thinned
`
`substrate is now a substantially flexible substrate.” Appx886, at 9:3–6. Moreover, the
`
`specification consistently equates “substantial flexibility” of the substrate with
`4
`
`

`

`Case 1:14-cv-01432-LPS Document 238-11 Filed 12/12/19 Page 14 of 42 PageID #: 16239
`
`
`
`thinning and subsequently polishing or smoothing. See Appx885, at 8:34–35; 8:45;
`
`Appx 883, at 3:5–8; id. at 4:20–24.
`
`Elm now claims (at 18) that “[t]hin and flexible are not the same thing” and
`
`tries to blur the issue by treating the terms “substantially flexible substrate” and
`
`“substantially flexible circuit layer” as interchangeable. No amount of rhetoric can
`
`conflate these issues, which must be considered separately. For the term
`
`“substantially flexible substrate,” Elm’s patent and prosecution statements do equate
`
`thinness and flexibility in the context of these claims, as shown above. For the term
`
`“substantially flexible circuit layer,” the situation is different. Elm explained during
`
`prosecution that, for this latter term, “[t]wo features are required to achieve
`
`substantial flexibility”: (1) the substrate that makes up the base of the circuit layer
`
`must be “50 microns or less” in thickness (i.e., the substrate must be substantially
`
`flexible); and (2) “the dielectric material used in processing semiconductor material
`
`must be sufficiently low stress.” Appx16038. To avoid any doubt, Elm further stated
`
`that using “a substantially flexible semiconductor substrate is a necessary but not
`
`sufficient condition for a substantially flexible circuit layer.” Appx10313. Appellants
`
`have thus proposed a construction for the “substantially flexible circuit layer” terms
`
`that includes both requirements. However, contrary to Elm’s suggestion, those
`
`statements do not change the meaning of the claims that instead require a
`
`“substantially flexible substrate.” Elm had already told the ’499 examiner that this
`
`5
`
`

`

`Case 1:14-cv-01432-LPS Document 238-11 Filed 12/12/19 Page 15 of 42 PageID #: 16240
`
`
`
`term requires only a thinned, polished or smoothed substrate less than 50 µm thick.
`
`Appx10275.
`
`Elm is wrong to oppose defining “substantially flexible” according to the
`
`context in which that term is used. After all, as Elm has repeatedly argued, whether
`
`something is “substantially flexible” depends on what that thing is. E.g., Red Br. at
`
`49, (“a thicker piece of rubber is more flexible than a thinner potato chip”). As Elm
`
`itself explained during prosecution, a substrate is “substantially flexible” when it is
`
`thinned to a particular thickness and then subsequently polished or smoothed.
`
`However, after that substrate is processed further and is turned into an integrated
`
`circuit layer, thinness alone does not make the resultant integrated circuit substantially
`
`flexible—rather, to maintain substantial flexibility, the substrate has to be processed
`
`with a low-tensile stress dielectric. Appellants’ constructions appropriately reflect that
`
`distinction.
`
`Elm repeatedly suggests (at 32, 48) that Appellants’ proposed constructions
`
`have nothing to do with flexibility or that Appellants’ constructions are contrary to
`
`dictionary definitions. Not so. The explanations Elm provided during prosecution
`
`are consistent with the dictionary definition of flexible. They simply provide more
`
`detail and clarity about what flexibility means in the context of these claims. Indeed,
`
`at other points in its brief, Elm acknowledges that thinning a substrate to less than 50
`
`µm and subsequently polishing it is at least one way of achieving substantial flexibility.
`
`See Resp. Br. at 52 (acknowledging that Appellants’ construction of “substantially
`6
`
`

`

`Case 1:14-cv-01432-LPS Document 238-11 Filed 12/12/19 Page 16 of 42 PageID #: 16241
`
`
`
`flexible” substrate is “an example of how a ‘substantially flexible’ substrate may be
`
`achieved”); id., 53 (acknowledging that the statements from the prosecution history at
`
`least describe “a way of achieving substantial flexibility”). Elm maintains that there
`
`are other ways of achieving substantial flexibility. Yet no other ways are described in
`
`the intrinsic record, and Elm does not point to any now.
`
`Elm’s reliance (at 46, 54) on prosecution history that distinguished between
`
`“flexible” and “rigid” substrates also does not support its position. See Appx16039;
`
`Appx15397. That Elm argued that stacked integrated circuits formed on a “rigid
`
`carrier” are outside the claims does not detract from the definitions of a “substantially
`
`flexible” substrate and circuit layer that it supplied elsewhere during prosecution and
`
`in the specification. Indeed, the challenged patents themselves are clear to distinguish
`
`between rigid carriers—which are thicker—and “substantially flexible” substrates—
`
`which are stacked on top of rigid carriers and formed using the thinning and polishing
`
`or smoothing process described in the specification and the file history. See, e.g.,
`
`Appx883, at 4:17–24 (“The controller circuit is of nominal circuit thickness (typically
`
`0.5 mm or greater), but each memory array circuit layer is a thinned and
`
`substantially flexible circuit with net low stress, less than 50 μm and typically less
`
`than 10 μm in thickness.” (emphasis added)). What is more, Elm ultimately conceded
`
`during prosecution that a sufficiently thinned and polished or smoothed substrate
`
`formed on a rigid carrier is substantially flexible, and that the substantially flexible
`
`substrate may be further processed to form a substantially flexible circuit layer by
`7
`
`

`

`Case 1:14-cv-01432-LPS Document 238-11 Filed 12/12/19 Page 17 of 42 PageID #: 16242
`
`
`
`including dielectric material that is sufficiently low tensile stress. Appx10313–10314.
`
`Appellants’ construction does not expand the claims to cover rigid structures. It
`
`simply construes them to have the precise meaning that Elm itself supplied during
`
`prosecution.
`
`Finally, Elm is wrong to take out of context (at 48–49) testimony from
`
`Appellants’ expert. The expert was simply explaining why the intrinsic evidence is the
`
`best source for determining what the term “substantially flexible” means in each
`
`claim. As the expert explained, “[f]lexible is a term of degree, i.e. there is no absolute
`
`measurement when a structure is considered ‘flexible’ or ‘substantially flexible’” and
`
`“two persons of ordinary skill may have differing subjective opinions on whether the
`
`same structure is ‘substantially flexible.’” Appx2191. This testimony is entirely
`
`consistent with the Examiner’s view during prosecution that, absent a definition, the
`
`term “substantially flexible” is indefinite. The expert then explained that “substantial
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`flexibility” also may have differing meanings depending on the structure being
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`described—e.g., a substrate vs. an integrated circuit. Appx2191–2192. Contrary to
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`Elm’s assertion, this testimony means that tying “substantial flexibility” to its true
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`meaning in the intrinsic evidence is not only appropriate but also required. Indeed,
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`Elm overcame the indefiniteness rejection and obtained its ’499 patent only after it
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`defined this term based on language in the specification. Appx10275.
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`2.
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`The Claims Must Be Construed According to the Intrinsic
`Evidence, Not General Purpose Dictionaries
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`This Court sitting en banc in Phillips rejected the dictionary-driven approach Elm
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`now urges this Court to follow. Elm asserts (at 41–43) that the definition from a
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`general-purpose dictionary is the “ordinary meaning” that should control unless there
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`is a clear intent to redefine the term or a clear disavowal of the dictionary definition.
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`This approach mirrors the approach taken by some panels of this Court prior to the
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`Phillips decision. See, e.g., Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1204
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`(Fed. Cir. 2002). But Phillips rejected this approach, explaining that it “placed too
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`much reliance on extrinsic sources such as dictionaries, treatises, and encyclopedias
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`and too little on intrinsic sources, in particular the specification and prosecution
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`history.” Phillips v. AWH Corp., 415 F.3d 1303, 1320 (Fed. Cir. 2005) (en banc).
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`Both Elm and the Board overlook the fact that a term’s “plain and ordinary”
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`meaning is not to be determined in the abstract by relying on extrinsic sources. It
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`must be determined in the context of the intrinsic evidence. The specification and
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`prosecution history must be more than just a “check on the dictionary meaning of a
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`claim term if the specification requires the court to conclude that fewer than all the
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`dictionary definitions apply, or if the specification contains a sufficiently specific
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`alternative definition or disavowal.” Phillips, 415 F.3d at 1320; see also id. at 1321
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`(“Properly viewed, the ‘ordinary meaning’ of a claim term is its meaning to the
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`ordinary artisan after reading the entire patent.”). “[H]eavy reliance on the dictionary
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`divorced from the intrinsic evidence risks transforming the meaning of the claim term
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`to the artisan into the meaning of the term in the abstract, out of its particular
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`context, which is the specification.” Id. at 1321; see also Trustees of Columbia Univ. in City
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`of New York v. Symantec Corp., 811 F.3d 1359, 1363 (Fed. Cir. 2016) (“The only
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`meaning that matters in claim construction is the meaning in the context of the
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`patent.”).
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`Here, the intrinsic evidence dictates that Appellants’ proposed construction is
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`the ordinary meaning of the terms “substantially flexible substrate” and “substantially
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`flexible integrated circuit layer” in the context of these patents. The specification
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`makes clear that all a skilled artisan needs to do to create a substantially flexible
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`substrate is to grind it to less than 50 µm, and then polish or smooth the surface.
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`Appx883–886, at 9:3–6, 8:34–35; 8:45, 3:5–8, 4:20–24. Elm reaffirmed that position
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`during prosecution, while further defining a “substantially flexible integrated circuit
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`layer” as well. See Appx16038; Appx10313. Those statements all amount to
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`definitions of the term and a disavowal of any other meaning. But they are also
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`evidence of the term’s ordinary meaning in these claims. And they are much better
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`evidence of that ordinary meaning than Elm’s generalist dictionary definition.
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`Elm cites several cases following Thorner v. Sony Computer Entm’t Am. LLC, 669
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`F.3d 1362 (Fed. Cir. 2012), as supposedly supporting its approach. These cases do
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`not stand for the proposition that a general-purpose dictionary definition should
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`control unless there is a clear re-definition or clear disavowal. Thorner did not even
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`turn to dictionary definitions, but instead used the specification to determine the plain
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`and ordinary meaning. See, e.g., Thorner, 669 F.3d at 1367–69 (construing “attached” to
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`include external or internal attachment because the specification used a different
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`term (“embedded”) to refer to only internal attachments). The same is true for the
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`other post-Phillips cases cited by Elm. See, e.g., Hill-Rom Servs., Inc. v. Stryker Corp., 755
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`F.3d 1367, 1379 (Fed. Cir. 2014) (looking to the language of the claims in the context
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`of the specification to determine “plain and ordinary” meaning); Toshiba Corp. v.
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`Imation Corp., 681 F.3d 1358, 1368 (Fed. Cir. 2012) (same); Aventis Pharma S.A. v.
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`Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012) (looking to the specification, not
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`the dictionary, to determine plain and ordinary meaning); Linear Tech. Corp. v. Int’l
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`Trade Comm’n, 566 F.3d 1049, 1056 (Fed. Cir. 2009) (same).
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`Moreover, unlike in the cases cited by Elm, the intrinsic evidence here does not
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`merely disclose an embodiment or example—it defines the relevant terms and ties
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`them to the invention as a whole. For example, the challenged patents’ specifications
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`explain that “[t]hinning the memory circuit to less than 50 µm in thickness forming a
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`substantially flexible substrate” is a “feature” of the invention—not merely one
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`embodiment. See Appx882–883, at 2:66–67; 3:5–6. Similarly, during prosecution,
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`Elm told the examiner that both a substantially flexible substrate and a low-tensile
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`stress dielectric are “required” to make a “substantially flexible” circuit layer.
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`Appx16038. These are definitional statements that must be applied, even under Elm’s
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`cited cases. See Linear, 566 F.3d at 1054 (“Because the Commission construed this
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`limitation according to the definition in the specification, the Commission’s
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`construction . . . is correct.”)
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`It is no answer for Elm to defend the Board by pointing (at 43–44) to passages
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`where the Board included some quotations from Phillips. The dictionary-driven
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`analysis that Elm and the Board have undertaken conflicts with Phillips, regardless of
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`whether they have given lip service to applying it. See Robinson v. United States, 305
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`F.3d 1330, 1332 (Fed. Cir. 2002) (discounting the fact that the tribunal below recited
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`the correct standard because “it applied a different and erroneous one”). Nor is it
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`sufficient for El