Paper No.
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTELLECTUAL VENTURES MANAGEMENT, LLC
`Petitioner
`
`V.
`
`Patent of XILINX, INC.
`Patent Owner
`
`Case IPR2012-00018
`
`Patent 7,566,960
`Title: INTERPOSING STRUCTURE
`
`PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION TO
`
`PATENT OWNER’S SECOND SUBSTITUTE MOTION TO AMEND
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTELLECTUAL VENTURES MANAGEMENT, LLC
`Petitioner
`
`V.
`
`Patent of XILINX, INC.
`Patent Owner
`
`Case IPR2012-00018
`
`Patent 7,566,960
`Title: INTERPOSING STRUCTURE
`
`PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION TO
`
`PATENT OWNER’S SECOND SUBSTITUTE MOTION TO AMEND
`
`
`
`Patent Owner’s Reply to Opposition
`IPR2012-00018
`
`TABLE OF CONTENTS
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`Introduction ............................................................................................................... l
`
`I.
`
`The Second Substitute Motion Complies with the Board’s Order ................... 1
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`A. Added Features Were Removed to Comply with Idle Free ...................... l
`
`B. Claims 14 & 22 Were Reworded to Comply with Idle Free .................... l
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`C.
`
`Elastomer was Moved to Claims 14 & 22 to Comply with Idle Free ....... 2
`
`II.
`
`Substitute Claims 14-20 are Sufficiently Clear to be Valid ............................. 2
`
`111. Alexander Has No Bearing on Patentability (Grounds 10-13) ......................... 3
`
`A.
`
`The Second Substitute Motion Complies With Idle Free ......................... 3
`
`B. Alexander Does Not Preelude Patentability under 35 U.S.C. § 103 ......... 4
`
`IV. The Substitute Claims are Patentable over Chakravorty ”362, Siniaguine,
`Pasco, and Bellaar and/or Patel and/or Ma (Grounds 14-17) ........................... 4
`
`ii
`
`
`
`Patent Owner’s Reply to Opposition
`IPR2012~00018
`
`INTRODUCTION
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`Patent Owner Xilinx, Inc. (“Xilinx”) submits this reply to Petitioner’s
`
`Opposition to Patent Owner’s Second Substitute Motion to Amend (Paper 29).
`
`I.
`
`The Second Substitute Motion Complies with the Board’s Order
`
`A.
`
`Added Features Were Removed to Comply with Idle Free
`
`Idle Free states that “[a] desire to obtain a new set of claims having a
`
`hierarchy of different scope typically would not constitute a sufficient special
`
`circumstance” to permit a Patent Owner to present amendments to dependent
`
`claims. P. 6. Patent Owner’s Second Substitute Motion to Amend (“Second
`
`Substitute Motion”; Paper 26) removed dependent claim amendments that would
`
`have provided a hierarchy of different scope originally proposed in Patent Owner’s
`
`Substitute Motion to Amend (“First Substitute Motion”; Paper 22). Therefore, the
`
`changes comply with the Board’s Order (Paper 24).
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`B.
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`Claims 14 & 22 Were Rewarded to Comply with Idle Free
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`Patent Owner’s First Motion to Amend (Paper 19) included amendments
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`that both added and removed language from the claims. The First Substitute
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`Motion (Paper 22) included those same amendments, but also included a
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`processing error that removed the strike-through font relative to the First Motion to
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`Amend. See Paper 22; XLNX-2009. Idle Free states that “[a] patent owner may
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`not seek to broaden a challenged claim in any respect” and that “a substitute claim
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`
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`Patent Owner’s Reply to Opposition
`IPR2012-00018
`
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`may not enlarge the scope of the challenged claim it replaces by eliminating any
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`feature.” ldle Free, P. 5. To comply with Idle Free, the Second Substitute Motion
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`reworded claims 14 and 22 in a manner that avoided elimination of any feature.
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`Therefore, the changes comply with the Board’s Order.
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`C.
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`Elastomer was Moved to Claims 14 & 22 to Comply with Idle Free
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`Idle Free states, “if the patent owner also proposes to add further features
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`into proposed [dependent] substitute claims 5 and 6, the patent owner should
`
`provide meaningful reasons to establish a special circumstance for adding these
`
`features.” P. 9. As indicated above, a desire for a hierarchy of different claim
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`scope typically is not a special circumstance. See id. at 6. The elastomer feature
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`was introduced in substitute claims 15 and 23 in the First Substitute Motion. Since
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`these were dependent claims, and in order to comply with Idle Free, Patent Owner
`
`moved the feature to the proposed independent claims in the Second Substitute
`
`Motion. Therefore, the changes comply with the Board’s Order.
`
`11.
`
`Substitute Claims 14-20 are Sufficiently Clear to be Valid
`
`Claim 14 recites “an interposing structure” and later refers back to it as “the
`
`interposer” consistent with issued claim 1. Since the use of “the interposer” to
`
`refer to “the interposing structure” was not a ground of unpatentability involved in
`
`the trial, it could not be corrected in the substitute claim. See 37 C.F.R. § 42.121.
`
`The Patent Office did not address the limitation during prosecution and therefore
`
`
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`Patent Owner’s Reply to Opposition
`IPR2012-00018
`
`appears to have had no difficulty understanding that the “interposer” refers back to
`
`the “interposing structure.” See XLNX-ZOO]. Further, Dr. Niekirk understood it
`
`to refer back to the “interposing structure.” See IVM-1013, p. 37, ll. 14-21.
`
`III. Alexander Has No Bearing on Patentability (Grounds 10-13)
`
`A.
`
`The Second Substitute Motion Complies With Idle Free
`
`The petitioner suggests that Patent Owner failed to comply with Idle Free by
`
`not including a representation of “the specific technical disclosure” of Alexander
`
`(IVM-1016). Idle Free indicates that Patent Owner should provide reasons why
`
`“the proposed substitute claim is patentable over the prior art of record, and over
`
`prior art not of record but known to the patent owner.” Idle Free, p. 7.
`
`Patent Owner complied with Idle Free when it identified and discussed
`
`Chakravorty ”362, Siniaguine, and Ma as the most relevant, or closest prior art.
`
`Alexander does not anticipate the substitute claims under 35 U.S.C. § 102 because
`
`it does not teach at least “an array of solder balls disposed on an outside surface of
`
`the integrated circuit package” and “an interposing structure disposed inside the
`
`integrated circuit package.” Also, this Reply makes clear that Alexander cannot be
`
`used to preclude patenting under 35 U.S.C. § 103. See infra, Section III.B.
`
`Therefore, Alexander has no bearing on whether the Patent Holder is entitled to
`
`entry and allowability of the substitute claims. As such, the Patent Holder
`
`complied with Idle Free when it identified and discussed Chakravorty ’362,
`
`
`
`Patent Owner’s Reply to Opposition
`IPR2012—00018
`
`Siniaguine, and Ma as the closest prior art.
`
`B.
`
`Alexander Does Not Preclude Patentability under 35 U.S.C. § 103
`
`Alexander cannot preclude patentability under 35 U.S.C. § 103 because, to
`
`the extent it was developed by another, it qualifies as prior art only under 35
`
`U.S.C. § 102(e) and was owned by the same person as the claimed invention at the
`
`time the claimed invention was made. See 35 U.S.C. § 103(c) (1); XLNX-2012 &
`
`IVM—1019. Therefore, the proposed rejections based on Alexander are moot.
`
`IV.
`
`The Substitute Claims are Patentable over Chakravorty ’362,
`
`Siniaguine, Pasco, and Bellaar and/or Patel and/or Ma (Grounds 14—17)
`
`The combination of Pasco and Bellaar fails to teach “a plurality of tiled
`
`interposing structures being held together using an elastomer,” as claimed. Bellaar
`
`teaches rigid and flexible interposers (21, 27) with different coefficients of thermal
`
`expansion (“CTEs”) arranged in a stacked fashion. An elastomeric compliant layer
`
`36 surrounds leads extending between the interposers, “controls the separation”
`
`between the stacked components, and compensates for the CTE differences.
`
`IVM—IOIS, 3:28-33; 524—5 & 18-20; 9:46-50.
`
`Pasco teaches a segmented interposer 48 including “plural smaller area
`
`interposers 20” that connect to a substrate 44 and a PCB 50 via solder balls 46 and
`
`that have a different CTE than the substrate 44 and the PCB 50. IVM-1017, 3:13—
`
`24; 4:9-14; Fig. 4. The combined teachings of Bellaar and Pasco result in Bellaar’s
`
`compliant layer surrounding Pasco’s solder balls 46 and controlling spacing
`
`4
`
`
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`Patent Owner’s Reply to Opposition
`
`IPR2012-00018
`
`between the stacked substrate 44 and the interposers 20 and between the stacked
`
`PCB 50 and the interposers 20 to compensate for differences in CTE. Pasco’s Fig.
`
`4 is modified below to include the compliant layer of Bellaar disposed about the
`
`solder balls to control spacing and compensate for CTE as taught in Bellaar.
`47.
`42
`42
`42
`
`
`
`
`Compliant
`Interposers
`layers 36 of
`
`
`
`BeHaar
`
`20 of Pasco
`
`
`
`The combined teachings of Pasco and Bellaar do not suggest tiled
`
`interposers 20 “being held together using an elastomer,” as claimed. “Being held
`
`together” means the tiles must be connected to each other by the elastomer. The
`
`’960 patent makes this clear when it describes its tiles “combined together to form
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`a single interposer device prior to mounting.
`
`an elastomer is used to hold the
`
`tiles together, thus forming the single interposer device.” IVM-lOOl, 1014-7.
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`Bellaar also teaches against inadvertent overflow of elastomer when it
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`describes disposing the elastomer “on a portion, but not all” of the interposer
`
`surface. The elastomer, therefore, enables each interposer 20 to independently
`
`support the substrate and PCB, rather than hold the interposers 20 together. See
`
`IVM-1018, 5:14-18. As such, the substitute claims are properly patentable.
`
`Dated: September 19, 2013
`
`Respectfully submitted,
`/David L. McCombs/
`David L. McCombs
`
`Registration No. 32,271
`HAYNES AND BOONE, LLP
`
`
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`Patent Owner’s Reply to Opposition
`lPR2012—00018
`
`IPR2012-00018
`
`Intellectual Ventures Management, LLC v. Xilinx, Inc.
`
`Xilinx’s Exhibit List
`
`September 19, 2013
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`XLNX—2001
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`File History of US. 7566960
`
`XLNX—2002
`
`Tom Ewing & Robin Feldman, “The Giants Among Us,” 2012
`
`STAN. TECH. L. REV. 1.
`
`XLNX—2003
`
`Docket from Xilz‘nx, Inc. v. Invention Investment Fund I LP, Case
`
`No. 5-1 l-cv-0067l (N.D. Cal.).
`
`XLNX-2004
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`Declaration of Bradford J. Black, Xilinx, Inc. v. Invention
`
`Investment Fund I LP, Case No. 5-1 l-CV-0067l , Dkt. 45-2 (N.D.
`
`Cal. Apr. 14, 2011).
`
`XLNX-2005
`
`Defendant’s [IVM’s] Certificate of Interested Entities or Persons
`
`Pursuant to Civil Local Rule 3-16 and F.R.C.P. 7.1, Case No. 5-
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`ll-cv-00671, Dkt. 60 (ND. Cal. May 16, 2011).
`
`XLNX-2006
`
`Order of Recusal, Xz‘linx, Inc. v. Invention Investment Fund 1 LP,
`
`Case No. 5-1 l—cv-00671, Dkt. 93 (ND. Cal. Mar. 14, 2012).
`
`XLNX-2007
`
`Declaration of Dean Niekirk under 37 CPR. § 1.68 (In Support
`
`of Patent Owner’s Response)
`
`XLNX-2008
`
`Declaration of Dean Niekirk under 37 CPR. § 1.68 (In Support
`
`of Motion to Amend)
`
`XLNX-2009
`
`Listing of Proposed Claim Amendments
`
`XLNX-2010
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`Curriculum Vitae of Dean Niekirk
`
`
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`Patent Owner’s Reply to Opposition
`IPR2012-00018
`
`XLNX-ZOII
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`Webster’s II New College Dictionary, Third Edition, 2005, page
`
`359.
`
`XLNX—ZO] 2
`
`US. Patent and Trademark Office Assignment Record for US
`
`Patent No. 7,755,960 to Conn.
`
`
`
`Patent Owner’s Reply to Opposition
`IPR2012-00018
`
`INTELLECTUAL VENTURES MANAGEMENT, LLC
`Petitioner
`v.
`
`XILINX, INC.
`Patent Owner
`
`Patent No. 7,566,960
`Issue Date: July 28, 2009
`Title: INTERPOSING STRUCTURE
`
`Inter Partes Review No. IPR2012-00018
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that service was made on Petitioner’s
`
`counsel of record as detailed below.
`
`Date ofservice September 19, 2013
`
`Manner ofservice Electronic Mail (msgecthskgfcom; rsteme@skgf.com)
`
`Documents served Patent Owner’s Reply to Petitioner’s Opposition to Patent
`Owner’s Second Substitute Motion to Amend and Exhibit
`
`XLNX-2012
`
`Persons Served Sterne, Kessler, Goldstein & Fox P.L.L.C.
`
`1100 New York Avenue, NW.
`Washington, DC 20005
`
`/David L. McCombs/
`
`David L. McCombs
`
`Registration No. 32,271
`
`
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