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 IPR2012-00023
`
`Patent 7,994,609
`
`Issue Date: August 9, 2011
`Title: SHIELDING FOR INTEGRATED CAPACITORS
`
`Before Sally C. Medley, Karl D. Easthom, and Justin T. Arbes
`Administrative Patent Judges
`
`PATENT OWNER’S REPLY TO
`
`PETITIONER’S OPPOSITION TO
`
`PATENT OWNER’S 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 IPR2012-00023
`
`Patent 7,994,609
`
`Issue Date: August 9, 2011
`Title: SHIELDING FOR INTEGRATED CAPACITORS
`
`Before Sally C. Medley, Karl D. Easthom, and Justin T. Arbes
`Administrative Patent Judges
`
`PATENT OWNER’S REPLY TO
`
`PETITIONER’S OPPOSITION TO
`
`PATENT OWNER’S MOTION TO AMEND
`
`
`
`Patent Owner’s Reply to Opposition
`IPR2012-00023
`
`TABLE OF CONTENTS
`
`1.
`
`Statement of Relief Requested ..................................................................... .. 1
`
`II. Xilinx’s First Motion to Amend is Procedurally Correct ......................... .. 1
`
`III. Substitute Claims 20-34 Are Patentable .................................................... .. 2
`
`A.
`
`B.
`
`C.
`
`Proposed Claims 20 and 22-29 are patentable ....................................... .. 2
`
`Proposed Claim 21 is patentable ............................................................. .. 4
`
`Proposed Claims 30-34 are patentable ................................................... .. 5
`
`IV. Conclusion .................................................................................................... .. 6
`
`Certificate of Service ............................................................................................... .. 7
`
`TABLE OF AUTHORITIES
`
`Cases
`
`CFMT, Inc. v. Yieldup Intern. Corp ........................................................................ .. 5
`
`Idle Free Systems, Inc. v. Bergstrom, Inc., ............................................................. .. 1
`
`Statutes
`
`35 U.S.C.§311 ....................................................................................................... ..5
`
`Rules
`
`37 C.F.R. § 42.23 .................................................................................................... .. 1
`
`37 CFR 42.121(a)(2)(ii). ......................................................................................... .. 2
`
`
`
`1.
`
`Statement of Relief Requested
`
`Patent Owner Xilinx, Inc. (“Xilinx”) filed a Response (Paper No. 15) and a
`
`Motion To Amend (Paper No. 17) on May 7, 2013. On August 23, 2013, the
`
`Petitioner filed a Reply (Paper No. 22, “Reply”) and an Opposition to the Motion
`
`to Amend (Paper No. 21, “Opposition”) . Xilinx provides this paper as a reply to
`
`Petitioner’s Opposition under 37 C.F.R. § 42.23. Xilinx’s Motion to Amend was
`
`and is procedurally correct, and presents the claims in a patentable form.
`
`II.
`
`Xilinx’s First Motion to Amend is Procedurally Correct
`
`Petitioner’s first argument is to assert that Xilinx did not affirmatively state
`
`that substitute claims 20 and 21 are patentably distinct over “prior art known to the
`
`patent owner.” Opposition at 1, citing Idle Free Systems, Inc. v. Bergstrom, Inc.,
`
`IPR20l2-00027, Paper 26 at p. 7. First of all, Xilinx notes that substitute claims 20
`
`and 21 include each and every element of issued independent claim 1, as well as
`
`elements from dependent claims 8 and 2, respectively. So, unlike the situation in
`
`Idle Free, substitute claims 20 and 21 do not present any new claim “features” that
`
`were not previously being considered in the inter partes review, only adding
`
`features from dependent claims into base claims. Id.
`
`Petitioner’s second argument is directed to the support for each proposed
`
`substitute claim. Opposition at 2. Xilinx’s Motion to Amend identified original
`
`claims (which are part of the specification), along with paragraphs and drawings
`
`
`
`Patent Owner’s Reply to Opposition
`IPR20l2-00023
`
`from the application as originally filed, to support each of the proposed substitute
`
`claims as a whole.
`
`In its Opposition, the Petitioner did not identify any claim
`
`elements that were missing from the identified support.
`
`Petitioner’s third argument is that the claims fail to narrow the scope of the
`
`claims that they replace. To be clear, the rule is that a motion to amend should be
`
`denied when “the amendment seeks to enlarge the scope of the claims of the patent
`
`or introduce new subject matter.” 37 CFR 42.l2l(a)(2)(ii). Substitute claims 20
`
`and 21 do not enlarge the scope of the claims or introduce new subject matter.
`
`Substitute claims 20 and 21 each include every word and limitation of claim 1.
`
`Substitute claim 20 also includes limitations previously recited in dependent claim
`
`8; substitute claim 21 also includes limitations previously recited in dependent
`
`claim 2. Thus, the substitute claims do not “enlarge the scope of the claims” of the
`
`‘609 patent, per the former part of the rule. (As for the latter part of the rule, it is
`
`unquestioned that substitute claims 20 and 21 do not introduce new subject matter.)
`
`III.
`
`Substitute Claims 20-34 Are Patentable
`
`A.
`
`Proposed Claims 20 and 22-29 are patentable
`
`As discussed in the Patent Owner’s Motion to Amend, substitute claim 20
`
`includes a layer of interleaved “conductive elements” that are connected to the first
`
`and second “capacitor nodes,” and another layer of “conductive elements” that are
`
`connected only to the “first node” — thereby making the capacitor unbalanced.
`
`
`
`Patent Owner’s Reply to Opposition
`IPR2012-00023
`
`The Petitioner presents a new argument in its Opposition, stating that “Paul teaches
`
`both ‘balanced’ and ‘unbalanced’ capacitors.” Petitioner’s Reply at 10, cited at
`
`Opposition at 4. Specifically, the Petitioner refers to FIG. 8 of Paul, which shows
`
`a shield portion on the left side (as shown in the figure) of the core capacitor. The
`
`Petitioner then argues that the existence of the shield makes the capacitor of FIG. 8
`
`unbalanced (the shield is on the left side of the figure).
`
`The capacitor in FIG. 8 of Paul is balanced. Paul explains that a shield that
`
`is connected to one of the nodes A or B only provides a minimal amount of “shunt
`
`capacitance,” and “does not affect Value of the capacitance between nodes A and
`
`B.” Paul at 3:50-56. 1 That is, any “shunt capacitance” that is provided by the
`
`shields is “very small,” as compared to the core capacitance.
`
`Ia’. Furthermore,
`
`Xilinx’s counsel, Dr. Blanchard, has repeatedly asserted that FIG. 8 of Paul is
`
`balanced. Blanchard Decl. at 1126; IVM1014 92:14-93:16.
`
`Thus, the capacitor of
`
`FIG. 8 of Paul is balanced.
`
`Substitute claims 22-29 are patentable over the prior art for the reasons
`
`discussed with reference to substitute claim 20, upon which claims 22-29 depend.
`
`This section of Paul is discussing FIG. 4, which like FIG. 8, has shields
`1
`around the capacitor core. Also in FIG. 4, like FIG. 8, the shields are connected to
`the capacitor nodes A and B.
`
`_3_
`
`
`
`Patent Owner’s Reply to Opposition
`IPR20l2-00023
`
`B.
`
`Proposed Claim 21 is patentable
`
`The Petitioner argues that claim 21 is unpatentable by referring to the
`
`arguments made in its Reply. Opposition at 6. To be clear, claim 21 separately
`
`refers to (l) a “core capacitor portion,” (2) a “shield capacitor portion” connected
`
`to a capacitor node, and (3) a “reference shield” connected to a reference node
`
`(e.g., VDD or ground). Claim 21 also recites “the shield capacitor portion [(2)]
`
`being disposed between the reference shield [(3)] and the core capacitor
`
`portion[(l)]” and the shield capacitor portion including a plate “formed in the poly
`
`layer.” This portion of claim 21 is graphically represented below:
`
`shield capacitor portion
`
`<2)» in the P013’ layer
`
`reference shield
`
`(3)
`
`Graphical representation of claim 21
`
`As stated by the Petitioner, Anthony teaches that the reference shield (3) can
`
`be made of poly, based on which the Petitioner alleges that it would be obvious to
`
`make the shield capacitor portion (2) of poly. Reply at 4. First of all, no prior art
`
`reference teaches making the shield capacitor portion (2) of poly. Secondly, if one
`
`were to convert Anthony’s poly reference shield to become the shield capacitor
`
`portion, there will no longer be any reference shield. That is, Anthony’s shield
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`_4_
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`
`
`Patent Owner’s Reply to Opposition
`IPR2012—O0023
`
`layer 36 is either a shield capacitor node (2) connected to a node of the capacitor,
`
`or a reference shield (3) connected to a reference Voltage, but it cannot be both.
`
`Thus, even in combination, the prior art does not teach every element of the claim.2
`
`C.
`
`Proposed Claims 30-34 are patentable
`
`The Petitioner’s arguments for substitute claim 30 being obvious over
`
`Anthony combined with Paul or Bi suffers from the same deficiencies discussed
`
`above with reference to claim 21. The Petitioner mentions a “double poly”
`
`process, but has not presented any prior art that describes such a process, or
`
`mentions the characteristics and/or limitations of such a process. Since inter partes
`
`reviews are limited to rejections based on “prior art consisting of patents or printed
`
`publications,” reliance on expert testimony to meet a claim limitation is beyond the
`
`scope of the present proceeding.
`
`35 U.S.C. § 311(b).
`
`Substitute claims 31-34 are patentable over the prior art for the reasons
`
`discussed with reference to substitute claim 30, upon which claims 31-34 depend.
`
`“[O]bviousness requires a suggestion of all limitations in a claim.” CFMT,
`2
`Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (citing In re
`Royka, 490 F.2d 981, 985 (CCPA 1974)).
`
`_5_
`
`
`
`Patent Owner’s Reply to Opposition
`IPR2012—00023
`
`IV. Conclusion
`
`For the reasons discussed above, Xilinx requests that the Motion to Amend
`
`be granted, and that substitute claims 20-34 be found valid over the prior art.
`
`Respectfully submitted,
`
`David M. O’Del1
`
`Registration No. 42,044
`
`HAYNES AND BOONE, LLP
`
`Customer No. 27683
`
`Telephone: 972/739-8635
`Facsimile: 214/200-0808
`
`Attorney Docket No.: 42299.45
`
`Dated: September 12, 2013
`
`R.342574.1
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Patent Owner’s Reply to Opposition
`IPR2012-00023
`
`INTELLECTUAL VENTURES MANAGEMENT, LLC
`Petitioner
`V
`XILIN)-(, INC.
`Patent Owner
`
`Case IPR2012-00023
`
`Patent 7,994,609
`
`Title: SHIELDING FOR INTEGRATED CAPACITORS
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies, in accordance with 37 C.F.R. § 42.205, that
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`service was made on the Petitioner as detailed below.
`
`Date ofservice September 12, 2013
`
`Manner ofservice Electronic Mail (lgordon@skgf.com; rsteme@skgf.com)
`
`Document served Patent Owner’s Reply to Petitioner’s Opposition to Patent
`Owner’s Motion to Amend
`
`Persons served Sterne, Kessler, Goldstein & Fox P.L.L.C.
`
`1100 New York Avenue, N.W.
`
`Washington, DC 20005
`
`David M. O’Dell
`
`Registration No. 42,044
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