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` Paper 22
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` Entered: June 3, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`INNOLUX CORPORATION
`Petitioner
`
`v.
`
`SEMICONDUCTOR ENERGY LABORATORY CO., LTD.
`Patent Owner
`_______________
`
`Case IPR2013-00068(SCM)
`Patent 8,068,204 B2
` _______________
`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and
`KEVIN F. TURNER, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`DECISION
` Request for Rehearing
`
`37 C.F.R. § 42.71(d)
`
`
`
`Case IPR2013-00068
`Patent 8,068,204 B2
`
`
`I. BACKGROUND
`
`Patent Owner, Semiconductor Energy Laboratory Co., Ltd. (“SEL”), in its
`
`Rehearing Request, seeks reversal of the Board’s Decision (“Decision”) to institute
`
`an inter partes review of certain claims in the `204 patent. (See Rehearing Req. 1.)
`
`SEL directs arguments toward a claim phrase which appears in claims 54, 56, 59,
`
`61, 63, 66, 68, 70, 73, 75, 76, 78, 81, and 83, “contact through an opening in the
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`second insulating film.” (See Rehearing Req. 7.)1 SEL argues that the Decision
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`unreasonably construes the phrase and that the claims define over Sukegawa. (See
`
`Rehearing Req. 1-15.)
`
`The applicable standard for a request for rehearing is set forth in 37 C.F.R.
`
`§ 42.71(d), which provides in relevant part:
`
`
`
`A party dissatisfied with a decision may file a request for rehearing,
`without prior authorization from the Board. The burden of showing a
`decision should be modified lies with the party challenging the decision.
`The request must specifically identify all matters the party believes the
`Board misapprehended or overlooked, and the place where each matter
`was previously addressed in a motion, opposition, or a reply.
`
`
`For the reasons that follow, SEL fails to show that the Board
`
`misapprehended or overlooked any material matters warranting a reversal of the
`
`Decision. Accordingly, the Board denies the requested relief.
`
`
`
`II. DISCUSSION
`
`SEL’s contention that the Board overlooked or misapprehended the meaning
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`of “contact through an opening” is not persuasive. (See Rehearing Req. 1.) The
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`Board construed the phrase to include SEL’s definition; i.e., the contact occurs
`
`
`1 The Board instituted review of claims 31, 33, 36, 38, 40, 43, 45, 46, 48, 51, 53,
`54, 56, 59, 61, 63, 66, 68, 70, 73, 75, 76, 78, 81, and 83. (Dec. 2.)
`
`
`
`2
`
`
`
`Case IPR2013-00068
`Patent 8,068,204 B2
`
`“through” or “because of” the opening. The Board also construed the phrase to
`
`include another ordinary definition supported by the `204 patent; i.e., the location
`
`of the contact occurs “through” or “between the vertical limits of the opening.”
`
`(See Dec. 11-12.)
`
`SEL urges that the Board’s claim construction misinterprets the meaning of
`
`“through” because “the Board’s general purpose dictionary is completely unrelated
`
`to semiconductor technology.” (Rehearing Req. 5.) SEL also contends that the
`
``204 patent Specification does not support the Board’s claim construction. (See
`
`Rehearing Req. 8-13.)
`
`The Decision addresses SEL’s contention that “through” is not limited to a
`
`definition which means “because of” or “by virtue of.” (See Rehearing Req. 9;
`
`Dec. 10-12, 18.) SEL now contends that “[w]hen the Board consulted a general
`
`purpose dictionary for the definitions of ‘through,’ it found some definitions
`
`beyond the context of the ‘204 patent specification.” (Rehearing Req. 10.) SEL
`
`includes the following dictionary definitions cited by the Board as “beyond the
`
`[proper] context”: defining “through” to mean “[a]mong or between; in the midst
`
`of: a walk through the flowers” or “[h]ere and there in; around: a tour through
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`France.” (See Dec. 11 (dictionary citation omitted); Rehearing Req. 5, 10.)
`
` Contrary to SEL’s argument, the `204 patent employs the word “through” in
`
`different contexts. For example, the patent notes that “a spacer . . . penetrates
`
`through the resin.” (Ex. 1001, col. 13, ll. 43-44.) In other words, contrary to
`
`SEL’s arguments, the word “through” as employed in the `204 patent does not
`
`always take on its alternative ordinary meaning of “because of” or “by virtue of.”
`
`Rather, the word implies that “through an opening” can mean “between the vertical
`
`limits of the opening” as the Decision reasons and as discussed further below. (See
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`Rehearing Req. 11; Dec. 12.)
`
`
`
`3
`
`
`
`Case IPR2013-00068
`Patent 8,068,204 B2
`
`
` While SEL contends that it is not clear how the Board’s definition of
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`“through” is “relevant” to the phrase at issue, SEL virtually acknowledges that the
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`Board provides the relevance in SEL’s statement that “Figure 4A of the ‘204 patent
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`shows that the electrical contact occurs at the bottom of the opening in resin inter-
`
`layer film 113, as the Board notes.” (Rehearing Req. 11.) While SEL also
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`contends that the depicted contact satisfies their proposed definition that the
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`contact occurs “because of” the opening, the depicted contact location is also
`
`consistent with the Board’s definition which specifies a contact location. In other
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`words, Figure 4A shows contact “between the vertical limits of the opening.” The
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`Figure 4A depiction and the Board’s definition coalesce with one of the Board’s
`
`cited dictionary definitions of “through” as meaning, for example, “among or
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`between” as discussed supra.
`
`Moreover, the `204 patent states that electrical lines are “connected in
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`parallel by forming contact holes in the first inter-layer film.” (Ex. 1001, col. 8, ll.
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`48-49.) That disclosure implies that the claims at issue are broader than any single
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`embodiment described therein. If the disclosed contact occurs “because of” the
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`opening, it does so because a connection occurs “by [first] forming” the opening.
`
`In other words, the thrust of SEL’s arguments is that an implied order of making
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`the opening exists in which an electrical contact is formed after forming the
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`opening: “To permit that contact to be made, an opening had to be provided before
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`depositing the ITO 114.” (Rehearing Req. 12.) However, contrary to SEL’s
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`thrust, the device claims at issue here do not require the specific order of making as
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`required, even if the `204 patent happens to disclose such an order. Therefore, for
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`this additional reason, SEL does not show that the Decision misapprehends the
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`meaning of the claim phrase, “contact through an opening.”
`
`
`
`4
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`
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`Case IPR2013-00068
`Patent 8,068,204 B2
`
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`Moreover, even under SEL’s definition of “contact through an opening,”
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`SEL does not show that the Decision misapprehends that the combination of
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`Sukegawa and Shiba renders obvious the disputed phrase in the claims at issue.
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`(See Rehearing Req. 14-15; Dec. 18.) SEL focuses on limited portions of
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`Sukegawa’s teachings instead of addressing the prior art combination of Sukegawa
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`and Shiba involved in the Decision. Pursuant to SEL’s definition, the Board
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`alternatively reasons that “CMI shows that it would have been obvious to employ
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`the known contact structure . . . by forming Sukegawa’s transparent ITO layer 8
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`through Shiba’s slit 243 to create a reliable . . . contact.” (Dec. 18.) The Board
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`further explains that, “at the time of the invention, skilled artisans knew how to
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`make through-hole contacts as Sukegawa’s Figure 3B verifies by showing contact
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`between metal wiring layers 7 and 2 through holes in an insulation layer 3. (See
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`Ex. 1005.)” (Id.) SEL does not contend that skilled artisans were unaware of how
`
`to extend metal material through pre-existing contact holes to form reliable
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`electrical connections.
`
`Accordingly, SEL does not show that the Decision misapprehends the claim
`
`phrase “contact through an opening,” or overlooks a material point related to the
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`obviousness of providing such contact through an opening as set forth in the claims
`
`at issue here.
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`III. CONCLUSION
`
`Based on the foregoing discussion, SEL’s Rehearing Request is granted to
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`the extent that the Board has reconsidered its Decision, but SEL’s requested relief
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`for a reversal of the Decision is denied because SEL has not shown that the
`
`Decision overlooks or misapprehends a material point.
`
`
`
`
`
`
`
`5
`
`
`
`Case IPR2013-00068
`Patent 8,068,204 B2
`
`
`
`For Petitioner:
`
`Scott A. McKeown
`Gregory S. Cordrey
`OBLON, SPIVAK, McCLELLAND, MAIER & NEUSTADT, L.L.P.
`cpdocketmckeown@oblon.com
`gcordrey@jmbm.com
`
`For Patent Owner:
`
`Mark Murphy
`Edward Manzo
`HUSCH BLACKWELL
`mark.murphy@huschblackwell.com
`
`Stanley A. Schlitter
`Douglas R. Peterson
`Steptoe & Johnson, LLP
`sschlitt@steptoe.com
`dpeterson@steptoe.com
`
`
`
`
`
`
`6
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`
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