throbber
Paper No.
`Filed: February 16, 2016
`
`
`Filed on behalf of: Samsung Electronics Company, Ltd.
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`By: Naveen Modi (nVidia-Samsung-IPR@paulhastings.com)
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`Joseph E. Palys (nVidia-Samsung-IPR@paulhastings.com)
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`Paul Hastings LLP
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`NVIDIA CORPORATION
`Petitioner
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`v.
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`SAMSUNG ELECTRONICS COMPANY, LTD.
`Patent Owner
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`
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`Case IPR2016-00134
`Patent No. 8,252,675
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`Patent Owner’s Preliminary Response
`to Petition for Inter Partes Review
`of U.S. Patent No. 8,252,675
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`

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`
`
`I.
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`II.
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`
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`Case IPR2016-00134
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`TABLE OF CONTENTS
`
`Introduction ...................................................................................................... 1
`
`The Petition Should Be Denied Under 35 U.S.C. § 325(d), Consistent
`with Board Precedent and Policy..................................................................... 2
`
`A.
`
`Petitioner Was Aware of the Hsu Reference at the Time of
`Filing its First Petition ........................................................................... 4
`
`B. Allowing Petitioner to File a Second Petition After It Had the
`Benefit of Patent Owner’s Preliminary Response for the First
`Petition Would Be Unjust ..................................................................... 6
`
`C.
`
`The Instant Petition Should Be Denied Because It Advances the
`Same or Substantially the Same Prior Art and Arguments As
`the First Petition, Which the Board Denied ........................................10
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`III. The Petition Fails to Show a Reasonable Likelihood that the Petitioner
`Will Prevail With Respect to the Challenged Claims ...................................13
`
`A.
`
`Petitioner Has Not Shown that Hsu Discloses “Said Second and
`Third Metal Gate Electrode Layers Comprise[] Different
`Materials,” as Recited in Claims 6-8 and 10-15 .................................14
`
`B.
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`Petitioner Has Not Shown that Hsu Anticipates Claims 12-14 ..........18
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`IV. Conclusion .....................................................................................................20
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`
`
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`i
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`
`TABLE OF AUTHORITIES
`
`Case IPR2016-00134
`
` Page(s)
`
`Federal Cases
`In re Arkley,
`455 F.2d 586 (CCPA 1972) ................................................................................ 16
`
`Butamax Advanced Biofuels LLC v. Gevo, Inc.,
`IPR2014-00581, Paper No. 8 (Oct. 14, 2014) .................................................. 7, 8
`
`Conopco, Inc. dba Unilever v. The Proctor & Gamble Co.,
`IPR2014-00506, Paper No. 25 (Dec. 10, 2014) ............................................ 3, 5, 7
`
`Conopco, Inc. dba Unilever v. Proctor & Gamble Co.,
`IPR2014-00628, Paper No. 21 (Oct. 20, 2014) .................................... 6, 7, 10, 12
`
`Google Inc. v. SimpleAir, Inc.,
`CBM2014-00170, Paper No. 13 (Jan. 22, 2015) .................................................. 6
`
`Kennametal, Inc. v. Ingersoll Cutting Tool Co.,
`780 F.3d 1376 (Fed. Cir. 2015) .................................................................... 17, 18
`
`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) .......................................................................... 16
`
`NetApp Inc. v. Crossroads Systems, Inc.,
`IPR2015-00772, Paper No. 12 (Sep. 3, 2015) .................................................. 3, 7
`
`nVidia Corp. v. Samsung Elecs. Co., Ltd.,
`IPR2015-01318, Paper No. 8 (Dec. 2015) .................................................. 1, 9, 16
`
`Roche Molecular Systems Inc., v. Illumina, Inc.,
`IPR2015-01091, Paper No. 18 (Oct. 30, 2015) .................................................. 10
`
`Samsung Elec. Co. v. Rembrandt Wireless Techs., LP,
`IPR2015-00114, Paper No. 14 (Jan. 28, 2015) ..................................................... 8
`
`Samsung Elecs. Co. Ltd. v. Rembrandt Wireless Techs., LP,
`IPR2015-00118, Paper No. 14 (Jan. 28, 2015) ....................................... 2, 3, 7, 10
`
`
`
`ii
`
`

`
`
`Toyota Motor Corp. v. Cellport Systems, Inc.,
`IPR2015-01423, Paper No. 7 (Oct. 28, 2015) .............................................passim
`
`Case IPR2016-00134
`
`Travelocity.com L.P. v. Cronos Techs., LLC,
`CBM2015-00047, Paper No. 7 (June 15, 2015) ................................................... 7
`
`Unilever, Inc. dba Unilever v. The Procter and Gamble Co.,
`IPR2014-00506, Paper No. 17 (July 7, 2014) .............................................. 3, 5, 7
`
`US Endodontics, LLC, v. Gold Standard Instruments, LLC,
`IPR2015-01476, Paper No. 13 (Oct. 26, 2015) .................................................... 7
`
`ZTE Corp. v. ContentGuard Holdings Inc.,
`IPR2013-00454, Paper No. 12 (Sept. 25, 2013) ................................................... 6
`
`Statutes
`
`35 U.S.C. § 102 ........................................................................................................ 13
`
`35 U.S.C. § 103(a) ................................................................................................... 13
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. § 314(a) ................................................................................................... 13
`
`35 U.S.C. § 325(d) ....................................................................................... 1, 2, 9, 13
`
`Leahy-Smith America Invents Act. ........................................................................... 8
`
`Regulations
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`Other Authorities
`
`H.R. Rep. No. 112-98, pt.1, (2011)............................................................................ 8
`
`
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`iii
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`
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`I.
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`Introduction
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`
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`Case IPR2016-00134
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`Patent Owner Samsung Electronics Company, Ltd. (“Patent Owner” or
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`“Samsung”) respectfully submits this preliminary response in accordance with 35
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`U.S.C. § 313 and 37 C.F.R. § 42.107, responding to the Petition for Inter Partes
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`Review (the “Petition”) filed by nVidia Corporation (“Petitioner” or “nVidia”)
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`against Samsung’s U.S. Patent No. 8,252,675 (“the ’675 patent”). This is
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`Petitioner’s second attempt at challenging the ’675 patent. Petitioner previously
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`filed a petition in IPR2015-01318 (“first petition”) on June 1, 2015. The Board
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`denied the first petition based on reasons articulated in Patent Owner’s preliminary
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`response. IPR2015-01318, Paper No. 8 (Dec. 7, 2015). Petitioner filed the instant
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`petition after Patent Owner’s preliminary response highlighted the deficiencies in
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`Petitioner’s first petition. The Board should not institute inter partes review for at
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`least two reasons.
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`First, the Petition should be denied under 35 U.S.C. § 325(d), consistent
`
`with Board precedent and policy. The instant Petition impermissibly uses the
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`Patent Owner’s preliminary response to the first petition in IPR2015-01318 as a
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`roadmap to remedy the errors Petitioner made in its first petition and advances the
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`same or substantially the same prior art or arguments that Petitioner advanced in
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`IPR2015-01318. Moreover, contrary to Petitioner’s allegations, Petitioner’s new
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`prior art, U.S. Patent No. 8,563,669 to Hsu (“Hsu”), was known to Petitioner at the
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` 1
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`time of the filing of the first petition. In view of the above, Board precedent and
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`Case IPR2016-00134
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`policy dictate that Petitioner’s attempted second bite at the apple be denied.
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`Second, Petitioner has not met its burden of demonstrating a reasonable
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`likelihood of prevailing with respect to the challenged ’675 patent claims. For
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`example, Petitioner resorts to impermissible picking and choosing of features for
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`its anticipation ground at least for independent claim 6.1
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`II. The Petition Should Be Denied Under 35 U.S.C. § 325(d), Consistent
`with Board Precedent and Policy
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`The statute provides that “[i]n determining whether to institute or order a
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`proceeding under this chapter, chapter 30, or chapter 31, the Director may take into
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`account whether, and reject the petition or request because, the same or
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`substantially the same prior art or arguments previously were presented to the
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`Office.” 35 U.S.C. § 325(d) (emphasis added). Relying on § 325(d), the Board has
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`routinely denied a petitioner’s second bite at the apple because allowing such
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`second chances interferes with the Board’s mandate to “secure the just, speedy,
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`and inexpensive resolution of every proceeding.” See, e.g., Samsung Elecs. Co.
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`Ltd. v. Rembrandt Wireless Techs., LP, IPR2015-00118, Paper No. 14 at 6 (Jan.
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`1 Although Patent Owner focuses on only certain claims in this response, it
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`reserves it rights to raise additional arguments for other claims should the Board
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`institute inter partes review on those claims.
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`2
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`28, 2015). The Board has noted on several occasions that “[s]uch a second bite at
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`Case IPR2016-00134
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`the apple wastes the Board’s limited resources and imposes undue burden on the
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`Patent Owner.” See, e.g., Toyota Motor Corp. v. Cellport Systems, Inc., IPR2015-
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`01423, Paper No. 7 at 7-8 (Oct. 28, 2015); see also, e.g., Samsung Elecs., Paper
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`No. 14 at 6.
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`Consistent with the above policy and precedent, the Board has denied
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`follow-on petitions in cases where, for example, (1) the Petitioner knew (or did not
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`argue otherwise) of newly cited references or evidence at the time of filing of its
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`initial petition, (2) the follow on petition utilizes a previous Board decision or a
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`Patent Owner’s preliminary response as a roadmap to remedy deficiencies in the
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`earlier petition, or (3) the follow-on petition presents substantially the same
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`arguments or prior art as the initial petition. See, e.g., Toyota Motor Corp, Paper
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`No. 7 at 7-8 (noting that Petitioner presented no argument or evidence that the
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`newly cited references were unknown or unavailable to Petitioner at the time of
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`filing of the first petition); Unilever, Inc. dba Unilever v. The Procter and Gamble
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`Co., IPR2014-00506, Paper No. 17 at 6 (July 7, 2014) (“Conopco I”); Conopco,
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`Inc. dba Unilever v. The Proctor & Gamble Co., IPR2014-00506, Paper No. 25 at
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`3–4 (Dec. 10, 2014) (“Conopco II”) (designated informative); NetApp Inc. v.
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`Crossroads Systems, Inc., IPR2015-00772, Paper No. 12 at 7 (Sep. 3, 2015).
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`The Board should deny the instant petition for a number of reasons. For
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`3
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`one, the instant petition is based on a reference that Petitioner was aware of at the
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`Case IPR2016-00134
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`time of filing the first petition. In addition, Petitioner is abusing the IPR process
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`by filing the instant petition using the Patent Owner’s preliminary response to the
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`first petition as a road map. Moreover, Petitioner advances the same or
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`substantially the same prior art and arguments that it previously presented in its
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`first petition.
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`A.
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`Petitioner Was Aware of the Hsu Reference at the Time of
`Filing its First Petition
`The Petition presents two grounds, each of which is based Hsu. (Pet. at 4.)
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`Petitioner states that it was “unaware of the Hsu reference when the previous
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`petition, No. IPR2015-01318 was filed on June 1, 2015” and that “Hsu is the
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`stronger reference between the two [i.e., the Yamakawa reference (U.S. Patent
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`Publication No. 2009/0065809) on which the first petition relied and Hsu].” (Id. at
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`3.)
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`But both Petitioner and its counsel were, in fact, aware of Hsu prior to June
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`1, 2015. In particular, in an ITC proceeding (No. 337-TA-941) also involving
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`Petitioner and Patent Owner, Petitioner produced Hsu (Ex. 2002, bearing
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`production number NV941-ITC-000104802-820) on May 8, 2015 – i.e., prior to
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`June 1, 2015 when Petitioner filed the first petition. (Ex. 2001 at 1, setting forth a
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`range of production numbers that includes production number NV941-ITC-
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`000104802-820 corresponding to Hsu). Moreover, Petitioner is represented by the
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`4
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`same law firm (Latham & Watkins) in both the aforementioned ITC proceeding
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`Case IPR2016-00134
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`and the instant proceeding. In fact, all three attorneys listed as Petitioner’s counsel
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`in the instant proceeding are also Petitioner’s counsel of record in the ITC
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`proceeding. (Pet. at 1; Exs. 2003, 2004.) While the ITC proceeding does not
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`involve the ’675 patent, it is part of the ongoing dispute between Petitioner and
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`Patent Owner that spans the ITC and federal district courts. Moreover, the patents
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`involved in both the ITC proceeding and the district court proceeding in which the
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`’675 patent is asserted relate to semiconductor devices.
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`As such, Petitioner’s express statement that it was unaware of the Hsu
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`reference at the time the first petition was filed on June 1, 2015 is not correct.
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`Under these circumstances, the Board should deny the instant petition like it has in
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`several other cases. For instance, in Conopco I, the Board found petitioner’s
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`failure to address the issue of whether it was aware of newly cited references in a
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`follow-on petition to be an important factor in denying institution. Paper No. 17 at
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`6 (“Unliver . . . presents no argument or evidence that the seven newly cited
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`references were not known or available to it at the time of filing” the earlier
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`petition); Conopco II, Paper No. 25 at 3–4 (on rehearing, the Board affirmed its
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`decision to deny institution). In a proceeding involving the same parties and
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`related issues as those involved in Conopco I and II, the Board further explained
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`that “the interests of fairness, economy and efficiency support declining review” in
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`5
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`order to “discourage[] the filing of a first petition that holds back prior art for use
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`Case IPR2016-00134
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`in successive attacks, should the first petition be denied.” Conopco, Inc. dba
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`Unilever v. Proctor & Gamble Co., IPR2014-00628, Paper No. 21 at 11 (Oct. 20,
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`2014) (“Conopco III”). The Board similarly denied a second petition in Toyota
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`Motor Corp. when the Petitioner presented no argument or evidence that the newly
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`cited references were unknown or unavailable to Petitioner at the time of filing of
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`the first petition. Paper No. 7 at 7-8.
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`Here there is no question that Petitioner knew of the Hsu reference when it
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`filed its first petition. As such, Petitioner’s attempt to hold back Hsu should be
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`rejected and the instant petition should be denied.
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`B. Allowing Petitioner to File a Second Petition After It Had the
`Benefit of Patent Owner’s Preliminary Response for the First
`Petition Would Be Unjust
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`The Board’s case law discourages serial attacks on patents, especially a
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`follow-on petition that is filed after a previous petition is denied or after the
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`previous petition’s deficiencies are laid out in the Patent Owner’s preliminary
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`response. For example, the Board has denied a follow-on petition that was filed by
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`the same petitioner after the Board denied institution for a prior petition. See
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`Google Inc. v. SimpleAir, Inc., CBM2014-00170, Paper No. 13 at 22–23 (Jan. 22,
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`2015); ZTE Corp. v. ContentGuard Holdings Inc., IPR2013-00454, Paper No. 12 at
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`6 (Sept. 25, 2013) (informative) (“[a] decision to institute review on some claims
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`6
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`should not act as an entry ticket, and a how-to guide, for the same Petitioner”);
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`Case IPR2016-00134
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`NetApp Inc., Paper No. 12 at 7; Samsung Elecs., Paper No. 14; Butamax Advanced
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`Biofuels LLC v. Gevo, Inc., IPR2014-00581, Paper No. 8 at 12–13 (Oct. 14, 2014);
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`Travelocity.com L.P. v. Cronos Techs., LLC, CBM2015-00047, Paper No. 7 at 12–
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`13 (June 15, 2015); Conopco I, Paper No. 17 at 6-8; Conopco II, Paper No. 25 at 3-
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`6; Conopco III, Paper No. 21 at 10-11.
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`Where the Petitioner has not waited until the institution decision but filed a
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`follow-on petition after Patent Owner’s preliminary response, the Board has again
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`denied such follow-on petitions noting that allowing institution of such follow-on
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`petitions would be “unjust.” Toyota Motor Corp., Paper No. 7 at 7-8 (noting that
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`the petition in that case was filed after the patent owner’s preliminary response was
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`filed in the previous petition, and stating that “the opportunity to read Patent
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`Owner’s Preliminary Response in [the previous IPR proceeding], prior to filing the
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`Petition here, is unjust”); see also US Endodontics, LLC, v. Gold Standard
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`Instruments, LLC, IPR2015-01476, Paper No. 13 at 9-10 (Oct. 26, 2015) (denying
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`institution and observing that “[t]o the extent that the grounds [in the follow-on
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`petition] are offered in some capacity to respond to arguments made by [patent
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`owner] in its Preliminary Response in the [first IPR proceeding], . . . generally a
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`petitioner is not permitted to respond to arguments presented by a patent owner in
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`a preliminary response until after a trial has been instituted”).
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`Case IPR2016-00134
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`The Board’s rationale for the above decisions is quite simple. “Allowing
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`similar, serial challenges to the same patent, by the same petitioner, risks
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`harassment of patent owners and frustration of Congress’s intent in enacting the
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`Leahy-Smith America Invents Act.” Butamax Advanced Biofuels, Paper No. 8 at
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`12–13. Indeed, as noted in the AIA’s legislative history, AIA proceedings “are not
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`to be used as tools for harassment or a means to prevent market entry through
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`repeated litigation and administrative attacks on the validity of a patent. Doing so
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`would frustrate the purpose of the section as providing quick and cost effective
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`alternatives to litigation.” See H.R. Rep. No. 112-98, pt.1, at 48 (2011). “[I]t is
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`more efficient for the parties and the Board to address a matter once rather than
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`twice.” Samsung Elec. Co. v. Rembrandt Wireless Techs., LP, IPR2015-00114,
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`Paper No. 14 at 6 (Jan. 28, 2015).
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`In line with the above Board precedent and policy, the Board should deny
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`this follow-on petition because, while Petitioner filed this second petition prior to
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`receiving an institution decision in IPR2015-01318, this second petition was a
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`direct result of Patent Owner’s preliminary response laying out the deficiencies in
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`Petitioner’s first petition. For instance, in its preliminary response, Patent Owner
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`explained how Petitioner had improperly combined embodiments in an anticipation
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`ground. IPR2015-01318, Paper No. 6 at 2-12. With regards to independent claim
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`6 and dependent claim 12, Patent Owner explained that it would be improper for
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`8
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`Petitioner to pick and choose different materials for different layers of the cited
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`Case IPR2016-00134
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`reference’s embodiments when the cited reference did not offer any guidance on
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`which materials to choose. Id. at 13-21. The Board agreed with Patent Owner’s
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`argument that Petitioner had improperly combined embodiments in an anticipation
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`rejection and denied the first petition. IPR2015-01318, Paper No. 8 at 17.
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`Apparently recognizing these deficiencies in its first petition, Petitioner filed
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`a second petition with a new reference, Hsu. As discussed below in Section II.C,
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`while Hsu is a different reference compared to Yamakawa (the reference used in
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`IPR2015-01318), the two references are very similar. But Petitioner should not be
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`allowed to obtain a tactical advantage by using Patent Owner’s arguments in a first
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`petition to file a second petition based on a reference that Petitioner already knew
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`about at the time of the filing of the petition. If the Board accepts these types of
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`cumulative, repetitive grounds, it will encourage petitioners to engage in a pattern
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`of serial IPR filing. Parties will file petition after petition, making similar
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`arguments and reshuffling or substituting the prior art in an attempt to navigate
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`patent owners’ arguments. Such a practice will overburden the Board’s limited
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`resources with repetitive petitions, and prejudice patent owners, who would have to
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`continually defend against repetitive IPR challenges. For at least this additional
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`reason, the Board should exercise its discretion under § 325(d) and deny
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`institution.
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`Case IPR2016-00134
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`C. The Instant Petition Advances the Same or Substantially the
`Same Prior Art and Arguments As the First Petition, Which
`the Board Denied
`
`The Board has routinely denied follow-on petitions that present the same or
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`substantially the same prior art or argument compared to a previous petition, which
`
`the Board denied. See, e.g., Toyota Motor Corp., Paper No. 7 at 7-8; Conopco III,
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`IPR2014-00628, Paper No. 21 at 6-9; Roche Molecular Systems Inc., v. Illumina,
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`Inc., IPR2015-01091, Paper No. 18 at 14-15 (Oct. 30, 2015). Even when a follow-
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`on petition utilizes different art compared to a previous petition, the Board has
`
`found that the application of this new art constitutes the presenting of
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`“substantially the same prior art or argument.” See, e.g., Toyota Motor Corp,
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`Paper No. 7 at 7-8; Conopco III, Paper No. 21 at 6-9; Roche Molecular Systems,
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`Paper No. 18 at 14-15.
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`For instance, in Conopco III, petitioner raised anticipation grounds based on
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`a first set of references (Bowser and Reid) in a first IPR petition. Paper No. 21 at
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`6. Then, in a follow-on IPR petition (IPR2014-00628), petitioner raised
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`anticipation grounds based on two different references (Cothran and Uchiyama).
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`Id. The Board acknowledged that these two IPR petitions “rely upon different
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`prior art references” but decided that “both petitions apply that art to make out
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`‘substantially the same’ argument regarding anticipation.” Id. at 6-7. In particular,
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`the Board “recognize[d] that the prior art disclosures relied upon in the two
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`10
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`petitions are not identical” but agreed that “both petitions apply the prior art
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`Case IPR2016-00134
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`references to support substantially the same argument.” Id. at 8-9; see also
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`generally id. at 7-9. The Board has also recognized that the burden is on the
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`petitioner to establish in its follow-on petition why the disclosure of any newly
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`asserted reference is “substantively and meaningfully different” from the
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`disclosure of the reference asserted in the previous petition. See Toyota Motor
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`Corp, Paper No. 7 at 7-8 (“Petitioner makes no explanation as to why the
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`disclosure of CAN is substantively and meaningfully different from the disclosure
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`of RS-485, insofar as the claimed subject matter of the challenged claims is
`
`concerned. . . . Petitioner does not identify any functionality provided by the CAN
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`standard, significant to the claimed subject matter of the challenged claims, that it
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`believes the RS-485 standard does not provide.”).
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`Here, Petitioner makes very little to no effort to explain why Hsu is
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`“substantively and meaningfully different” from Yamakawa (the reference relied
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`upon in the first petition). Petitioner and its alleged expert simply state that “Hsu
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`makes disclosure regarding the portion of third metal gate electrode layer of the
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`PMOS transistor (layer 262 of Hsu) and the upper metal gate electrode (layers 160
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`and 162 of Hsu) that may be more relevant to the invalidity of the ’675 patent.”
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`(Pet. at 20, citing Lee Decl. at ¶ 77.) This is simply insufficient to carry out
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`Petitioner’s burden to establish that newly asserted reference is “substantively and
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`11
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`meaningfully different” from the disclosure of the reference asserted in the
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`Case IPR2016-00134
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`previous petition. See Toyota Motor Corp, Paper No. 7 at 7-8.
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`In any case, the disclosures of Hsu and Yamakawa and their application in
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`their respective petitions constitute “substantially the same argument” regarding
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`anticipation. Conopco III, Paper No. 21 at 6-7. Moreover, as discussed in detail
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`below, the application of Hsu and Yamakawa constitutes an application of
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`“substantially the same prior art.” For instance, as acknowledged by Petitioner and
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`Dr. Lee, both Hsu and Yamakawa disclose a gate-last approach for transistor
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`fabrication. Compare IPR2015-01318, Paper No. 1 at 13-14, with IPR2016-00134,
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`Paper No. 2 at 7. As explained by Petitioner, in both Hsu and Yamakawa, a
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`dummy gate electrode is formed before the source/drain annealing process, and the
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`dummy gate electrode is replaced with the actual gate electrode after the
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`source/drain annealing process is completed. Compare IPR2015-01318, Paper No.
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`1 at 13-14, with IPR2016-00134, Paper No. 2 at 7. Given the similarity in the
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`disclosures of Hsu and Yamakawa, Petitioner’s application of these references to
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`the claims of the ’675 patent is also quite similar.
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`For instance, consider claim 1’s recitation of “defin[ing] a buffer gate
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`electrode layer on the gate insulating layer and a dummy gate electrode on the
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`buffer gate electrode.” For this feature, Petitioner points to a similar gate stack in
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`both Hsu and Yamakawa. Compare IPR2015-01318, Paper No. 1 at 29, with
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`12
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`IPR2016-00134, Paper No. 2 at 24. Next, with regards to the feature of “removing
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`Case IPR2016-00134
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`the dummy gate electrode from between the spacers,” Petitioner points to a similar
`
`feature in Hsu and Yamakawa where a dummy electrode layer in the gate stack is
`
`removed by etching. Compare IPR2015-01318, Paper No. 1 at 32, with IPR2016-
`
`00134, Paper No. 2 at 27. Petitioner also points to similar features in Hsu and
`
`Yamakawa as disclosing the features of “depositing a first metal layer” and “filling
`
`a space between the inner sidewalls of the spacers by depositing a second metal
`
`layer.” Compare IPR2015-01318, Paper No. 1 at 33-36, with IPR2016-00134,
`
`Paper No. 2 at 28-30.
`
`Given the similarities in the subject matter of Hsu and Yamakawa, the
`
`similarity in the manner they are applied in their first and second petitions, and
`
`Petitioner’s failure to explain why the two references are “substantively and
`
`meaningfully different,” the Board should exercise its discretion and deny the
`
`petition under 35 U.S.C. § 325(d) as it has done in other cases.
`
`III. The Petition Fails to Show a Reasonable Likelihood that the
`Petitioner Will Prevail With Respect to the Challenged Claims
`In order for an inter partes review to be instituted, the Petition must show a
`
`“reasonable likelihood that the petitioner would prevail with respect to at least 1 of
`
`the claims challenged in the petition.” 35 U.S.C. § 314(a). Here, the Petition
`
`contends that claims 1-8 and 10-15 of the ’675 patent are unpatentable under
`
`35 U.S.C. § 102 based on Hsu, and that claim 12 is unpatentable under 35 U.S.C.
`
`
`
`13
`
`

`
`
`§ 103(a) based on Hsu in view of the knowledge of one of ordinary skill in the art
`
`Case IPR2016-00134
`
`at the time of the invention of the ’675 patent. (Pet. at 4.) However, as discussed
`
`below, the Petition fails to establish a reasonable likelihood that the Petitioner will
`
`prevail with respect to at least certain claims.2
`
`A.
`
`Petitioner Has Not Shown that Hsu Discloses “Said Second and
`Third Metal Gate Electrode Layers Comprise[] Different
`Materials,” as Recited in Claims 6-8 and 10-15
`
`The Petition asserts in Ground 1 that claims 6-8 and 10-15 are anticipated by
`
`Hsu. The Petition should be denied with respect to independent claim 6 at least
`
`because Hsu fails to disclose “depositing a third metal gate electrode layer onto the
`
`second metal gate electrode layer to thereby fill a space between the inner
`
`sidewalls of the spacers, said second and third metal gate electrode layers
`
`comprising different materials,” as required by claim 6. (Ex. 1001 at 12:1-3,
`
`emphasis added.) Petitioner contends that metal layer 60 in Hsu corresponds to the
`
`claimed “second metal gate electrode layer” and metal layer 62 corresponds to the
`
`claimed “third metal gate electrode layer.” (Pet. at 42.) Petitioner then contends
`
`that these two layers comprise different materials:
`
`2 Patent Owner does not concede that Petitioner has met its burden with respect to
`
`the other claims. Instead, as noted in Section I, Patent Owner reserves it rights to
`
`raise arguments for other claims, including independent claim 1, should the Board
`
`institute inter partes review on those claims.
`
`
`
`14
`
`

`
`
`
`Case IPR2016-00134
`
`As discussed above, metal layer 60 may include tantalum
`containing materials such as tantalum nitride (TaN),
`tantalum aluminum nitride (TaAlN), or tantalum silicon
`nitride (TaSiN). Hsu discloses that metal layer 62 may
`include three sublayers, for example,: (1) layer 621 at the
`bottom, made of tungsten (W) or tungsten nitride (WN);
`(2) layer 622 in the middle, made of titanium nitride
`(TiN); and (3) layer 623 on top, made of aluminum (Al).
`See Hsu at 7:34-56. Hsu therefore discloses that metal
`layer 60 and metal layer 62 include different materials.
`Lee Decl. at ¶ 124-126. As discussed above, Hsu also
`discloses other exemplary materials that may be used in
`metal layer 62 that are different than the exemplary
`materials Hsu discloses for metal layer 60. Id.
`
`Petitioner is incorrect because Hsu does not disclose that metal layers 62 and
`
`60 comprise different materials. In fact, metal layer 62, which includes layer 622,
`
`includes the same materials as layer 60. Specifically, Hsu discloses that both layer
`
`60 and layer 622 include tantalum-containing and titanium-containing materials.
`
`Compare Hsu (Ex. 1105) at 7:24-33 (disclosing that layer 60 includes “tantalum or
`
`titanium containing materials such as TaC, TaN, TiN, TaAlN, TaSiN, and
`
`combinations thereof”), with id. at 7:49-50 (disclosing that layer 622 includes
`
`“TiN, TaN, Ti, Ta, and the like”). As seen from the above list, there are several
`
`overlapping materials in the two groups as a result of which it is possible to pick
`
`
`
`15
`
`

`
`
`either the same or different materials for layers 60 and 622. The fact that one could
`
`Case IPR2016-00134
`
`pick two different materials given the available metals is not enough to show
`
`anticipation because such picking and choosing is not proper for an anticipation
`
`rejection. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir.
`
`2008) (explaining that it is not enough for an anticipation rejection “that the prior
`
`art reference . . . includes multiple, distinct teachings that the artisan might
`
`somehow combine to achieve the claimed invention”); In re Arkley, 455 F.2d 586,
`
`587-88 (CCPA 1972); see also nVidia Corp. v. Samsung Elecs. Co., Ltd., IPR2015-
`
`01318, Paper No. 8 at 10, 17 (Dec. 2015) (explaining that it is improper to pick and
`
`choose features from different embodiments in an anticipation rejection). Neither
`
`Hsu nor Petitioner suggest a reason for one of ordinary skill in the art to pick and
`
`choose different materials for layers 60 and 622. Because Hsu does not “‘clearly
`
`and unequivocally’ direct[] those skilled in the art to make” the selection suggested
`
`by Petitioner, i.e., pick two different metals, Hsu cannot anticipate claim 6. Arkley,
`
`455 F.2d at 587-88.
`
`While Petitioner offers no analysis with respect to claim 6 why such a
`
`picking and choosing is proper in an anticipation rejection, Petitioner contends that
`
`the number of non-overlapping materials for layers 60 and 622 is not “so large that
`
`the anticipatory combination would not be immediately apparent to one of ordinary
`
`skill in the art.” (Pet. at 54-55, citing Kennametal, Inc. v. Ingersoll Cutting Tool
`
`
`
`16
`
`

`
`
`Co., 780 F.3d 1376, 1382 (Fed. Cir. 2015) (internal citations omitted).) According
`
`Case IPR2016-00134
`
`to Petitioner, Hsu discloses four materials for layer 622 and five materials for layer
`
`60, which results in twenty combinations for the two layers. (Id.) In half of these
`
`combinations, layers 60 and 62 comprise different materials. Therefore, Petitioner
`
`contends that one of ordinary skill in the art “would immediately envisage” using
`
`the claimed combination (i.e., different materials). (Id. at 53-55.)
`
`Petitioner’s reliance on Kennametal is misplaced. In Kennametal, the
`
`Federal Circuit held that that the Board’s conclusion that the cited reference taught
`
`fifteen combinations one of which anticipates the claim was supported by
`
`substantial evidence. 780 F.3d at 1383. But in Kennametal, the number of
`
`combinations was limited and well-defined set of fifteen. Id. at 1382-83.
`
`Specifically, the Board found that claim 5 of the cited reference recited using one
`
`of

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