Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 52
`Entered: April 19, 2018
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.
`and GLOBALFOUNDRIES U.S. INC.,
`Petitioners,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`____________
`
`Case IPR2016-012461
`Patent 7,126,174 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, MICHAEL J. FITZPATRICK, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`DECISION
`Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`1 Case IPR2016-01247 has been consolidated with this proceeding.
`
`
`571-272-7822
`
`
`
`
`Paper 52
`Entered: April 19, 2018
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.
`and GLOBALFOUNDRIES U.S. INC.,
`Petitioners,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`____________
`
`Case IPR2016-012461
`Patent 7,126,174 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, MICHAEL J. FITZPATRICK, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`DECISION
`Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`1 Case IPR2016-01247 has been consolidated with this proceeding.
`
`
`
`IPR2016-01246
`Patent 7,126,174 B2
`
`
`Patent Owner filed a Request for Rehearing (Paper 50, “Req. Reh’g”)
`of our Final Decision (Paper 49, “Dec.” or “Decision”) determining that
`Petitioner2 had shown, by a preponderance of the evidence, that claims 1–12
`and 14–18 of U.S. Patent No. 7,126,174 B2 (Ex. 1001, “the ’174 patent”) are
`unpatentable. For the reasons stated below, Patent Owner’s Request for
`Rehearing is denied.
`“A party dissatisfied with a decision may file a single request for
`rehearing without prior authorization from the Board.” 37 C.F.R.
`§ 42.71(d). “The burden of showing a decision should be modified lies with
`the party challenging the decision.” Id. “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, an opposition, or a reply.” Id.
`After reviewing the arguments and evidence submitted by both parties
`in this proceeding, we determined that Petitioner had met its burden to show
`unpatentability of the challenged claims under 35 U.S.C. § 103(a) by a
`preponderance of the evidence. Patent Owner argues that, in doing so, we
`“misapplied the law of obviousness in the field of semiconductor fabrication
`and relied extensively upon the unreliable testimony” of Petitioner’s
`declarant, Sanjay Kumar Banerjee, Ph.D. Req. Reh’g 1.
`
`
`2 On June 9, 2017, we granted motions for joinder filed by GlobalFoundries
`U.S. Inc. (“GlobalFoundries”) in Cases IPR2017-00925 and
`IPR2017-00926, and authorized GlobalFoundries to participate in this
`proceeding only on a limited basis. See Paper 20; IPR2017-00925,
`Paper 13; IPR2017-00926, Paper 12. Although the papers referenced herein
`were filed by Taiwan Semiconductor Manufacturing Company, Ltd., we
`refer to both entities as “Petitioner” throughout this Decision.
`2
`
`
`
`
`
`IPR2016-01246
`Patent 7,126,174 B2
`
`
`First, with respect to our application of the law of obviousness, Patent
`Owner argues that we “mistakenly overlook[ed] that neither the Petition nor
`Dr. Banerjee ever said ‘how’ the reference processes were to be combined to
`arrive at a workable claimed invention.” Id. at 2, 9–10 (similarly arguing
`that Petitioner failed to “explain what the final combined structure would
`look like”), 14 (similarly arguing that Petitioner failed to “evaluate the
`workability of the proposed processes”). According to Patent Owner, such
`an explanation was necessary due to the complexity of semiconductor
`fabrication technology, and we overlooked evidence in the record of such
`complexity, “misapprehended the law of obviousness by failing to take
`technological complexity into account,” and incorrectly found that a person
`of ordinary skill in the art would have been able to combine the references’
`teachings in the manner asserted by Petitioner. Id. at 2–6 (citing
`Exs. 2012–19, 1025 (shown in Ex. 1060, cited by Patent Owner)). Patent
`Owner also points to another Board decision, cited after the oral hearing in
`this proceeding, Samsung Elecs. Co. v. Elm 3DS Innovations, LLC,
`Case IPR2016-00394 (PTAB June 23, 2017) (Paper 64) (“Samsung”), in
`support of its position. Req. Reh’g 3–4 & n.2; see Ex. 2080.
`We are not persuaded that we misapprehended or overlooked any of
`the parties’ arguments or supporting evidence regarding the asserted
`combinations of references.3 As explained in the Decision, Petitioner relied
`
`
`3 Petitioner asserted four obviousness combinations in this proceeding:
`(1) Lee and Noble, (2) Lee and Ogawa, (3) Lowrey and Noble, and
`(4) Lowrey and Ogawa. Dec. 6–7. Many of Patent Owner’s arguments in
`the Request for Rehearing assert error in our Decision generally, rather than
`referring to a particular combination. For those arguments, we refer to the
`3
`
`
`
`
`
`IPR2016-01246
`Patent 7,126,174 B2
`
`on Lee for all of the limitations of claim 1 except a “trench isolation,” and
`relied on Noble for that limitation. Dec. 13–16, 28, 37. Specifically,
`Petitioner argued that an ordinarily skilled artisan would have been
`motivated to substitute Noble’s isolation structure (shallow trench isolation
`(STI) 30) in place of Lee’s isolation structure (field oxide 113, formed using
`Local Oxidation of Silicon (LOCOS)). Id. Thus, contrary to Patent Owner’s
`arguments, Petitioner explained “how” (and why) a person of ordinary skill
`in the art would have combined the teachings of the references to achieve the
`semiconductor device recited in claim 1. See id. at 13–16, 21–26, 28.
`What allegedly was missing from Petitioner’s analysis in the Petition,
`according to Patent Owner, was a recitation of the particular sequence of
`steps by which a device based on the combined teachings of Lee and Noble
`would have been made. See Req. Reh’g 2; Paper 14, 1–5, 14. Upon review
`of the parties’ arguments, we were not persuaded that such an explanation
`was necessary in the Petition, given the particular factual circumstances of
`this case. Dec. 21–29. Among other things, claim 1 is an apparatus claim; it
`is not a method claim for fabricating a semiconductor device and does not
`require any particular process for forming the recited components, including
`the “trench isolation.” Id. at 28–29. Petitioner also provided considerable
`evidence showing that (1) LOCOS and trench isolation were well-known
`isolation structures and recognized in the industry as interchangeable,
`functionally equivalent substitutes for each other, (2) trench isolation had
`various advantages such that it would have been considered an improvement
`over LOCOS, and (3) it would have been well within the skill level of a
`
`
`Lee-Noble combination for convenience, but our analysis applies equally to
`the other grounds.
`
`
`
`4
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`
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`IPR2016-01246
`Patent 7,126,174 B2
`
`person of ordinary skill in the art to make a semiconductor device using
`either isolation technique. Id. at 21–28; see Ex. 1001, col. 1, l. 29–col. 2,
`l. 6, col. 3, l. 53–col. 4, l. 19, Figs. 17, 20(e) (the ’174 patent describing
`“conventional” semiconductor devices of the time with a trench isolation
`and stating that manufacturers had begun moving from LOCOS to trench
`isolation); Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1003 (Fed.
`Cir. 2016) (“For the technique’s use to be obvious, the skilled artisan need
`only be able to recognize, based on her background knowledge, its potential
`to improve the device and be able to apply the technique.”); In re Mouttet,
`686 F.3d 1322, 1333 (Fed. Cir. 2012) (“[T]he test for obviousness is what
`the combined teachings of the references would have suggested to those
`having ordinary skill in the art.”).
`Regardless, though, we evaluated Patent Owner’s arguments
`regarding the fabrication processes of the cited references to determine
`whether the processes are “so different or incompatible that they would have
`discouraged a person of ordinary skill in the art from making the asserted
`combination or would not have produced a reasonable expectation of
`success in achieving the claimed device.” Dec. 29–38. We were persuaded
`that an ordinarily skilled artisan would have been able to form an STI
`instead of a LOCOS isolation in Lee, using Lee’s order of steps (i.e.,
`forming an isolation structure before forming the gate stack components),
`for the reasons explained in the Decision.4 Id.
`
`
`4 Many of Patent Owner’s arguments were premised on bodily incorporating
`Noble’s STI and surrounding components into Lee’s device, which is not
`required to demonstrate obviousness. See Dec. 29–33, 35 n.13. Patent
`Owner does not address this aspect of the Decision in its Request for
`Rehearing.
`
`
`
`5
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`IPR2016-01246
`Patent 7,126,174 B2
`
`
`In determining that the Petition was not deficient for failing to set
`forth a particular sequence of steps for fabricating the combined device, and
`that the evidence of record supported Petitioner’s arguments regarding
`combinability of the references’ teachings, we did not overlook the evidence
`cited by Patent Owner showing that semiconductor fabrication in general is
`complex. Rather, we addressed Patent Owner’s arguments in the Decision
`and weighed the evidence with all of the other evidence presented to assess
`the sufficiency of Petitioner’s showing. See id. at 21–38. Patent Owner’s
`disagreement with that weighing of the evidence is not a proper basis for
`rehearing, when Patent Owner’s arguments were considered and addressed
`in the Decision.
`Further, we are persuaded that Samsung is distinguishable from the
`facts of this case. As explained in the Decision, each asserted combination
`involves the substitution of one recognized substitute for another (i.e., a
`trench isolation in place of a LOCOS isolation) and Petitioner provided
`ample evidence, including detailed testimony from Dr. Banerjee, showing
`that a person of ordinary skill in the art would have been able to make a
`device with either isolation structure and motivated by numerous reasons to
`do so. See id. at 13–38, 44–48, 50–62. By contrast, in Samsung, the
`petitioner submitted unsupported attorney argument and asserted a
`combination of references disclosing significantly different processes.
`Samsung, at 25–42.
`Second, with respect to Dr. Banerjee’s testimony, Patent Owner
`argues that we were “wrong to rely on Dr. Banerjee for the complexity or
`workability of the substitution, or anything else, because he is not a credible
`witness.” Req. Reh’g 6. Patent Owner points to testimony regarding Lee’s
`
`
`
`6
`
`
`
`IPR2016-01246
`Patent 7,126,174 B2
`
`doping sequence and the height difference in the combined device of the
`combinations based on Lowrey, mirroring what Patent Owner argued in its
`Sur-Reply. See id. at 6–14; Paper 37 (“Sur-Reply”), 11–40. According to
`Patent Owner, we erred in crediting Dr. Banerjee’s testimony rather than the
`testimony of Patent Owner’s declarant, E. Fred Schubert, Ph.D., on these
`points. Req. Reh’g 6–14. Patent Owner also argues that we were “misled as
`to the complexity of integrating” the semiconductor fabrication processes of
`the references by Dr. Banerjee’s testimony regarding similarities between
`trench isolation and LOCOS, and that we overlooked arguments regarding
`Dr. Banerjee’s testimony in the Sur-Reply. Id. at 8–9, 12–14.
`We did not overlook Patent Owner’s arguments in the Sur-Reply, as
`we expressly addressed them in the Decision and explained why we did not
`find them persuasive. See Dec. 26–38, 52–58. We reviewed the testimony
`from both parties’ declarants, as well as the evidence each individual cited in
`support of his opinions, and credited the portions of Dr. Banerjee’s
`testimony that we specifically cited in the Decision, for the reasons
`explained in the Decision. See Elbit Sys. of Am., LLC v. Thales Visionix,
`Inc., 881 F.3d 1354, 1358 (Fed. Cir. 2018) (“The [Patent Trial and Appeal
`Board (‘PTAB’)] [i]s entitled to weigh the credibility of the witnesses.”
`(citation omitted)); Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d
`1034, 1041 (Fed. Cir. 2017) (“To the extent [a party] challenges the PTAB’s
`factual findings, . . . the PTAB is permitted to weigh expert testimony and
`other record evidence and, in so doing, rely on certain portions of an expert’s
`declaration while disregarding others.”); see also VirnetX Inc. v. Apple Inc.,
`665 F. App’x 880, 884 (Fed. Cir. 2016) (unpublished) (“[T]he PTAB must
`weigh [expert] testimony against other record evidence in reaching its
`
`
`
`7
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`IPR2016-01246
`Patent 7,126,174 B2
`
`conclusion, and it may give that testimony less weight, so long as it supports
`its decision with substantial evidence.”). Patent Owner’s reiteration of its
`arguments does not persuade us that we misapprehended or overlooked any
`matters in doing so. Again, a request for rehearing is not an opportunity to
`reiterate arguments that were addressed in a decision and merely express
`disagreement.
`Finally, Patent Owner asserts that we were “mistaken to rule that
`Patent Owner could not submit a declaration with its Sur-Reply.” Req.
`Reh’g 14–15. This assertion is late, given that our ruling in that regard was
`entered on July 6, 2017. See Paper 28; 37 C.F.R. § 42.71(d)(1) (“Any
`request [for rehearing] must be filed . . . [w]ithin 14 days of the entry of a
`non-final decision . . . .”). Further, and as explained in our July 6, 2017,
`Order, after hearing from both parties during a conference call, we
`authorized Patent Owner to file a sur-reply in response to Petitioner’s Reply,
`and set a word count for the sur-reply that corresponded to the length of the
`portion of Petitioner’s Reply to which Patent Owner objected. Paper 28.
`We did not authorize additional evidence to be filed with the Sur-Reply,
`given the late stage of the proceeding. Id. at 3 (explaining that “[a] new
`declaration filed by Patent Owner, for instance, would require the
`opportunity for cross-examination and potentially further substantive
`briefing from Petitioner and/or motions for observations or to exclude,” and
`there was only one month left before oral argument).
`We are not persuaded that we misapprehended or overlooked any
`matters in making that decision. Patent Owner’s only stated basis for why it
`should have been permitted to file new evidence with its Sur-Reply is that
`“Petitioner and Dr. Banerjee first explained how they proposed fabricating
`
`
`
`8
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`
`IPR2016-01246
`Patent 7,126,174 B2
`
`the claimed invention” in the Reply. Req. Reh’g 15. We disagree that doing
`so was a requirement to demonstrate the obviousness of the challenged
`claims, for the reasons explained above. Regardless, though, we evaluated
`Patent Owner’s arguments in the Sur-Reply and explained why we did not
`find them persuasive in light of all of the contrary evidence submitted by
`Petitioner. See Dec. 26–38, 52–58.
`Based on the foregoing discussion, we determine that Patent Owner
`has not demonstrated that we misapprehended or overlooked any matters in
`the Decision as required by 37 C.F.R. § 42.71(d).
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s Request for Rehearing is denied.
`
`
`
`
`9
`
`
`
`IPR2016-01246
`Patent 7,126,174 B2
`
`PETITIONER TAIWAN SEMICONDUCTOR MANUFACTURING
`COMPANY, LTD.:
`
`Darren M. Jiron
`E. Robert Yoches
`J. Preston Long
`Joshua L. Goldberg
`Stephen E. Kabakoff
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`darren.jiron@finnegan.com
`bob.yoches@finnegan.com
`jp.long@finnegan.com
`joshua.goldberg@finnegan.com
`stephen.kabakoff@finnegan.com
`
`
`PETITIONER GLOBALFOUNDRIES U.S. INC.:
`
`Kent Cooper
`LAW OFFICE OF KENT J. COOPER
`kent.cooper@kjcooperlaw.com
`
`Adam Floyd
`DORSEY & WHITNEY LLP
`floyd.adam@dorsey.com
`
`
`PATENT OWNER:
`
`Neil F. Greenblum
`Michael J. Fink
`Arnold Turk
`GREENBLUM & BERNSTEIN, P.L.C.
`ngreenblum@gbpatent.com
`mfink@gbpatent.com
`aturk@gbpatent.com
`
`
`
`
`
`10
`
`
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