`
`
`
`
`
`Paper No.
`Filed: March 16, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`SAMSUNG ELECTRONICS CO., LTD.
`Petitioner
`
`v.
`
`DANIEL L. FLAMM
`Patent Owner
`
`____________________
`
`Case IPR016-01510
`Patent No. RE 40,264 E
`
`
`
`
`
`
`
`
`
`
`
`Petitioner’s Request for Rehearing
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`I.
`
`II.
`
`
`
`Case No. IPR2016-01510
`
`TABLE OF CONTENTS
`
` Page
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED .......................... 1
`
`LEGAL STANDARD ..................................................................................... 1
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ........................ 2
`
`A.
`
`B.
`
`The Decision Overlooked or Misapprehended the Teachings of
`Incropera ............................................................................................... 2
`
`The Decision Overlooked or Misapprehended the Application
`of Incropera’s Teachings to Okada I’s Teachings ................................ 4
`
`IV. CONCLUSION ................................................................................................ 6
`
`
`
`
`
`i
`
`
`
`
`
`I.
`
`
`
`Case No. IPR2016-01510
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Petitioner Samsung Electronics Co. Ltd. requests rehearing of the Patent
`
`Trial and Appeal Board’s Decision entered February 14, 2017 (Paper 6,
`
`“Decision”) denying institution of inter partes review for claims 13-26, 64, and 65
`
`(“challenged claims”) of U.S. Patent No. RE 40,264 E (“the ’264 patent”).
`
`Petitioner respectfully submits that the Board overlooked and misapprehended
`
`evidence of record when it denied institution for the challenged claims. For the
`
`reasons set forth below, Petitioner requests rehearing of the Board’s decision not to
`
`institute inter partes review of claims challenged claims.
`
`II. LEGAL STANDARD
`“A party dissatisfied with a decision may file a request for rehearing.”
`
`37 C.F.R. § 42.71(d). “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.
`
`Institution decisions are reviewed on rehearing for an abuse of discretion.
`
`See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s
`
`based on an erroneous conclusion of law or clearly erroneous factual findings,
`
`or . . . a clear error of judgment.” Apple Inc. v. DSS Technology Management, Inc.,
`
`IPR2015-00369, Paper No. 14 at 3 (August 12, 2015) (citing PPG Indus. Inc. v.
`
`Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988)).
`
`
`
`
`
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`Petitioner respectfully requests rehearing of the Board’s decision to deny
`
`Case No. IPR2016-00908
`
`institution of the challenged claims. (Decision at 21.) The Board’s sole reason for
`
`denying institution was that a feature recited in claim 13-the only independent
`
`claim at issue-was not taught by the combination of Okada I (Ex. 1006), Incropera
`
`(Ex. 1007), and Anderson (Ex. 1008). Specifically, the Decision found that Okada
`
`I in combination with Incropera and Anderson does not teach that “the thermal
`
`mass of the substrate holder is selected for a predetermined temperature change
`
`within a specific interval of time during processing,” as recited in independent
`
`claim 13. (Decision at 19-20.) However, as explained below, the Decision
`
`overlooked and misapprehended evidence of record that demonstrates that when
`
`the teachings of all three references are combined, the combination teaches the
`
`above feature recited in claim 13. Therefore, Petitioner respectfully requests that
`
`the Board reconsider its decision denying institution of the challenged claims.
`
`A. The Decision Overlooked or Misapprehended the Teachings of
`Incropera
`The Decision equated the combination set forth in the Petition here to the
`
`petitions filed by Lam, stating that “the proffered combination does not properly
`
`account” for the feature of “selecting” a thermal mass of the substrate holder for a
`
`specific rate of temperature change. (Decision at 19.) But the Decision erred in
`
`putting the teachings of Incropera in the same bucket as the references cited in
`
`2
`
`
`
`
`Lam’s petitions. (Id., “Incropera . . . stand[s] for essentially the same
`
`Case No. IPR2016-00908
`
`proposition—namely, whether a solid object is of low or high thermal mass
`
`impacts the rate at which it changes temperature.”)
`
`Specifically, the Decision overlooked or misapprehended Incropera’s
`
`disclosure that equation 5.6 can be used to “select” the thermal mass by filling in
`
`the temperature (T = desired temperature, Ti = initial temperature) and time (t =
`
`time to change from Ti to T) values in equation 5.6. (Pet. at 28; Ex. 1002 at ¶ 62.)
`
`Therefore, Incropera does not simply stand for the proposition that the thermal
`
`mass affects a change in temperature. Rather, an ordinary skilled artisan would
`
`have known based on Incropera that for a certain desired temperature change (T =
`
`desired temperature, Ti = initial temperature) and time (t = time to change from Ti
`
`to T)), the precise “thermal mass” would have to be selected using equation 5.6.
`
`(Pet. at 30, “Incropera would have suggested to one of ordinary skill in the art that
`
`if a predetermined temperature change in a predetermined amount of time is
`
`required for an object, the thermal mass of the object must be selected by the
`
`designer of the object so that the object is able to achieve the predetermined
`
`temperature change in a predetermined amount of time.”; see also Ex. 1002 at ¶
`
`63.) Because the Decision overlooked or misapprehended the above specific
`
`teachings of Incropera, the Decision appears to have overlooked how the
`
`3
`
`
`
`
`application of Incropera’s equation 5.6 to Okada I’s disclosure teaches the feature
`
`Case No. IPR2016-00908
`
`of claim 13 that was found to be missing.
`
`B.
`
`The Decision Overlooked or Misapprehended the Application of
`Incropera’s Teachings to Okada I’s Teachings
`The Decision overlooked or misapprehended that Incropera’s teachings
`
`when applied to Okada I teach that “the thermal mass of the substrate holder is
`
`selected for a predetermined temperature change within a specific interval of time
`
`during processing.” (Decision at 20, “Incropera and Anderson both demonstrate
`
`that there is a mathematical relationship between thermal mass and the rate of
`
`temperature change, these references do not disclose that it was known to select a
`
`substrate holder having a particular thermal mass based on this mathematical
`
`relationship.”) While it is certainly true that Incropera does not disclose selection
`
`of thermal mass for a substrate holder, it is the application of Incropera’s equation
`
`5.6 to Okada I’s disclosure that teaches the claimed feature and that is what the
`
`Petition relied upon, which the Decision overlooked.
`
`For instance, the Petition explained that Okada I discloses that the
`
`temperature of electrode 25 (“substrate holder”) is changed from -50°C to -30°C in
`
`“between 2 to 10 seconds,” i.e., within a “specific time interval.” (Pet. at 26, 27,
`
`citing Ex. 1006 at ¶¶[0016], [0018], [0019].) The Petition further explained that
`
`given these parameters and a skilled artisan’s knowledge of equation 5.6, it would
`
`have been obvious to a skilled artisan to set the parameters (Ti = -50°C; T = -30°C;
`
`4
`
`
`
`
`t = 2 to 10 sections) in equation 5.6 in Incropera to “select” the thermal mass
`
`Case No. IPR2016-00908
`
`needed for this temperature change of 20°C (“predetermined temperature change”)
`
`and “2 to 10” seconds (“specific interval of time”) in Okada I.
`
`For example, one of ordinary skill in the art would have
`utilized equation 5.6 in Incropera to “select” the thermal
`mass of electrode 25 in Okada I given the values of 20°C
`(“predetermined temperature change”) and “2 to 10”
`seconds (“specific interval of time”) in Okada I. (Id. at
`¶66.) That is, the combined system of Okada I,
`Incropera, and Anderson discloses or suggests selecting
`the thermal mass of electrode 25 to ensure that during the
`etching process of Okada I, electrode 25 is able to change
`from -50°C (“selected first substrate holder temperature”)
`to -30°C (“selected second substrate holder temperature”)
`in “between 2 to 10 seconds,” i.e., within a “specific time
`interval of time.” Accordingly, the combined system
`discloses the entirety of claim 13(g).
`
`(Pet. at 32; Ex. 1002 at ¶ 66.) That is, Okada I combined with Incropera and
`
`Anderson1 discloses the entire feature of “the thermal mass of the substrate holder
`
`is selected for a predetermined temperature change within a specific interval of
`
`time during processing.”
`
`
`1 Anderson was cited in the Petition as evidence of the applicability of the
`
`teachings of Incropera to Okada I. (Pet. at 30-31.)
`
`5
`
`
`
`
`
`Case No. IPR2016-00908
`
`Indeed, the Decision overlooked or misapprehended this application of
`
`equation 5.6 to Okada I’s teachings because it overlooked or misapprehended what
`
`the combination of the teachings of Okada I, Incropera, and Anderson would have
`
`disclosed or suggested to one of ordinary skill in the art. Petitioner respectfully
`
`submits that in doing so, the Decision overlooked that “an obviousness inquiry
`
`requires an ‘expansive and flexible approach.’” See KSR Int’l Co. v. Teleflex Inc.,
`
`550 U.S. 398, 419 (2007). Under a proper application of KSR, claim 13 is obvious
`
`for the reasons set forth in the Petition.
`
`IV. CONCLUSION
`For the foregoing reasons, Petitioner requests that the Board reconsider its
`
`decision not to review the challenged claims and instead institute inter partes
`
`review of claims 13-26, 64, and 65 of the ’264 patent.
`
`Dated: March 16, 2017
`
`Respectfully submitted,
`
`By: /Naveen Modi/
`Naveen Modi (Reg. No. 46,224)
`
`
`
`6
`
`
`
`
`
`
`
`Case No. IPR2016-01510
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that I caused to be served on the counsel for Patent Owner a
`
`true and correct copy of the foregoing Petitioner’s Request for Rehearing via
`
`express mail on the date below at the following counsel for Patent Owner:
`
`Christopher Frerking,
`174 Rumford Stree
`Concord, New Hampshire 03301
`
`George C. Summerfield
`Stadheim & Grear, Ltd.
`400 N. Michigan Ave.,
`Suite 2200
`Chicago, Illinois 60661
`
`A courtesy copy of the foregoing Petitioner’s Request for Rehearing was
`
`also served by electronic means on the above-listed counsel at chris@ntknet.com
`
`& summerfield@stadheimgrear.com.
`
`Respectfully submitted,
`
` /Naveen Modi/
`Naveen Modi
`Reg. No. 46,224
`Counsel for Petitioner
`
`
`
`
`
`
`
`Dated: March 16, 2017
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
