Trial@uspto.gov
`571-272-7822
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` Paper 8
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` Entered: April 14, 2017
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`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 IPR2016-01510
`Patent RE40,264 E
`____________
`
`
`
`Before MICHAEL R. ZECHER, CHRISTOPHER L. CRUMBLEY, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`
`ZECHER, Administrative Patent Judge.
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`
`
`
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`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
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`571-272-7822
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` Paper 8
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`
`
` Entered: April 14, 2017
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`
`
`
`
`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 IPR2016-01510
`Patent RE40,264 E
`____________
`
`
`
`Before MICHAEL R. ZECHER, CHRISTOPHER L. CRUMBLEY, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`
`ZECHER, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`IPR2016-01510
`Patent RE40,264 E
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`I. INTRODUCTION
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`Petitioner, Samsung Electronics Co., Ltd. (“Samsung”), timely filed a
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`Request for Rehearing under 37 C.F.R. § 42.71(d). Paper 7 (“Req. Reh’g”).
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`Samsung’s Request for Rehearing seeks reconsideration of the Decision
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`Denying Institution of inter partes review of claims 13–26, 64, and 65 of
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`U.S. Patent No. RE40,264 E (Ex. 1001, “the ’264 patent”). Paper 6
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`(“Dec.”).
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`In its Request for Rehearing, Samsung contends that our
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`determination not to institute an inter partes review is improper for at least
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`two reasons. First, Samsung argues that we misapprehended or overlooked
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`that Incropera’s equation 5.6 may be used to select thermal mass. Req.
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`Reh’g 2–4. Second, Samsung argues that we misapprehended or overlooked
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`that it relied upon the combined teachings of Incropera and Okada I to
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`account for “the thermal mass of the substrate holder is selected for a
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`predetermined temperature change within a specific interval of time during
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`processing,” as recited in independent claim 13. Id. at 4–6.
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`As we explain below, we have considered the arguments presented by
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`Samsung in its Request for Rehearing, but we discern no reason to modify
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`the Decision Denying Institution. As a consequence, we deny Samsung’s
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`Request for Rehearing.
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`
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`II. STANDARD OF REVIEW
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`A party requesting rehearing bears the burden of showing that the
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`decision should be modified. 37 C.F.R. § 42.71(d). The party must identify
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`specifically all matters we misapprehended or overlooked, and the place
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`where each matter was addressed previously in a motion, an opposition, or a
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`2
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`IPR2016-01510
`Patent RE40,264 E
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`reply. Id. When rehearing a decision on a petition, we review the decision
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`for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion
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`may be indicated if a decision is based on an erroneous interpretation of law,
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`if a factual finding is not supported by substantial evidence, or if the
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`decision represents an unreasonable judgment in weighing relevant factors.
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`Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005);
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`Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re
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`Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). With this in mind, we
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`address the arguments presented by Samsung in turn.
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`
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`III. ANALYSIS
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`A. We Did Not Misapprehend or Overlook the Purported Implications of
`Incropera’s Equation 5.6
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`Samsung contends that, in the Decision Denying Institution, we
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`misapprehended or overlooked that Incropera’s equation 5.6 may be used to
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`“select” thermal mass by filling in the temperature and time values in this
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`equation. Req. Reh’g 3 (citing Paper 1 (“Pet.”), 28; Ex. 1002 (Declaration
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`of Dr. Stanley Shanfield) ¶ 62). According to Samsung, Incropera does not
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`stand simply for the proposition that the thermal mass affects a change in
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`temperature, but rather one of ordinary skill in the art would have
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`understood that, for a certain desired temperature and time change, the
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`precise thermal mass would have been selected using Incropera’s equation
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`5.6. Id. (citing Pet. 30, Ex. 1002 ¶ 62).
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`
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`Contrary to Samsung’s assertion, Incropera does not state explicitly
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`that equation 5.6 may be used to select thermal mass. Instead, Incropera
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`merely states that “[e]quation 5.6 may be used to compute the temperature
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`3
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`IPR2016-01510
`Patent RE40,264 E
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`reached by the solid at some time t.” Ex. 1007, 228.1 To support its
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`assertion that one of ordinary skill in the art would have understood that, for
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`a certain desired temperature and time change, the precise thermal mass
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`would have been selected using Incropera’s equation 5.6, we recognize that
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`Samsung directs us to the testimony of its declarant, Dr. Shanfield. Ex. 1002
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`¶ 62. This cited testimony from Dr. Shanfield, however, merely explains
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`how the selection of thermal mass that purportedly results from the use of
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`equation 5.6 applies to objects generally—not a substrate holder
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`specifically. Indeed, Samsung acknowledges in its Request for Rehearing
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`that Incropera does not disclose the “selection of thermal mass for a
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`substrate holder.” Req. Reh’g 4. We, therefore, do not agree with
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`Samsung’s argument that we misapprehended or overlooked whether a
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`person of ordinary skill in the art would have used Incropera’s equation 5.6
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`to select thermal mass and, in particular, to select the thermal mass of a
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`substrate holder.
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`B. We Did Not Misapprehend or Overlook Samsung’s Reliance on the
`Combined Teachings of Okada I and Incropera
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`Samsung contends that, in the Decision Denying Institution, we
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`misapprehended or overlooked its reliance on the combined teachings of
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`Okada I and Incropera to account for “the thermal mass of the substrate
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`holder is selected for a predetermined temperature change within a specific
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`interval of time during processing,” as recited in independent claim 13. Req.
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`Reh’g 4. Samsung argues that, although Incropera does not disclose the
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`selection of thermal mass for a substrate holder, it is the application of
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`
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`1 All references to the page numbers in Incropera are to the original page
`numbers in either the top left-hand or top right-hand corner of each page in
`Exhibit 1007.
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`4
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`IPR2016-01510
`Patent RE40,264 E
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`Incropera’s equation 5.6 to Okada I’s disclosure of changing the temperature
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`of electrode 25 from temperature A (e.g., -50º C) to temperature B (e.g., -30º
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`C) in a time period between two and ten seconds, that purportedly teaches
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`the aforementioned limitation. Id. (citing Pet. 26–27 (citing Ex. 1006 ¶¶ 16,
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`18, 19)). According to Samsung, given these parameters disclosed in Okada
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`I, as well as one of ordinarily skill in the art’s knowledge of Incropera’s
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`equation 5.6, it would have been obvious to an ordinarily skilled artisan to
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`set parameters (e.g., Ti = -50º C; T= -30º C; t = two to ten seconds) in
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`Incropera’s equation 5.6 to select the thermal mass needed for a
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`predetermined temperate change (e.g., 20º C) over a specific interval of time
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`(e.g., two to ten seconds). Id. at 4–5 (citing Pet. 32; Ex. 1002 ¶ 66).
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`Samsung’s argument in this regard still suffers from the same
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`deficiency we identify above. That is, even if we were to accept that
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`Samsung’s declarant, Dr. Shanfield, demonstrates that Incropera’s equation
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`5.6 may be used to select thermal mass, he does not explain how such a
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`selection implicates selecting the thermal mass of a substrate holder. To
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`support its assertion that the combined teachings of Okada I and Samsung
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`account for selecting the thermal mass of a substrate holder, we recognize
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`that Samsung, once again, directs us to the testimony of Dr. Shanfield.
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`Ex. 1002 ¶ 66. This cited testimony for Dr. Shanfield merely demonstrates
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`that certain elements required by independent claim 13 were known
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`independently in the prior art by explaining that, upon identifying certain
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`parameters (i.e., Okada I’s temperature A, temperature B, and time period
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`between two and ten seconds), the identified parameters may be used in
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`Incropera’s equation 5.6 in order to achieve the end result of selecting the
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`thermal mass of Okada I’s electrode 25. See id. The U.S. Supreme Court,
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`5
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`IPR2016-01510
`Patent RE40,264 E
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`however, has cautioned that an invention “composed of several elements is
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`not proved obvious merely by demonstrating that each of its elements was,
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`independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550
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`U.S. 398, 418 (2007).
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`Here, we remain unpersuaded that combining each of the elements
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`taught by Okada I and Incropera in the manner proposed by Samsung and
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`Dr. Shanfield accounts for the specific requirement of independent claim 13
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`at issue in this proceeding, which begins with selecting the thermal mass of a
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`substrate holder in order to ensure that the substrate holder changes a
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`specific temperature over a discrete period of time. See Dec. 19–20. In
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`other words, although Samsung directs us to disclosures in both Okada I and
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`Incropera regarding the concept of thermal mass, there is insufficient
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`teaching or suggestion in the current record of using the thermal mass of a
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`substrate holder as a variable to control the rate of temperature change over a
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`discrete period of time.
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`IV. CONCLUSION
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`For the foregoing reasons, Samsung has not demonstrated that we
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`abused our discretion in not instituting an inter partes review of claims 13–
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`26, 64, and 65 of the ’264 patent. In particular, Samsung has not persuaded
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`us that we misapprehended or overlooked whether a person of ordinary skill
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`in the art would have used Incropera’s equation 5.6 to select thermal mass,
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`or whether Okada I’s parameters could be used in Incropera’s equation 5.6
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`to account for “the thermal mass of the substrate holder is selected for a
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`predetermined temperature change within a specific interval of time during
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`processing,” as recited in independent claim 13.
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`6
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`IPR2016-01510
`Patent RE40,264 E
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` Accordingly, it is ORDERED that Samsung’s Request for Rehearing
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`V. ORDER
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`is DENIED.
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`7
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`IPR2016-01510
`Patent RE40,264 E
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`For PETITIONER:
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`
`Naveen Modi
`Joseph E. Palys
`Chetan R. Bansal
`Paul Hastings LLP
`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`chetanbansal@paulhastings.com
`PH-Samsung-Flamm-IPR@paulhastings.com
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`
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`For PATENT OWNER:
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`Christopher Frerking
`chris@ntknet.com
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`
`
`8
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