UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ADVANCED MICRO DEVICES, INC.
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`Petitioner,
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`v.
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`AQUILA INNOVATIONS INC.
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`Patent Owner.
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`Case IPR2019-01525
`Patent 6,239,614
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`INTRODUCTION .......................................................................................... 1
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`THE PETITION NEVER MAPS THE CLAIMS TO THE ALLEGED
`PRIOR ART UNDER ITS PROPOSED CONSTRUCTIONS ...................... 2
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`A.
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`B.
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`Petitioner Never Applies Its Claim Construction Of “Unit
`Cells” To The References .................................................................... 3
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`Petitioner Asks The Board To Apply A Claim Construction
`That It Expressly States Is Wrong ........................................................ 5
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`III. CLAIM CONSTRUCTION ........................................................................... 6
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`A.
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`B.
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`“Unit Cell.” ........................................................................................... 7
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`“A Unit Cell Array Comprised Of Said First And Second Unit
`Cells Laid In Array Form.” .................................................................. 9
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`IV. THE PETITION FAILS TO ESTABLISH THAT CLAIMS 1-3 ARE
`OBVIOUS OVER URANO IN VIEW OF MUTOH021 ............................. 10
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`A.
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`B.
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`The Petition Fails To Establish A Motivation To Combine
`Urano With Mutoh021 ....................................................................... 10
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`Petitioner Fails To Establish Unpatentability Under Its
`Construction Of The Term “Unit Cells.” ........................................... 14
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`V.
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`THE PETITION FAILS TO ESTABLISH THAT CLAIMS 1-3 ARE
`OBVIOUS OVER MUTOH IN VIEW OF MUTOH021 ............................ 16
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`A.
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`B.
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`C.
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`The Petition Fails To Establish A Motivation To Combine
`Mutoh And Mutoh021 ........................................................................ 17
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`Petitioner Fails To Establish Unpatentability Under Its
`Construction Of The Term “Unit Cells.” ........................................... 20
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`The Petition Fails To Show That Mutoh Discloses “A Unit Cell
`Array Comprised Of Said First And Second Unit Cells Laid In
`Array Form.” ...................................................................................... 22
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`-i-
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`TABLE OF CONTENTS
`(continued)
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`Page
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`VI. THE PETITION FAILS TO ESTABLISH THAT CLAIMS 4-5 ARE
`OBVIOUS OVER DOUSEKI IN VIEW OF RAMUS ................................ 23
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`A.
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`B.
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`Petitioner Fails To Establish A Motivation To Combine
`Douseki And Ramus ........................................................................... 24
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`Petitioner Fails To Establish Unpatentability Of Claims 4-5
`Under Its Construction Of The Term “Unit Cells.” ........................... 25
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`VII. THE BOARD LACKS AUTHORITY TO RULE ON THE
`PATENTABILITY OF THE CHALLENGED CLAIMS OF THE
`’614 PATENT ............................................................................................... 26
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`VIII. CONCLUSION ............................................................................................. 28
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`-ii-
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`
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Federal Cases
`Abbott Labs. v. Sandoz, Inc.,
`566 F.3d 1282 (Fed. Cir. 2009) ............................................................................ 8
`
`ActiveVideo Networks, Inc. v. Verizon Communs., Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .......................................................................... 14
`
`Apotex Inc. v. Wyeth LLC,
`IPR2014-00115, Paper 94, slip op. (Apr. 20, 2015) ........................................... 12
`
`Arthrex, Inc. v. Smith & Nephew, Inc.,
`2019 U.S. App. LEXIS 32613 (Fed. Cir. Oct. 31, 2019) ............................passim
`
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) .................................................................... 10, 18
`
`Dome Patent L.P. v. Lee,
`799 F.3d 1372 (Fed. Cir. 2015) .......................................................................... 11
`
`Duo Security Inc. v. Strikeforce Tech., Inc.,
`Case IPR2017-01064 (PTAB Oct. 16, 2017) ....................................................... 7
`
`Edmond v. United States,
`520 U.S. 651 (1997) ...................................................................................... 26, 27
`
`Eiko Global, LLC v. Blackbird Tech LLC,
`Case IPR2017-00980 (PTAB Sept. 1, 2017) ........................................................ 7
`
`Epistar Corp. v. ITC,
`566 F.3d 1321 (Fed. Cir. 2009) ............................................................................ 8
`
`Free Enter. Fund v. Pub. Co. Accounting Oversight Bd.,
`561 U.S. 477 (2010) ............................................................................................ 26
`
`Freytag v. Commissioner,
`501 U.S. 868 (1991) ...................................................................................... 26, 27
`
`Google Inc. v. InfoGation Corp.,
`Case IPR2017-00819 (PTAB Sept. 11, 2017) ...................................................... 7
`-iii-
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`
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`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir. 2016) ............................................................................ 1
`
`Hill-Rom Servs. v. Stryker Corp.,
`755 F.3d 1367 (Fed. Cir. 2014) ............................................................................ 9
`
`Hologic v. Enzo,
`2018 Pat. App. LEXIS 5855, *8 (PTAB April 18, 2018) ..........................passim
`
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge, Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .......................................................................... 11
`
`In re Kubin,
`561 F.3d 1351 (Fed. Cir. 2009) .......................................................................... 19
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`Lucia v. SEC,
`138 S. Ct. 2044 (2018) .................................................................................. 26, 27
`
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ............................................................................ 1
`
`Masias v. Sec’y of HHS,
`634 F.3d 1283 (Fed. Cir. 2011) .................................................................... 26, 27
`
`In re NuVasive, Inc.,
`842 F.3d 1376 (Fed. Cir. 2016) .......................................................................... 17
`
`Pacing Techs., LLC v. Garmin Int’l, Inc.,
`778 F.3d 1021 (Fed. Cir. 2015) ............................................................................ 8
`
`PersonalWeb Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ...................................................................... 14, 18
`
`Schlumberger Tech. Corp. v. EnerPol, LLC,
`Case IPR2018-00077 (PTAB Apr. 25, 2018) ....................................................... 7
`
`In re Stepan Co.,
`868 F.3d 1342 (Fed. Cir. 2017) .......................................................................... 19
`
`Stryker Corp. v. Karl Storz Endoscopy America, Inc.,
`IPR2015-00764, Paper 13, slip op. (Sept. 2, 2015) ............................................ 25
`
`-iv-
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`TQ Delta, LLC v. Cisco Sys.,
`2019 U.S. App. LEXIS 34865 (Fed. Cir. Nov. 22, 2019) .................................. 12
`
`TRW Automotive U.S. LLC v. Magna Electronics, Inc.,
`IPR2015-00972, Paper 9, slip op. ....................................................................... 25
`
`United Patents, Inc. v. Uniloc Luxembourg S.A.,
`Case IPR2018-00057 (PTAB May 11, 2018) ....................................................... 7
`
`Volkswagen Grp. of Am., Inc. v. Velocity Patent LLC,
`IPR2015-00276, Paper 8, slip op. (PTAB Jun. 1, 2015) .................................... 11
`
`WMS Gaming, Inc. v. Int’l Game Tech.,
`184 F.3d 1339 (Fed. Cir. 1999) .......................................................................... 11
`
`Federal Statutes
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`35 U.S.C. § 282(b) ..................................................................................................... 6
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`35 U.S.C. § 313 .......................................................................................................... 1
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`Patent Act ................................................................................................................. 27
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`Regulations
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`37 C.F.R. § 42.100 ..................................................................................................... 6
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`37 C.F.R. § 42.104(b)(3)-(4) ........................................................................ 15, 20, 25
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`37 C.F.R. § 42.107 ..................................................................................................... 1
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`Other Authorities
`IEEE Journal of Solid-State Circuits,
`Vol. 30, No. 8, 847-854 (1995) .................................................................. 2, 4, 21
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`-v-
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`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107, Patent Owner Aquila
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`Innovations Inc. (“Patent Owner”) submits this preliminary response and
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`respectfully requests that the Board deny the petition for inter partes review
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`submitted by Petitioner Advanced Micro Devices, Inc. (“Petitioner”).
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`I.
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`INTRODUCTION.
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`“In an IPR, the petitioner has the burden from the onset to show with
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`particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid
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`Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). “[T]hat burden never shifts to
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`the patentee.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375 (Fed. Cir.
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`2016) (citation omitted).
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`United States Patent No. 6,239,614 (the “’614 Patent”) is directed generally
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`to an improved semiconductor integrated circuit layout that utilizes MOS
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`transistors of varying threshold-voltages, described in the ’614 Patent as a
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`Multithreshold-Voltage CMOS or MTCMOS. See ’614 patent, col. 1, lines 26-27.
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`The MTCMOS consumes less power than conventional semiconductor integrated
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`circuits because it can operate at a lower voltage when active and leaks less power
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`current when it is inactive. Patent Owner has asserted the ’614 Patent against
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`Petitioner in the United States District Court for the Western District of Texas.
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`Petition at 4. Petitioner contends that Claims 1-3 of the ’614 patent are
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`-1-
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`unpatentable as obvious over Urano1 in view of Mutoh021,2 that Claims 1-3 are
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`unpatentable as obvious over Mutoh3 in view of Mutoh021, and that Claims 4-5 are
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`obvious over Douseki4 in view of Ramus.5 Petition at 6.
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`The Petition should be denied. Petitioner and its expert fail to carry their
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`burden to show that the challenged claims of the ’614 Patent are unpatentable.
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`II. THE PETITION NEVER MAPS THE CLAIMS TO THE ALLEGED
`PRIOR ART UNDER ITS PROPOSED CONSTRUCTIONS
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`The Board should deny the Petition for at least two reasons that do not
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`require the Board to assess the merits of the case. First, regarding Grounds 1-3,
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`Petitioner never applies its construction of the term “unit cells” to the asserted
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`references. Second, regarding Grounds 2-3, Petitioner asks the Board to apply a
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`claim construction that it expressly states is inaccurate. These failings provide
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`independent bases for denying the Petition in its entirety.
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`1 Japanese Patent Publication No. H10125878 to Masami Urano (“Urano”)
`2 Japanese Patent Publication No. H0818021 to Shin’ichiro Mutoh et al.
`(“Mutoh021”).
`3 Mutoh et al., “1-V Power Supply High-S peed Digital Circuit Technology with
`Multithreshold-Voltage CMOS,” IEEE Journal of Solid-State Circuits, Vol. 30,
`No. 8, 847-854 (1995) (“Mutoh”).
`4 U.S. Patent No. 5,486,774 to Douseki et al. (“Douseki”).
`5 U.S. Patent No. 5,631,492 to Ramus et al. (“Ramus”).
`-2-
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`A.
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`Petitioner Never Applies Its Claim Construction Of “Unit Cells”
`To The References.
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`“A petition for an inter partes review must ‘[p]rovide a statement of the
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`precise relief requested for each claim challenged,’ which ‘statement must identify
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`. . . [h]ow the challenged claim is to be construed’ and ‘[h]ow the construed claim
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`is unpatentable.’” Hologic v. Enzo, 2018 Pat. App. LEXIS 5855, *8 (PTAB April
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`18, 2018) (citing 37 C.F.R. § 42.104(b)(3)-(4)). Petitioner asserts that “unit cells”
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`should be construed as “semiconductor integrated circuits implemented by a gate
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`array system, cannot be a conventional standard cell.” Petition at 16. In each of
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`Grounds 1-3, Petitioner does not attempt to demonstrate unpatentability under its
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`own construction of “unit cells.”
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`In Ground 1, it is not clear on what construction of “unit cells” Petitioner
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`relies, but it is not its own. Petitioner states that Urano’s first basic cells 31 and
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`second basic cells 39 disclose the first and second unit cells taught by claim 1 of
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`the ’614 Patent. Id. at 42-46. But at no point does Petitioner explain how Urano’s
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`basic cells constitute “semiconductor integrated circuits implemented by a gate
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`array system, cannot be a conventional standard cell” as would be required under
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`Petitioner’s claim construction.
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`In Ground 2, Petitioner again does not mention its construction of “unit
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`cells,” but instead states, without explanation, that “Mutoh discloses a plurality of
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`first unit cells . . . under the claim construction advanced by the Patent Owner in
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`-3-
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`litigation for the term ‘unit cells’—‘an arrangement of first and second unit cells,
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`not necessarily in a regular arrangement or pattern.” See id. at 65. This definition,
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`however, is the construction Patent Owner proposed for the term “unit cell array”
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`not the term “unit cells.” Petitioner goes on to assert that Mutoh teaches low
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`threshold logic gates that disclose the ’614 Patent’s first unit cells, and a high
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`threshold flip-flop circuit that discloses the ’614 Patent’s second unit cells. Id.
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`65-69. Petitioner does not explain how Mutoh’s logic gates and flip-flop circuit
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`constitute “semiconductor integrated circuits implemented by a gate array system,
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`cannot be a conventional standard cell” as would be required under Petitioner’s
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`claim construction. Notably, Petitioner’s construction precludes its reliance on
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`Mutoh, which teaches a conventional standard cell system, not a gate array system.
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`See Mutoh, EX1005, Abstract (“In addition, an MTCMOS standard cell library has
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`been developed so that conventional CAD tools can be used to lay out low-voltage
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`LSI’s. To demonstrate MTCMOS’s effectiveness, a PLL LSI based on standard
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`cells was designed as a carrying vehicle.”). Petitioner also does not apply Patent
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`Owner’s construction of “unit cell array,” or either of the two constructions of
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`“unit cells” Patent Owner proposed in district court: “logic elements of which a
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`unit cell array is comprised” or “logic elements that perform Boolean or storage
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`functions.”
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`-4-
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`In Ground 3, Petitioner again fails to mention its construction of “unit cells,”
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`and again aims at Patent Owner’s district court construction of “unit cell array,”
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`instead of Patent Owner’s proposed construction of “unit cells.” Petition at 86-87.
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`Petitioner states that “Douseki does not explicitly disclose that the first and second
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`capacitors (e.g., C1, C2) are constructed by connecting MOS transistors placed
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`within unit cells in array form. However, Ramus teaches the use of MOS
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`transistors in a standard cell array to form capacitors between power supply lines.”
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`Id. at 88 (citing Declaration of Dr. Holberg (“Holberg Decl.”), EX1003, ¶225).
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`Here, Petitioner appears to be substituting unit cells for standard cells, an assertion
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`that directly conflicts with Petitioner’s “unit cells” construction, which states
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`“cannot be a conventional standard cell.” Petitioner’s refusal to apply its own “unit
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`cell” construction or the Patent Owner’s correct district court-construction, along
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`with Petitioner’s disregard of its own “unit cell” construction, render the Petition
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`deficient on its face. The Petition should be denied.
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`B.
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`Petitioner Asks The Board To Apply A Claim Construction That
`It Expressly States Is Wrong.
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`The PTAB requires that the petitioner “advocate unpatentability under a
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`claim construction it consider[s] to be correct.” Hologic, 2018 Pat. App. LEXIS
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`5855, at *9. In Ground 2 and 3, Petitioner asserts that ’614 Patent is unpatentable
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`using Patent Owner’s construction of “unit cells.” Petitioner, however, explicitly
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`rejects Patent Owner’s construction of “unit cells” in the Petition. See Petition at
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`-5-
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`18 (“In the pending litigation, the Patent Owner has proposed a construction of
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`‘logic elements of which a unit cell array is comprised’ for the term ‘unit cells.’
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`However, this construction fails to provide clarity to the term, is inaccurate, and
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`fails to account for the specification’s distinction between unit cells and standard
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`cells as explained by Dr. Holberg.”) (citations omitted). “Because the Petition does
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`not map the challenged claims, as Petitioner considers them to be correctly
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`construed, to the asserted prior art, there is not a reasonable likelihood that
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`Petitioner would prevail with respect to any challenged claim” of Grounds 1, 2 or
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`3. See Hologic, 2018 Pat. App. LEXIS 5855, at *9-10.
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`III. CLAIM CONSTRUCTION.
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`Claims in an inter partes review proceeding “shall be construed using the
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`same claim construction standard that would be used to construe the claim in a
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`civil action under 35 U.S.C. § 282(b), including construing the claim in accordance
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`with the ordinary and customary meaning of such claim as understood by one of
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`ordinary skill in the art and the prosecution history pertaining to the patent.” 37
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`C.F.R. § 42.100.
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`Petitioner asserts that six terms require construction: “unit cells”; “a unit cell
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`array comprised of said first and second unit cells laid in array form”; “a power
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`switch”; “a power switch disposed around said unit cell array and comprised of a
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`plurality of third MOS transistors”; “a plurality of input/output circuits disposed
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`-6-
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`around said unit cell array”; and “parts of said power switch disposed within said
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`unit cell array.” Petitioner, however, does not apply several of its proposed
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`constructions under its asserted grounds, and the constructions it does apply are
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`incorrect. Because the Petition depends on unclear or incorrect constructions, the
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`Board should deny the Petition, as it routinely does in cases where the Petition
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`relies on incorrect claim constructions. See, e.g., Schlumberger Tech. Corp. v.
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`EnerPol, LLC, Case IPR2018-00077 (PTAB Apr. 25, 2018) (Paper 16, 6–17);
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`United Patents, Inc. v. Uniloc Luxembourg S.A., Case IPR2018-00057 (PTAB May
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`11, 2018) (Paper 9, 3–8); Duo Security Inc. v. Strikeforce Tech., Inc., Case
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`IPR2017-01064 (PTAB Oct. 16, 2017) (Paper 7, 6–11); Google Inc. v. InfoGation
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`Corp., Case IPR2017-00819 (PTAB Sept. 11, 2017) (Paper 16, 7–14, 17–19, 21–
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`22); Eiko Global, LLC v. Blackbird Tech LLC, Case IPR2017-00980 (PTAB Sept.
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`1, 2017) (Paper 16, 5–36).
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`A.
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`“Unit Cell.”
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`Petitioner asserts that “unit cells” should be construed as “semiconductor
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`integrated circuits implemented by a gate array system, cannot be a conventional
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`standard cell.” Petition at 16. Petitioner’s construction is a transparent and
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`improper effort to import a limitation from the specification into the claims.
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`Specifically, Petitioner’s construction imports one of the stated objectives of the
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`’614 Patent: “[I]t is therefore an object of the present invention to implement the
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`-7-
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`layout of a semiconductor integrated circuit device by a gate array system, thereby
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`shortening a manufacturing period thereof as compared with the conventional
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`standard cell system.” Id. at 17 (citing ’614 patent, col. 2, lines 3-7). Petitioner’s
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`focus on one of the stated objects of the invention is misplaced in claim
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`construction. “The characterization of a feature as ‘an object’ or ‘another object,’
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`or even as a ‘principal object,’ will not always rise to the level of disclaimer.”
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`Pacing Techs., LLC v. Garmin Int’l, Inc., 778 F.3d 1021, 1025 (Fed. Cir. 2015).
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`Furthermore, “[a] patentee’s discussion of the shortcomings of certain techniques
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`is not a disavowal of the use of those techniques in a manner consistent with the
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`claimed invention.” Epistar Corp. v. ITC, 566 F.3d 1321, 1335 (Fed. Cir. 2009).
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`Petitioner also cites Figure 3 to bolster its gate array construction, which the
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`’614 Patent describes as “one example of the unit cells shown in FIG. 1 according
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`to a configuration of a semiconductor integrated circuit device of the present
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`invention.” Id. at 17-18 (citing ’614 patent, col. 3, lines 8-11). But “[w]hen the
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`specification describes a single embodiment to enable the invention, this court will
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`not limit broader claim language to that single application ‘unless the patentee has
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`demonstrated a clear intention to limit the claim scope using 'words or expressions
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`of manifest exclusion or restriction.’” Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282,
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`1288 (Fed. Cir. 2009) (citations omitted). The fact that Petitioner’s cited example
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`does not constitute “words or expressions of manifest exclusion or restriction” is
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`-8-
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`made clear by the next passage of the ’614 Patent cited by Petitioner: “Since the
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`layout of the MTCMOS 10 can be implemented in accordance with a gate array
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`system in the present embodiment, a manufacturing period can be shortened as
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`compared with the conventional standard cell system.” Petition at 18 (citing ’614
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`patent, col. 3, lines 51-54). The specification thus explains that in the first
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`embodiment, “the MTCMOS 10 can be implemented in accordance with a gate
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`array system,” not that it “is implemented” or “must be implemented.”
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`B.
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`“A Unit Cell Array Comprised Of Said First And Second Unit
`Cells Laid In Array Form.”
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`Petitioner asserts that the term “a unit cell array comprised of said first and
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`second unit cells laid in array form” should be construed as “a plurality of said first
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`and second unit cells laid in a regular arrangement or pattern.” Petition at 19.
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`Focusing on a single part of that larger construction, Petitioner thus asks the Board
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`to define “laid in array form” as “laid in a regular arrangement or pattern.” In
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`support of its proposal, Petitioner cites a selectively edited non-technical dictionary
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`definition of “array.” Id. at 19. Petitioner does not state that this definition is
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`consistent with how a person of ordinary skill in the art would understand the term,
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`or explain why resort to extrinsic evidence is necessary. See Hill-Rom Servs. v.
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`Stryker Corp., 755 F.3d 1367, 1373 (Fed. Cir. 2014) (“[T]o deviate from the plain
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`and ordinary meaning of a claim term to one of skill in the art, the patentee must,
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`with some language, indicate a clear intent to do so in the patent. And there is no
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`-9-
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`such language here.”). There is no clear indication in the intrinsic record that the
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`patentee intended the term “laid in array form” to be limited to a “regular
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`arrangement or pattern.” Petitioner’s construction should be rejected.
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`IV. THE PETITION FAILS TO ESTABLISH THAT CLAIMS 1-3 ARE
`OBVIOUS OVER URANO IN VIEW OF MUTOH021.
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`In Ground 1, Petitioner challenges the validity of claims 1-3 based on a
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`combination of Urano and Mutoh021. Petitioner does not explain why one of
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`ordinary skill in the art would be motivated to modify Urano to implement the
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`design taught by Mutoh021. Petitioner also makes no effort to establish that claims
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`1-3, as construed by Petitioner, are obvious over Urano in view of Mutoh021.
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`Instead, Petitioner abandons its proposed construction of the crucial term “unit
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`cells,” in favor of an undefined construction.
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`A. The Petition Fails To Establish A Motivation To Combine Urano
`With Mutoh021.
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`“[O]bviousness concerns whether a skilled artisan not only could have made
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`but would have been motivated to make the combinations or modifications of prior
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`art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d
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`1064, 1073 (Fed. Cir. 2015). The Petition asserts that one of ordinary skill in the
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`art “would have been motivated to combine Mutoh021’s teaching of placing power
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`switch MOSFETs that encircle a unit cell array with the unit cell array of Urano.”
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`Petition at 35 (citing EX1003, ¶114). Petitioner, however, never explains why a
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`-10-
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`POSITA at the time would have been motivated to modify Urano to adopt
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`Mutoh021’s design. This failure is fatal to the Petition’s challenges based upon the
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`combination of Urano and Mutoh021.
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`“When an obviousness determination relies on the combination of two or
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`more references, there must be some suggestion or motivation to combine the
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`references.” WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1355 (Fed.
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`Cir. 1999); see also Dome Patent L.P. v. Lee, 799 F.3d 1372, 1380 (Fed. Cir. 2015)
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`(“If all elements of a claim are found in the prior art, as is the case here, the
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`factfinder must further consider the factual questions of whether a person of
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`ordinary skill in the art would be motivated to combine those references, and
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`whether in making that combination, a person of ordinary skill would have had a
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`reasonable expectation of success.”). Intelligent Bio-Systems, Inc. v. Illumina
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`Cambridge, Ltd., 821 F.3d 1359, 1368 (Fed. Cir. 2016) “An invention ‘composed
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`of several elements is not proved obvious merely by demonstrating that each of its
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`elements was, independently, known in the prior art.’” Volkswagen Grp. of Am.,
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`Inc. v. Velocity Patent LLC, IPR2015-00276, Paper 8, slip op. at 10 (PTAB Jun. 1,
`
`2015) (quoting KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). “A party
`
`that petitions the Board for a determination of obviousness must show that ‘a
`
`skilled artisan would have been motivated to combine the teachings of the prior art
`
`references to achieve the claimed invention, and that the skilled artisan would have
`
`-11-
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`

`

`
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`had a reasonable expectation of success in doing so.’” Apotex Inc. v. Wyeth LLC,
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`IPR2014-00115, Paper 94, slip op. at 11 (Apr. 20, 2015) (quoting Procter &
`
`Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009)).
`
`Petitioner asserts that Mutoh021 teaches a power switch layout similar to
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`Urano, and cites paragraph 35 of Mutoh021 to argue that this layout is
`
`advantageous. Petition at 36-38. But paragraph 35, quoted in full below, says
`
`nothing about power switch layout.
`
`In the present invention, a cell array composed of second
`basic cells having high threshold voltage field effect
`transistors is arranged adjacent to a cell array composed
`of first basic cells having low threshold voltage field
`effect transistors. As a result, a MT-CMOS circuit using
`high threshold voltage transistors and low threshold
`voltage transistors can be realized on a single LSI chip
`without reducing the cell utilization rate.
`
`Paragraph 35 is also the sole support Petitioner’s expert cites to conclude
`
`that it would have been “obvious to a POSA to modify the layout of Urano to
`
`arrange the power switch cells to encircle the cell array as explicitly taught by
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`Mutoh021 to achieve this advantage.” Holberg Declaration, EX1003, ¶119; see
`
`also Petition at 38. Because it fails to address power switch layout, paragraph 35
`
`fails to provide support for the Petition’s contentions.
`
`Petitioner next explains that one of ordinary skill could combine Urano and
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`Mutoh021, but “not that they would have been motivated to do so.” See TQ Delta,
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`LLC v. Cisco Sys., 2019 U.S. App. LEXIS 34865, at *13 (Fed. Cir. Nov. 22, 2019)
`-12-
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`
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`(emphasis in original). Petitioner states that because “layout design using standard
`
`computer-aided design (CAD) software for semiconductor IC circuit devices was
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`well-known by 1999,” it would have been “routine to position Urano’s power
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`switch cells to be around the cell array or around and within the cell array as
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`explicitly taught by Mutoh021 using well-known standard CAD software.” Petition
`
`at 38. Petitioner then asserts that “design considerations (e.g., performance and
`
`parasitics) for selecting an appropriate layout for semiconductor IC circuit devices
`
`were well-known before 1999.” Id. at 39. Because “design considerations . . . were
`
`well-known,” the petitioner concludes that “[a] POSA would have thus clearly
`
`understood how to adapt the layout design of an IC, such as an MTCMOS gate
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`array, using well-known layout designs on known design considerations to achieve
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`a low voltage, high-speed operation.” Id. at 40 (citing Holberg Decl., EX1003,
`
`¶126). Petitioner then concludes that “a POSA would have been motivated to place
`
`the power switch cells of Urano on all four sides of the cell array or on all four
`
`sides of the cell array and within the cell array to achieve design efficiencies of
`
`reduced noise and voltage drops due to parasitic resistance.” Id. at 40 (citing
`
`EX1025, 295; EX1017, 141; and Holberg Decl., EX1003, ¶127). Critically,
`
`Petitioner does not assert that the design of Urano suffers from “noise and voltage
`
`drops due to parasitic resistance” or explain why Urano specifically would benefit
`
`from the design efficiencies that the Petition asserts are taught by Mutoh021.
`
`-13-
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`

`
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`Petitioner’s argument “seems to say no more than that a skilled artisan, once
`
`presented with the two references, would have understood that they could be
`
`combined. And that is not enough: it does not imply a motivation to pick out those
`
`two references and combine them to arrive at the claimed invention.” See
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`PersonalWeb Techs., LLC v. Apple, Inc., 848 F.3d 987, 993-94 (Fed. Cir. 2017)
`
`(emphasis in original) (citing Belden Inc., 805 F.3d at 1073; InTouch Techs., Inc. v.
`
`VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). See also
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`ActiveVideo Networks, Inc. v. Verizon Communs., Inc., 694 F.3d 1312, 1327 (Fed.
`
`Cir. 2012) (“The expert failed to explain how specific references could be
`
`combined, which combination(s) of elements in specific references would yield a
`
`predictable result, or how any specific combination would operate or read on the
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`asserted claims. Rather, the expert's testimony on obviousness was essentially a
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`conclusory statement that a person of ordinary skill in the art would have known,
`
`based on the ‘modular" nature of the claimed components, how to combine any of
`
`a number of references to achieve the claimed inventions. This is not sufficient and
`
`is fraught with hindsight bias.”) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`
`418 (2007)).
`
`B.
`
`Petitioner Fails To Establish Unpatentability Under Its
`Construction Of The Term “Unit Cells.”
`
`As discussed above, Petitioner was required to set forth constructions of
`
`each challenged claim, and adequately explain how the construed claim is
`
`-14-
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`
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`unpatentable. See 37 CFR § 42.104(b)(3-4) (“The statement must identify . . .
`
`[h]ow the challenged claim is to be construed” and “[h]ow the construed claim is
`
`unpatentable under the statutory grounds identified.”). Petitioner construed the
`
`term “unit cells” as “semiconductor integrated circuits implemented by a gate array
`
`system, cannot be a conventional standard cell.” Petition at 16. The term “unit
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`cells” appears in claim 1 elements 1[B], 1[C], and 1[D]:
`
`a plurality of first unit cells each including a
`plurality of first MOS transistors, each of the first MOS
`transistors having a first threshold voltage;
`
` a
`
` plurality of second unit cells each including a
`plurality of second MOS transistors, each of the second
`MOS transistors having a second threshold voltage;
`
` a
`
` unit cell array comprised of said first and second
`unit cells laid in array form;
`
`Petitioner also construed the term “unit cell array” as “a plurality of said first and
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`second unit cells laid in a regular arrangement or pattern.” Petition at 19. The term
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`“unit cell array” incorporates the term “unit cells,” which, as discussed above,
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`Petitioner asserts should be construed as “semiconductor integrated circuits
`
`implemented by a gate array system, cannot be a conventional standard cell.” Id. at
`
`16. The term “unit cell array” appears in claim 1 elements 1[D], 1[E], and 1[F]:
`
`-15-
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`

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`a unit cell array comprised of said first and
`second unit cells laid in array form;
`
` a
`
` power switch disposed around said unit cell
`array and comprised of a plurality of third MOS
`transistors, each of the third MOS transistors having the
`second threshold voltage; and
`
` a
`
`