UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLIED MATERIALS, INC.,
`Petitioner
`
`v.
`
`OCEAN SEMICONDUCTOR LLC,
`Patent Owner
`
`IPR2021-01342
`Patent No. 6,968,248
`
`
`
`
`
`PATENT OWNER’S RESPONSE
`
`Under 35 U.S.C. § 42.120
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`Submitted Electronically via PTAB E2E
`
`
`

`

`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ............................................................................................... 1
`
`II. APPLICABLE LEGAL PRINCIPLES ............................................................... 3
`
`A. Obviousness Under 35 U.S.C. § 103 ............................................................. 3
`
`III. THE PETITION’S SOLE ASSERTED GROUND OF UNPATENTABILITY
`FAILS: CLAIMS 1-22 OF THE ’248 PATENT ARE NOT OBVIOUS OVER
`SCHULZE IN VIEW OF GUPTA ............................................................................ 5
`
`A. Overview of the ’248 Patent .......................................................................... 5
`
`B. Claim Construction ........................................................................................ 7
`
`C. Level of Ordinary Skill in the Art ................................................................. 7
`
`D. Neither Schulze nor Gupta Teaches or Discloses the Claimed “Software
`Scheduling Agent” as Recited in Claims 1 and 14 of the ‘248 Patent ................. 8
`
`1.
`
`2.
`
`Schulze Does Not Disclose an Integrated, Automated Process Flow .... 8
`
`Schulze Does Not Disclose a Software Scheduling Agent ................... 12
`
`3. Gupta Does Not Teach or Disclose a Software Scheduling Agent ...... 16
`
`E. Gupta Does Not Disclose an Integrated, Globally-Reactive Scheduling
`System and, Thus, Does Not Teach a Central Limitation of Claims 1 and 14 of
`the ‘248 Patent .................................................................................................... 22
`
`F. There Was No Reason for a POSITA To Combine Schulze and Gupta at
`the Time of the ’248 Patent ................................................................................. 26
`
`G. Claims 2-13 and 16-22 All Depend From Claims 1 and 14 and, Thus,
`Schulze and Gupta Do Not Teach Central Limitations of These Claims As Well
`
` ..................................................................................................................... 31
`
`IV. CONCLUSION ................................................................................................. 32
`
`
`
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`
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`
`
`i
`
`

`

`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`
`Apple Inc. v. Contentguard Holdings, Inc.,
`IPR2015-00442, Paper 9 (PTAB July 13, 2015) ................................................3, 4
`
`Comaper Corp v. Antec, Inc.,
`596 F.3d 1343 (Fed. Cir. 2010) ............................................................................ 15
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ................................................................................................... 3
`
`In re Anova Hearing Labs, Inc.,
`809 Fed. Appx. 840 (Fed. Cir. 2020) ................................................................... 31
`
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) ............................................................................ 15
`
`In re Magnum Oil Tools Int’l.,
`829 F.3d 1364 (Fed. Cir. 2016) .............................................................................. 3
`
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) .............................................................................. 5
`
`In re Omeprazole Patent Litig. v. Apotex Corp.,
`536 F.3d 1361 (Fed. Cir. 2008) .............................................................................. 4
`
`In re Stepan Co.,
`868 F.3d 1342 (Fed. Cir. 2017) .............................................................................. 4
`
`In re Suitco Surface, Inc.,
`603 F.3d 1255 (Fed. Cir. 2010) ............................................................................ 22
`
`Innogenetics, N.V. v. Abbott Labs,
`512 F.3d 1363 (Fed. Cir. 2008) ............................................................................ 31
`
`InTouch Techs., Inc. v. VGo Communs., Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) .............................................................................. 4
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................... 5
`
`ii
`
`

`

`Optimumpath, LLC v. Belkin Int’l, Inc.,
`No. C 09-01398 CW,
`2011 U.S. Dist. LEXIS 41634 (N.D. Cal. April 12, 2011) .................................. 25
`
`Ortho-McNeil Pharm. v. Mylan Labs,
`520 F.3d 1358 (Fed. Cir. 2008) .............................................................................. 4
`
`P&G v. Teva Pharms. USA, Inc.,
`566 F.3d 989 (Fed. Cir. 2009) ................................................................................ 4
`
`Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d 1352 (Fed. Cir. 2011) .............................................................................. 3
`
`Wyers v. Master Lock Co.,
`616 F.3d 1231 (Fed. Cir. 2010) ............................................................................ 15
`
`Zscaler, Inc. v. Symantec Corporation et al.,
`IPR2018-00806 (PTAB Oct. 4, 2018) .................................................................. 25
`
`Regulations
`
`37 C.F.R. § 42.120 ..................................................................................................... 1
`
`iii
`
`

`

`
`
`LIST OF EXHIBITS RELIED ON
`
`Description
`Exhibit
`2001 Ocean Semiconductor LLC v. MediaTek Inc., et al., No. 6:20-cv-1210-
`ADA, D.I. 32, Scheduling Order
`2002 Ocean Semiconductor LLC v. NVIDIA Corporation, No. 6:20-cv-1211-
`ADA, D.I. 32, Scheduling Order
`2003 Ocean Semiconductor LLC v. NXP USA, Inc., No. 6:20-cv-1212-ADA,
`D.I. 34, Scheduling Order
`2004 Ocean Semiconductor LLC v. Renesas Electronics Corp. et al., No.
`6:20-cv-1213-ADA, D.I. 43, Scheduling Order
`2005 Ocean Semiconductor LLC v. Silicon Labs Inc., No. 6:20-cv-1214-
`ADA, D.I. 31, Scheduling Order
`2006 Ocean Semiconductor LLC v. STMicroelectronics Inc., No. 6:20-cv-
`1250-ADA, D.I. 34, Scheduling Order
`2007 Ocean Semiconductor LLC v. Western Digital Techs Inc., No. 6:20-cv-
`1216-ADA, D.I. 34, Scheduling Order
`2008 Ocean Semiconductor LLC v. Huawei Device USA Inc., No. 4:20-cv-
`991-ALM, D.I. 22, Scheduling Order
`2009 Ocean Semiconductor LLC v. Western Digital Techs Inc., No. 6:20-cv-
`1216-ADA, D.I. 1, Complaint
`2010 Ocean Semiconductor LLC v. STMicroelectronics Inc., No. 6:20-cv-
`1250-ADA, D.I. 1, Complaint
`2011 Ocean Semiconductor LLC v. Silicon Labs Inc., No. 6:20-cv-1214-
`ADA, D.I. 1, Complaint
`2012 Ocean Semiconductor LLC v. Renesas Electronics Corp. et al., No.
`6:20-cv-1213-ADA, D.I. 1, Complaint
`2013 Ocean Semiconductor LLC v. NXP USA, Inc., No. 6:20-cv-1212-ADA,
`D.I. 1, Complaint
`2014 Ocean Semiconductor LLC v. NVIDIA Corporation, No. 6:20-cv-1211-
`ADA, D.I. 1, Complaint
`2015 Ocean Semiconductor LLC v. MediaTek Inc., et al., No. 6:20-cv-1210-
`ADA, D.I. 1, Complaint
`2016 Ocean Semiconductor LLC v. Huawei Device USA Inc., No. 4:20-cv-
`991-ALM, D.I. 1, Complaint
`2017 Ocean Semiconductor LLC v. Huawei Device USA Inc., No. 4:20-cv-
`991-ALM, D.I. 27, Order
`2018 Ocean Semiconductor LLC v. MediaTek Inc., et al., No. 6:20-cv-1210-
`ADA, Notice of Electronic Filing, D.I. 20
`
`iv
`
`

`

`2019 Ocean Semiconductor LLC v. Huawei Device USA Inc., No. 4:20-cv-
`991-ALM, D.I. 17, Memorandum Opinion and Order
`2020 Ocean Semiconductor LLC v. NVIDIA Corporation, No. 6:20-cv-1211-
`ADA, Notice of Electronic Filing (Text Order)
`2021 Ocean Semiconductor LLC v. Renesas Electronics Corp. et al., No.
`6:20-cv-1213-ADA, Notice of Electronic Filing, D.I. 46
`2022 Ocean Semiconductor LLC v. NVIDIA Corporation, No. 6:20-cv-1211-
`ADA, Notice of Electronic Filing, D.I. 37
`2023 Ocean Semiconductor LLC v. Renesas Electronics Corp. et al., No.
`6:20-cv-1213-ADA, D.I. 15, Rule 12(b)(6) Motion to Dismiss
`2024 Exhibit D-4 to Defendants’ Preliminary Invalidity Contentions
`2025 Exhibit D-9 to Defendants’ Preliminary Invalidity Contentions
`2026 Ryan Davis, How Texas Judges Have Kept IP Trials Moving During
`COVID, LAW360, Apr. 6, 2021, https://www.law360.com/
`articles/1372773/how-texas-judges-have-kept-ip-trials-movingduring-
`covid
`2027 Exhibit D-4 to Defendants’ Invalidity Contentions
`2028 Exhibit D-9 to Defendants’ Invalidity Contentions
`2029 Defendants’ Preliminary Invalidity Contentions
`2030 Defendants’ Invalidity Contentions
`2031 Ocean Semiconductor LLC v. NXP USA Inc., No. 6:20-cv-1212-ADA,
`D.I. 28, Opposition to Mtn for Consolidation
`2032 Ocean Semiconductor LLC v. STMicroelectronics Inc., No. 6:20-cv-
`1215-ADA, D.I. 28, Opposition to Mtn for Consolidation
`2033 Ocean Semiconductor LLC v. Silicon Labs Inc., No. 6:20-cv-1214-
`ADA, D.I. 25, Opposition to Mtn for Consolidation
`2034 Ocean Semiconductor LLC v. MediaTek Inc., et al., No. 6:20-cv-1210-
`ADA, D.I. 25, Opposition to Mtn for Consolidation
`2035 Ocean Semiconductor LLC v. Renesas Electronics Corp. et al., No.
`6:20-cv-1213-ADA, D.I. 29, Opposition to Mtn for Consolidation
`Standard Scheduling Order, United States District Court for the
`Eastern District of Texas
`2037 Lauren Berg, Google Hit With $26M Video Patent Verdict In WDTX,
`LAW360, Nov. 16, 2021, https://www.law360.com/articles/1441219
`2038 Ocean Semiconductor LLC v. Analog Devices, Inc., No. 20-12310-PBS,
`D.I. 37, Order Allowing Stay
`2039 Ocean Semiconductor LLC v. Infineon Technologies AG et al., No. 20-
`12311-PBS, D.I. 38, Order Allowing Stay
`
`2036
`
`v
`
`

`

`2040 Ocean Semiconductor LLC v. MediaTek Inc., et al., No. 6:20-cv-1210-
`ADA, D.I. 51, Claim Construction Order
`2041 Declaration of Kurt D. Humphrey
`2042 Kurt D. Humphrey C.V.
`
`
`
`
`vi
`
`

`

`Through the undersigned Counsel, Patent Owner Ocean Semiconductor LLC
`
`(“Ocean” or “Patent Owner”) submits the following Patent Owner Response
`
`pursuant to the Scheduling Order (Paper 15) and 37 C.F.R. § 42.120.
`
`I.
`
`INTRODUCTION
`
`Petitioner Applied Materials, Inc. (“AMAT” or “Petitioner”) filed a Petition
`
`for Inter Partes Review of U.S. Patent No. 6,968,248 (“the ’248 patent”) on
`
`August 3, 2021. (IPR2021-01342, Paper No. 1 (“Petition”).) On February 9,
`
`2022, the Board instituted review of the Petition. (Paper 17.)
`
`Petitioner’s asserted combination of U.S. Patent Application Publication No.
`
`2002/0116083 (“Schulze” –Ex. 1007) and U.S. Patent No. 4,888,692 (“Gupta”—
`
`Ex. 1008) does not render obvious any of the claims of the ’248 patent. First,
`
`neither Schulze nor Gupta discloses the “software scheduling agent” element of
`
`independent claims 1 and 14 of the ’248 patent—the only independent claims in
`
`the patent. Schulze does not relate to scheduling at all, while Gupta’s local
`
`scheduler does not contemplate reactive resource scheduling.
`
`Nor do either Schulze or Gupta disclose “an integrated, automated process
`
`flow” as recited in the claims of the ’248 patent.
`
`Moreover, Petitioner’s asserted ground of unpatentability, including its
`
`asserted motivation to combine the two references, can only be sustained by
`
`wholly ignoring the technological context in which the ’248 patent was developed
`
`1
`
`

`

`and the enormous obstacles that stood in the way of creating fab-wide, distributed
`
`systems for real-time scheduling. A POSITA would not have been motivated to
`
`combine localized scheduling of a single tool based on operational status and
`
`workload disclosed in Gupta with a system for monitoring tool states.
`
`In addition, as each of the dependent claims of the ’248 patent depend from
`
`either claim 1 or claim 14, they are not rendered obvious by Schulze or Gupta for
`
`at least the same reasons that claims 1 and 14 are not obvious.
`
`For all of these reasons, the Board should deny the Petition and determine
`
`that each of claims 1-22 of the ’248 patent is not unpatentable based on Petitioner’s
`
`asserted ground of unpatentability.1
`
`
`1 Patent Owner is not contesting in this proceeding that the ’402 patent is entitled
`
`to an earlier date of conception and reduction to practice, as that issue is currently
`
`contested in the parallel district court proceedings identified in Patent Owner’s
`
`Preliminary Response. Patent Owner does not intend to waive its right to assert an
`
`earlier date of conception and reduction to practice in the parallel district court
`
`proceedings.
`
`2
`
`

`

`II. APPLICABLE LEGAL PRINCIPLES
`
`A. Obviousness Under 35 U.S.C. § 103
`
`To make a prima facie showing of obviousness under 35 U.S.C. § 103, the
`
`Petition must, among other requirements, fulfill the requirements set forth in
`
`Graham v. John Deere Co., 383 U.S. 1 (1966), including demonstrating that the cited
`
`references disclose each element of a challenged claim. In re Magnum Oil Tools
`
`Int’l., 829 F.3d 1364, 1376 (Fed. Cir. 2016); see also Apple Inc. v. Contentguard
`
`Holdings, Inc., IPR2015-00442, Paper 9 at 12-13 (PTAB July 13, 2015).
`
`Petitioner also has the burden to show there would have been some motivation
`
`to combine the asserted prior art, and that the proposed combination would render
`
`the patented claims obvious. “Obviousness requires more than a mere showing that
`
`the prior art includes separate references covering each separate limitation in a claim
`
`under examination.” Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed.
`
`Cir. 2011) (internal citation omitted); see also In re Magnum Oil Tools Int’l., 829
`
`F.3d at 1376. Even if individual modifications or choices were obvious, a petition
`
`must explain why making all of the changes at once would be obvious. Apple Inc.
`
`v. Contentguard, Paper 9 at 16-17 (“[T]he mere fact that individual changes might
`
`have been obvious does not make doing all of the changes at once obvious”).
`
`The Federal Circuit has found that, even for an obviousness challenge based
`
`on a single reference in view of the knowledge and skill of a POSITA, there must be
`
`3
`
`

`

`a motivation to make the combination and a reasonable expectation that such a
`
`combination would be successful, otherwise a skilled artisan would not arrive at the
`
`claimed combination. In re Stepan Co., 868 F.3d 1342, 1345-46 (Fed. Cir. 2017).
`
`In other words, when a gap in a single prior art reference requires filling with, for
`
`example, the knowledge of one of a POSITA, there must be a further showing that
`
`the POSITA would have arrived at the claimed invention.
`
`The lack of a technological obstacle to combining references, in and of itself,
`
`does not justify a finding of obviousness. See In re Omeprazole Patent Litig. v.
`
`Apotex Corp., 536 F.3d 1361, 1380-81 (Fed. Cir. 2008). A reason for combining
`
`disparate prior art references is critical and should be made explicit. InTouch Techs.,
`
`Inc. v. VGo Communs., Inc., 751 F.3d 1327, 1351 (Fed. Cir. 2014) (internal citation
`
`omitted).
`
`Hindsight analysis is inappropriate; obviousness must be measured “at the
`
`time the invention was made.” Ortho-McNeil Pharm. v. Mylan Labs, 520 F.3d 1358,
`
`1364 (Fed. Cir. 2008) (emphasis original). A petition must demonstrate a rationale
`
`to combine prior art references without relying on the patent disclosure itself. Apple
`
`Inc. v. Contentguard, Paper 9 at 15, 17; see also P&G v. Teva Pharms. USA, Inc.,
`
`566 F.3d 989, 995 (Fed. Cir. 2009). The Petitioner must not use the patent as a
`
`roadmap for making its proposed combination. In re NTP, Inc., 654 F.3d 1279, 1299
`
`4
`
`

`

`(Fed. Cir. 2011) (internal citation omitted); see also KSR Int’l Co. v. Teleflex Inc.,
`
`550 U.S. 398, 421 (2007).
`
`III. THE PETITION’S SOLE ASSERTED GROUND OF
`UNPATENTABILITY FAILS: CLAIMS 1-22 OF THE ’248 PATENT
`ARE NOT OBVIOUS OVER SCHULZE IN VIEW OF GUPTA
`
`A. Overview of the ’248 Patent
`
`The ’248 patent relates to scheduling in an automated manufacturing
`
`environment.2 (Ex. 1001 at Abstract.) Prior to the ’248 patented invention,
`
`semiconductor manufacturers struggled to find ways to control operations in
`
`semiconductor factories, or fabs, “where numerous parts, typically 40,000 wafers or
`
`more, and numerous part types, typically 100 part types or more, are simultaneously
`
`being manufactured.” (Id. at 1:65-2:3.) A fab’s operations were rendered even more
`
`complex by the presence of “approximately 500 computer-controlled machines to
`
`perform [] wafer processing.” (Id. at 2:6-8.)
`
`
`2 As noted in the Petition (at 4), the ’248 patent issued from U.S. App. No.
`
`11/151,098, which claims priority to U.S. App. No. 10/135,145. U.S. App. No.
`
`10/135,145 issued as U.S. Patent No. 6,907,305 (the “’305 patent”). Petitioner has
`
`challenged certain claims of the ’305 patent in IPR2021-01344 based on the same
`
`combination of Schulze and Gupta.
`
`5
`
`

`

` Prior art fabs relied on Manufacturing Execution Systems (“MES”) to
`
`monitor tool status with the fab and track individual lots. (Id. at 2:26-30.) However,
`
`an MES has several drawbacks: they are passive, do not permit advance scheduling,
`
`and do not “support highly automated factory operations.” (Id. at 2:45-49.) In
`
`addition, at the time of the ’248 invention, “[c]urrent MES systems largely
`
`depend[ed] on manufacturing personnel for monitoring factory state and initiating
`
`activities at the correct time.” (Id. at 2:49-51.) Wafer fab technicians (“WFTs”)
`
`were responsible for giving commands to the MES. However, a WFT cannot keep
`
`track of every lot or tool in a fab, and it cannot easily “foresee and prevent
`
`downstream bottlenecks or shortages arising from upstream activities.” (Id. at 3:16-
`
`17.)
`
`In order to “resolv[e], or at least reduc[e]” (id. at 3:59-60) the drawbacks of
`
`the prior art, the ’248 patent discloses a method and apparatus for “agent reactive
`
`scheduling in an automated manufacturing environment.”
`
` (Id. at 1:1-3.)
`
`Specifically, claim 1 recites a method in three steps: “automatically detecting an
`
`occurrence of a predetermined event in an integrated, automated process flow” (id.
`
`at 30:42-43); “automatically notifying a software scheduling agent of the
`
`occurrence” (id. at 30:44-45); and “reactively scheduling an action from the software
`
`scheduling agent responsive to the detection of the predetermined event” (id. at
`
`30:46-48).
`
`6
`
`

`

`The ’248 patent includes a separate independent claim for “[a]n automated
`
`manufacturing environment” which also recites “a plurality of software scheduling
`
`agents . . . capable of reactively scheduling appointments in the process flow
`
`responsive to an automatic detection and notification of a plurality of predetermined
`
`events.” (Id. at claim 14.)
`
`B. Claim Construction
`
`Based on the arguments presented by Petitioner, Patent Owner does not
`
`presently believe that claim construction is necessary for the Board to determine
`
`the patentability of the ’248 patent in light of Schulze and Gupta.
`
`C. Level of Ordinary Skill in the Art
`
`Petitioner contends that a Person of Ordinary Skill in the Art (“POSITA”) at
`
`the time of the challenged invention would have at least a B.S. in computer science,
`
`mechanical engineering, electrical engineering, or a related field, and three years of
`
`experience working with automated manufacturing processes. (Pet. at 17.) Patent
`
`Owner does not dispute this definition to the extent that it encompasses a degree in
`
`materials science and notes that additional education might compensate for less
`
`experience, or vice versa. (Ex. 2041 at ¶ 30.)
`
`7
`
`

`

`D. Neither Schulze nor Gupta Teaches or Discloses the Claimed
`“Software Scheduling Agent” as Recited in Claims 1 and 14 of the
`‘248 Patent
`
`Claims 1 and 14 each recite a sophisticated “automated manufacturing
`
`environment” (preamble) comprising an “integrated, automated process flow”
`
`(Claim 1.a and Claim 14.a) and utilizing software scheduling agents for “reactive
`
`scheduling” (Claim 1.c and Claim 14.c), i.e. “capable of reactively scheduling
`
`appointments for activities in the [integrated, automated] process flow responsive to
`
`an automatic detection and notification of a plurality of predetermined events.” (Ex.
`
`2041 at ¶ 33.) As will be discussed below, neither Schulze nor Gupta, alone or in
`
`combination, teach or suggest these limitations.
`
`1.
`
`Schulze Does Not Disclose an Integrated, Automated
`Process Flow
`
`Schulze does not disclose the elements of the claimed ’248 patent scheduling
`
`system. Schulze’s application (Ex. 1007), entitled SYSTEM AND METHOD FOR
`
`AUTOMATED MONITORING AND ASSESSMENT OF FABRICATION
`
`FACILITY, is limited to basic monitoring and assessing of individual tool states,
`
`e.g., “(Unscheduled Downtime, Scheduled Downtime, Engineering Time, Standby
`
`Time, and Productive Time) which, together with Non-Scheduled Time, comprise
`
`the six basic equipment states,” (Schulze at [0008]) and reporting standard tool-
`
`related metrics or performance indicators, e.g., “the Overall Equipment Efficiency
`
`(OEE) metric and Overall Fabrication Efficiency (OFE) metric” (id. at [0011]) to a
`
`8
`
`

`

`conventional Manufacturing Execution System (MES). (Ex. 2041 at ¶ 33.)
`
`Specifically, Schulze summarizes its preferred embodiment as follows:
`
`In accordance with a first embodiment of the invention, a method for
`
`monitoring and assessing operation of a semiconductor fabrication
`
`facility comprises the steps of connecting a monitoring and assessment
`
`system to a system bus which is connected directly or indirectly to a
`
`manufacturing execution system and a plurality of semiconductor
`
`fabrication tools. . . .
`
`During operation, the state models are updated for each tool affected by
`
`one of the triggers and transitions within the state models are recorded
`
`in a tracking database.
`
`(Id. at ¶ 34.)
`
`In a second embodiment, Schulze states:
`
`[i]n another embodiment of the invention, a system for monitoring and
`
`assessing operation of a semiconductor fabrication facility for assessing
`
`overall equipment effectiveness [OEE] and overall fabrication effectiveness
`
`[OFE] comprises a monitoring and assessment system for receiving
`
`messages having equipment information therein for tracking operation states
`
`of a plurality of semiconductor fabrication tools.
`
`(Id. at ¶ 35.)
`
`Schulze makes no mention of a process flow, much less an integrated or
`
`automated process flow. (Id. at ¶ 36.) Nor does Schulze mention or allude to
`
`scheduling appointments for activities in the process flow in any context, reactively
`
`9
`
`

`

`or otherwise. (Id. at ¶ 36.) What Schulze does describe, at Figures 1-3, are “top-
`
`level diagrams illustrating examples of semiconductor fabrication systems in which
`
`an automated monitoring and assessment system incorporates features of the present
`
`invention.” (Id. at ¶ 37.) Figure 4 (reproduced below) is described as “illustrating
`
`further details of a semiconductor fabrication System in which an automated
`
`monitoring and assessment System incorporates features of the present invention.”
`
`(Id. at ¶ 38.) Figure 4 shows the individual elements of the detailed system of
`
`Schulze:
`
`(Id. at Fig. 4.)
`
`
`
`Critically, Schulze’s detailed system corresponds to only a portion of the ’248
`
`
`
`10
`
`

`

`patented system, comprising the MES 270, user interface software 250, and
`
`computing device as shown in Figure 2 of the ’248 patent below:
`
`
`
`(Ex. 1001 at Fig. 2.) Essentially, the entirety of Schulze’s detailed system as shown
`
`in Figure 4 above would correspond to the dotted line portion and MES 270 of
`
`Figure 2 from the ’248 patent. (Ex. 2041 at ¶ 40.) In other words, Schulze’s system
`
`is little more than a standards-compliant collection of data communication
`
`interfaces/buses connecting fab equipment to an MES 402 and its associated
`
`ARAMS databases. (Id. at ¶ 40.)
`
`Conversely, Figure 2 of the ’248 patent also illustrates additional key
`
`elements, most notably, Software Agent 265 and automated material handling
`
`system (AMHS) software components 280. (Id. at ¶ 41.) Unlike Schulze, which
`
`11
`
`

`

`discloses a system or method “which is connected directly or indirectly to a
`
`manufacturing execution system and a plurality of semiconductor fabrication
`
`tools.”3 (id. at [0015]), the software agents 265 of the ’248 patent are not restricted
`
`to specific tools but can consist of any manufacturing domain entity in the process
`
`flow—including work product, fab resources, or even events. (Id. at ¶ 41.)
`
`For example, “the software agents 265 each represent some ‘manufacturing
`
`domain entity,’” e.g., a lot 130, a process tool 115, a resource, a PM, or a Qual.” (Id.
`
`at ¶ 42.) Moreover, one of the specified functions of the software agents is described
`
`as follows:
`
`Of particular interest to the present invention, the software agents 265
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`reactively schedule, initiate, and execute activities on behalf of their
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`respective manufacturing domain entities. In the illustrated embodiment, the
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`software agents 265 also proactively schedule activities.
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`(Id. at ¶ 42.)
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`2.
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`Schulze Does Not Disclose a Software Scheduling Agent
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`
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`Schulze also fails to disclose or suggest any system or method that provides
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`the proactive and reactive scheduling functions of the ’248 patent. (Id. at ¶ 43.) In
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`fact, Schulze’s only reference to “schedule” in any context is with respect to specific
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`
`3 Unless otherwise noted, all emphasis in this Patent Owner’s Response has been
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`added.
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`12
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`

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`tools and their designated states, e.g., “the user may initially be presented with a list
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`of the default states as specified by the E10 and/or E58 Standards, including the
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`Productive state (and its sub-states), Standby state (and its sub-states), Engineering
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`state, Scheduled Downtime state, Unscheduled Downtime states (and its sub-states),
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`and NonScheduled state.” (Id. at ¶ 43.)
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`Petitioner’s Dr. Shanfield’s conclusion (in Section A.1 of his Declaration) that
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`Schulze’s teaching of an automated tool monitoring and assessment system
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`compatible with the E10 and E58 standards would have motivated a POSITA to
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`adopt such a system is actually irrelevant because a conventional MES of the type
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`disclosed in Schulze is only one component of the comprehensive scheduling system
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`taught and claimed by the ’248 patent. (Id. at ¶ 44.)
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`The ’248 patent has little to do with Schulze’s automated tool monitoring and
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`assessment system. (Id. at ¶ 45.) The ’248 patent only makes brief mention of tool
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`status in the BACKGROUND OF THE INVENTION stating, “An automated MES
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`enables a user to view and manipulate, to a limited extent, the status of machines and
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`tools, or ‘entities,’ in a manufacturing environment” (’248 patent at 2:28-31), and
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`this is set out in the context of a conventional MES which is widely used in the
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`industry and in and of itself is merely one component in the comprehensive
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`automated scheduling system of the ’248 patent. (Ex. 2041 at ¶ 45.)
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`13
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`

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`This fundamental distinction between the invention of the ’248 patent and the
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`tool tracking of Schulze is further explained in the ’248 patent specification which
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`states: “[a]lthough MES systems are sufficient for tracking lots and machines, such
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`systems suffer several deficiencies, the most obvious of which are their passive
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`nature, lack of advance scheduling and inability to support highly automated factory
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`operations.” (Id. at ¶ 45.) Thus, the ’248 patent teaches away from the simple MES
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`system of Schulze. (Id. at ¶ 45.)
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`The ’248 patent and its claimed invention are directed to a system and method
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`for proactive and reactive scheduling in an automated manufacturing environment,
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`and not to a tool monitoring and assessment system. (Id. at ¶ 47.) Beyond the use of
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`the term “automated” in both Schulze and the ’248 patent, the two disclosures have
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`little in common. (Id. at ¶ 47.) Therefore, it is highly unlikely that a POSITA at the
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`time of the ’248 patent filing would have connected the tool monitoring disclosure
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`of Schulze with the ’248 patent’s “AGENT REACTIVE SCHEDULING IN AN
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`AUTOMATED MANUFACTURING ENVIRONMENT” in any meaningful way.
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`The teachings of Schulze would not have led a POSITA to the critical improvements
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`claimed in the ’248 patent. (Id. at ¶ 47.)
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`Based on Schulze’s failure to disclose fundamental elements of the claimed
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`invention of the ’248 patent—including: (1) a “method for scheduling in an
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`automated manufacturing environment” (Claim 1); (2) the use of “software
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`14
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`

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`scheduling agents” (Claims 1 and 14); and (3) “software scheduling agents being
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`capable of reactively scheduling appointments for activities in the process flow”
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`(Claim 14)—there are no reasonable grounds or expectations for concluding that a
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`POSITA at the time of the ’248 patent filing would have considered Schulze as
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`relevant to the claimed inventions of the ’248 patent. (Ex. 2041 at ¶ 49.)
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`Thus, from the perspective of a POSITA at the time of the ’248 patent,
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`Schulze does not belong to the same field of endeavor as the claimed ’248
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`invention, nor is it reasonably pertinent to the problem that the ’248 invention is
`
`intended to resolve. See Wyers v. Master Lock Co., 616 F.3d 1231, 1237 (Fed. Cir.
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`2010) quoting Comaper Corp v. Antec, Inc., 596 F.3d 1343, 1351 (Fed. Cir. 2010)
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`(identifying analogous prior art as art “from the same field of endeavor, regardless
`
`of the problem addressed and . . . if the reference is not within the field of the
`
`inventor’s endeavor, whether the reference still is reasonably pertinent to the
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`particular problem with which the inventor is involved”); see also In re Bigio, 381
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`F.3d 1320, 1325–26 (Fed. Cir. 2004) (“The test for analogous art requires the PTO
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`to determine the appropriate field of endeavor by reference to explanations of the
`
`invention's subject matter in the patent application, including the embodiments,
`
`function, and structure of the claimed invention.”)
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`15
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`3. Gupta Does Not Teach or Disclose a Software Scheduling
`Agent
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`Gupta, individually or in combination with Schultze, also fails to disclose or
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`suggest many aspects of the claims of the ’248 patent. (Ex. 2041 at ¶ 50.) First, all
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`three of Gupta’s independent claims 1, 3, and 4 include either “controlling the
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`operation of a machine” (Claims 1 and 3) or “controlling operation of a plurality of
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`machines” (Claim 4). (Id. at ¶ 50.) Therefore, although Gupta discloses a real-
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`time scheduling system and method, the claims of Gupta would have suggested to a
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`POSITA that the scope of the teachings of Gupta are primarily limited to local
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`machine scheduling. (Id. at ¶ 50.) More specifically, Gupta states:
`
`The real-time portion of the scheduling system depends on local
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`optimization to function efficiently. Instead of recalculating the
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`complete global state for the system each time a decision must be
`
`made, only the relevant local state is recalculated. This greatly
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`decreases the processor load.
`
`(Id. at ¶ 50 citing Ex. 1008 at 13:43-48.)
`
`Furthermore, Gupta states:
`
`A system for scheduling the operation of interrelated machines
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`which perform a process flow. A global definition of the system is made
`
`once, and each machine has an individual profile describing its local
`
`interaction with the system. Local scheduling decisions for each
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`machine are made based on that machines individual profile and the
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`state of the manufacturing facility at the time a decision is needed.
`
`16
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`

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`Operation of the individual machines is controlled by the local
`
`scheduling decisions made therefor.
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`(Id. at ¶ 50 citing Ex. 1008 at Abstract.)
`
`Gupta further states that “[i]n the preferred embodiment, a single processing
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`system runs the entire scheduling system” (Ex. 1008 at 14:6-8) and that “[s]ince
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`decisions are made on a local basis, a single moderately powerful processor can
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`easily handle all the computational demands of a large, complex manufacturing
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`facility” (id. at 14:8-11). A POSITA at the time of the invention of the ‘248 patent
`
`would have understood Gupta as being limited to real-time scheduling of fab tools
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`using local optimization, not a comprehensive real-time resource scheduling system
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`using global, i.e., fab-wide, distributed optimization. (Ex. 2041 at ¶ 52.)
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`The preceding discussion points to two fundamental and important
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`distinctions between the disclosures of Gupta and the ‘248 patent. First, Gupta
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`focuses specifically and exclus