UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`OCEAN SEMICONDUCTOR LLC,
`Plaintiff,
`
`vs.
`MEDIATEK INC., ET AL.,
`Defendant.
`OCEAN SEMICONDUCTOR LLC,
`Plaintiff,
`
`vs.
`NVIDIA CORPORATION,
`Defendant.
`OCEAN SEMICONDUCTOR LLC,
`Plaintiff,
`
`vs.
`NXP SEMICONDUCTORS NV, ET AL.,
`Defendant.
`OCEAN SEMICONDUCTOR LLC,
`Plaintiff,
`
`vs.
`RENESAS ELECTRONICS CORPORATION, ET
`AL.,
`
`Defendant.
`OCEAN SEMICONDUCTOR LLC,
`Plaintiff,
`
`vs.
`SILICON LABORATORIES INC.,
`Defendant.
`OCEAN SEMICONDUCTOR LLC,
`Plaintiff,
`
`vs.
`STMICROELECTRONICS INC.,
`Defendant.
`OCEAN SEMICONDUCTOR LLC,
`Plaintiff,
`
`NO. 6:20-cv-01210-ADA
`
`NO. 6:20-cv-01211-ADA
`
`NO. 6:20-cv-01212-ADA
`
`NO. 6:20-cv-01213-ADA
`
`NO. 6:20-cv-01214-ADA
`
`NO. 6:20-cv-01215-ADA
`
`vs.
`WESTERN DIGITAL TECHNOLOGIES, INC.,
`Defendant.
`
`NO. 6:20-cv-01216-ADA
`
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS
`
`

`

`
`
`Pursuant to the Court’s Scheduling Order dated July 15, 2021, each of Defendants
`
`MediaTek Inc.; MediaTek USA Inc.; NVIDIA Corporation; NXP USA, Inc.; Renesas Electronics
`
`Corporation; Renesas Electronics America, Inc.; Silicon Laboratories Inc.; STMicroelectronics,
`
`Inc.; and Western Digital Technologies, Inc. (collectively “Defendant” or “Defendants”) hereby
`
`submits the following Preliminary Invalidity Contentions regarding U.S. Patent Nos. 6,660,651
`
`(“the ’651 patent”), 6,907,305 (“the ’305 patent”), 6,725,402 (“the ’402 patent”), 6,968,248 (“the
`
`’248 patent”), 7,080,330 (“the ’330 patent”), 6,836,691 (“the ’691 patent”), 8,676,538 (“the ’538
`
`patent”), 6,420,0971 (“the ’097 patent”), 8,120,1702 (“the ’170 patent”), and 8,847,3833 (“the ’383
`
`patent”) (collectively, “the Asserted Patents”).
`
`Plaintiff Ocean Semiconductor LLC (“Ocean”) alleges in its July 2, 2021, Preliminary
`
`Infringement Contentions that certain Defendants infringe the following claims of the Asserted
`
`Patents (collectively, the “Asserted Claims”):
`
`
`
`1 The ’097 Patent is asserted only against NXP USA, Inc. and STMicroelectronics, Inc. in No.
`6:20-cv-01212 and No. 6:20-cv-01215, respectively. All references to the ’097 Patent in these
`Invalidity Contentions apply only to NXP USA, Inc. and STMicroelectronics, Inc. and not to the
`other Defendants or their cases, although the other Defendants reserve the right to rely on the ’097
`Patent and its prior art as appropriate to demonstrate invalidity of the patents asserted against them.
`2 The ’170 Patent is asserted only against NVIDIA Corporation in No. 6:20-cv-01211. All
`references to the ’170 Patent in these Invalidity Contentions apply only to NVIDIA Corporation
`and not to the other Defendants or their cases, although the other Defendants reserve the right to
`rely on the ’170 Patent and its prior art as appropriate to demonstrate invalidity of the patents
`asserted against them.
`3 The ’383 Patent is asserted only against NVIDIA Corporation in No. 6:20-cv-01211. All
`references to the ’383 Patent in these Invalidity Contentions apply only to NVIDIA Corporation
`and not to the other Defendants or their cases, although the other Defendants reserve the right to
`rely on the ’383 Patent and its prior art as appropriate to demonstrate invalidity of the patents
`asserted against them.
`
`-2-
`
`
`
`

`

`
`
`Patent
`
`6,660,651
`
`Asserted Claims
`
`Claims 19, 20, 21, 22, 23, 24, 31, 32, 34, 35, 36, 37,
`72, 73, 74, 75, 77, 78, 79, 80, 81
`
`6,907,305
`
`Claims 1, 2, 3, 4,4 5, 7, 8,5 9,6 10, 11
`
`6,725,402
`
`Claims 1, 2, 3, 4, 5, 6, 7
`
`6,968,248
`
`Claims 1, 2, 3, 4, 5, 6,7 7, 8, 9, 10, 11, 12
`
`8,676,538
`
`Claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16
`
`7,080,330
`
`Claims 19, 20, 21
`
`6,836,691
`
`Claims 1, 2, 3, 4, 5, 6, 7, 8, 9
`
`6,420,0978
`
`Claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 17
`
`8,120,1709
`
`Claims 1, 8, 9, 10, 11, 12, 13
`
`8,847,38310
`
`Claims 1, 2, 8, 9
`
`Defendant reserves the right to supplement and/or amend these Preliminary Invalidity
`
`Contentions should Plaintiff supplement and/or amend its Preliminary Infringement Contentions
`
`or otherwise alter its theory of the case.11 Nothing in these Preliminary Invalidity Contentions
`
`constitutes an admission of validity as to any other non-asserted claims of the Asserted Patents.
`
`
`
`4 This claim is only asserted against STMicroelectronics, Inc., Western Digital Technologies, Inc.
`(“WDT”), MediaTek Inc., and MediaTek USA Inc. (collectively “MediaTek”).
`5 This claim is only asserted against NVIDIA Corporation, WDT, and MediaTek.
`6 This claim is only asserted against STMicroelectronics, Inc., WDT, and MediaTek.
`7 This claim is only asserted against NVIDIA Corporation, WDT, and MediaTek.
`8 As noted supra, this patent is not asserted against all Defendants.
`9 As noted supra, this patent is not asserted against all Defendants.
`10 As noted supra, this patent is not asserted against all Defendants.
`11 Including in view of any inconsistent positions Ocean may take between inter partes review
`proceedings relating to the Asserted Patents, e.g., in its preliminary responses and other briefing,
`and this litigation.
`
`
`
`
`
`-3-
`
`
`
`

`

`
`
`As discussed below, Defendant contends that each Asserted Claim is invalid under at least
`
`35 U.S.C. §§ 101, 102, 103, and/or 112.
`
`A.
`
`PRELIMINARY STATEMENT AND RESERVATION OF RIGHTS
`
`Defendant’s Preliminary Invalidity Contentions reflect its present knowledge and
`
`understanding of Ocean’s Preliminary Infringement Contentions regarding the Asserted Claims.
`
`Defendant’s Preliminary Invalidity Contentions are based on Defendant’s current knowledge,
`
`understanding, and belief as to the facts and information available as of the date of these
`
`Preliminary Invalidity Contentions. Defendant has not yet completed its investigation, discovery,
`
`or analysis of matters relating to the invalidity of the Asserted Claims, including without limitation
`
`invalidity due to on-sale or public use statutory bars. In addition, Defendant’s search for prior art
`
`is ongoing. Accordingly, Defendant reserves the right to amend, modify, and supplement, without
`
`prejudice, these Preliminary Invalidity Contentions as additional information is discovered or
`
`otherwise identified or appreciated, including testimony about the scope and content of the claimed
`
`inventions or state of the prior art.
`
`Defendant submits these Preliminary Invalidity Contentions without waiving Defendant’s
`
`position that Ocean’s Infringement Contentions do not adequately identify with sufficient
`
`specificity the basis for Ocean’s contention that any accused product is manufactured by a process
`
`that meets the limitations of any of the Asserted Claims. Nothing stated herein is or shall be treated
`
`as an admission or suggestion that Defendant agrees with Ocean regarding either the scope of any
`
`of the Asserted Claims or the claim constructions advanced directly or implicitly by Ocean’s
`
`Preliminary Infringement Contentions or in any other pleading, discovery request or response, or
`
`written or verbal communications with Defendant. Additionally, nothing in these Preliminary
`
`Invalidity Contentions shall be treated as an admission that any accused products meet any
`
`limitation of the Asserted Claims. The disclosures herein are not and should not be construed as
`
`
`
`
`
`-4-
`
`
`
`

`

`
`
`a statement that no other persons have discoverable information, that no other documents, data
`
`compilations, or tangible things exist that Defendant may use to support its claims or defenses, or
`
`that no other legal theories or factual bases will be pursued.
`
`In the absence of a claim construction order from the Court, Defendant has based these
`
`Preliminary Invalidity Contentions upon its knowledge and understanding of the potential scope
`
`of the Asserted Claims at this time, and, in part, upon the apparent constructions of the Asserted
`
`Claims advanced by Ocean in its Preliminary Infringement Contentions. Furthermore, Ocean’s
`
`Preliminary Infringement Contentions contradict how a person of ordinary skill in the art would
`
`understand the Asserted Patents and the claim terms, and are vague and conclusory concerning
`
`how certain claim limitations supposedly read on the accused products or activities. Thus,
`
`Defendant is unable to discern Ocean’s position regarding the construction of numerous claim
`
`limitations and has provided these Preliminary Invalidity Contentions based in part on its present
`
`understanding of Ocean’s apparent constructions. Finally, Defendant’s Preliminary Invalidity
`
`Contentions do not represent Defendant’s agreement or view as to the meaning of any claim term
`
`contained therein, and Defendant may disagree with Ocean’s interpretation of the meaning of
`
`terms and phrases in the Asserted Claims. In addition, Defendant’s Preliminary Invalidity
`
`Contentions do not represent Defendant’s agreement or view as to whether any claim preamble is
`
`limiting.
`
`Defendant also anticipates that the Court’s construction of claim terms may significantly
`
`affect the scope of the Asserted Claims. Therefore, Defendant reserves the right to supplement,
`
`without prejudice, these Preliminary Invalidity Contentions as appropriate depending upon the
`
`Court’s construction of the Asserted Claims, any findings as to the priority date of the Asserted
`
`
`
`
`
`-5-
`
`
`
`

`

`
`
`Patents, and positions that Ocean or its expert witnesses may take concerning claim interpretation,
`
`infringement, or invalidity issues.
`
`Defendant provides certain claim charts as described herein. The claim charts reflect the
`
`theories of invalidity described in each chart, including anticipation and obviousness. The
`
`suggested obviousness combinations are in the alternative to Defendant’s anticipation contentions.
`
`The disclosed obvious combinations are not meant to be exhaustive and should not be construed
`
`to suggest that any reference does not anticipate claims of the Asserted Patents. As reflected in
`
`the attached exhibits, the discussion herein, and in the references themselves, all elements of
`
`Ocean’s Asserted Claims were disclosed in the art and in the general knowledge of a person of
`
`ordinary skill before the Asserted Patents’ earliest possible priority date. Furthermore, one of
`
`ordinary skill in the art would have readily combined their teachings. Each of the references cited
`
`herein, including the identified prior art systems, or in the attached exhibits may be combined and
`
`modified in several obvious ways to achieve the claimed systems and methods, including those
`
`disclosed in the attached exhibits or the discussion herein.
`
`Defendant further contends that various asserted claims of the Asserted Patents are invalid
`
`under 35 U.S.C. § 101 for failure to claim patentable subject matter and/or under 35 U.S.C. § 112
`
`for failure to satisfy the enablement, written description, and/or definiteness requirements.
`
`Defendant’s contentions of invalidity under § 101 and/or § 112 are based in whole or in part on its
`
`present understanding of the Asserted Claims and Ocean’s apparent construction of those claims
`
`in its Preliminary Infringement Contentions. Accordingly, Defendant’s Preliminary Invalidity
`
`Contentions may reflect alternative positions as to claim construction and scope of the Asserted
`
`Claims. Further, by asserting grounds for invalidity based on Ocean’s apparent claim construction
`
`
`
`
`
`-6-
`
`
`
`

`

`
`
`or any other particular claim construction, Defendant is not adopting Ocean’s claim construction,
`
`nor admitting to the accuracy of any particular claim construction.
`
`Defendant provides invalidity claim charts as exhibits as shown below:
`
`Patent
`
`Exhibits for Corresponding Charts
`
`6,660,651
`
`6,907,305
`
`6,725,402
`
`6,968,248
`
`8,676,538
`
`7,080,330
`
`6,836,691
`
`6,420,097
`
`8,120,170
`
`8,847,383
`
`A
`
`B
`
`C
`
`D
`
`E
`
`F
`
`G
`
`H
`
`I
`
`J
`
`B.
`
`PRIORITY AND CONCEPTION DATES FOR THE ASSERTED CLAIMS
`
`In its Preliminary Infringement Contentions, Ocean contends that the Asserted Claims of
`
`some Asserted Patents are entitled to priority based on the filing dates of U.S. Application No.
`
`10/135,145, U.S. Application No. 12/110,798, U.S. Application No. 11/469,194, and U.S.
`
`Application No. 11/469,194. Defendant disputes whether any Asserted Claim is entitled to any
`
`priority date earlier than the filing dates of the applications for the Asserted Patents.
`
`Ocean further contends that the alleged inventions of the Asserted Claims were conceived
`
`as of February 12, 2001 for the ’651 patent; January 29, 1999 for the ’402 patent; May 3, 2002 for
`
`the ’330 patent; January 7, 2003 for the ’691 patent; and November 7, 1999 for the ’097 patent.
`
`
`
`
`
`-7-
`
`
`
`

`

`
`
`Defendant disputes whether any Asserted Claim is entitled to a conception date earlier than the
`
`filing dates of the applications for the Asserted Patents.
`
`C.
`
`INVALIDITY UNDER 35 U.S.C. §§ 102 AND 103
`
`Defendant contends that each Asserted Claim is invalid at least under 35 U.S.C. § 102,
`
`including pre-AIA subsections 102(a), 102(b), 102(e), and 102(g), AIA subsections 102(a)(1) and
`
`102(a)(2), and/or under 35 U.S.C. § 103. Pursuant to the Order Governing Proceedings,
`
`Defendant’s detailed contentions as to how each identified prior art reference either anticipates or
`
`renders obvious the Asserted Claims are attached as Exhibits. For each Asserted Patent, the
`
`Exhibits contain a separate chart for each anticipating and/or primary obviousness reference
`
`detailing where that reference teaches each limitation of the Asserted Claims. For each Asserted
`
`Patent, the Exhibits also contain an omnibus combination reference chart detailing which
`
`limitations are taught by each combination reference. Defendant reserves the right to combine
`
`each anticipating and/or primary obviousness reference with (1) other anticipating and/or
`
`obviousness references, (2) any reference described in the omnibus reference chart, or (3) a
`
`combination thereof. Defendant also reserves the right to rely on other references disclosed or
`
`incorporated by reference in these Preliminary Invalidity Contentions, in the Asserted Patents, any
`
`patents or applications related to the Asserted Patents, in the file history of the Asserted Patents or
`
`any related patents or applications, and in the attached Exhibits.
`
`Defendant’s claim charts may disclose multiple theories of invalidity in a single chart.
`
`Each chart directed to an anticipatory product/system may also describe that the product/system
`
`alone, in light of the knowledge and skill in the art, or in light of one or more other prior art
`
`references, renders each Asserted Claim obvious.
`
`Where Defendant cites to a particular figure in a prior art reference, the citation should be
`
`understood to encompass the caption and description of the figure as well as any text relating to
`
`
`
`
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`-8-
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`

`
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`the figure in addition to the figure itself. Conversely, where a cited portion of text refers to a
`
`figure, the citation should be understood to include the figure as well. Furthermore, while
`
`Defendant has generally identified at least one citation per limitation present in a reference or
`
`combination, each and every disclosure of the same or similar limitation in the same reference or
`
`combination is not necessarily identified. To focus the issues, Defendant cites only particularly
`
`pertinent portions of identified references, even where a reference or combination may contain
`
`additional support for a particular claim element. Thus, Defendant may rely on uncited portions
`
`of the prior art references for additional support for a particular element. Defendant may rely upon
`
`other prior art identified in future supplements, corroborating references, documentation, source
`
`code, products, and testimony, including materials obtained through further investigation and
`
`third-party discovery of the prior art identified herein, that demonstrates the invalidating
`
`functionality identified in these Preliminary Invalidity Contentions or that show the state of the art
`
`in the relevant time period (irrespective of whether such references themselves qualify as prior art
`
`to the Asserted Patent), and expert testimony to provide context to or aid in understanding the cited
`
`portions of the identified prior art. Similarly, where there are multiple references relating to a
`
`single prior art product or system, Defendant may cite only to a single reference for a particular
`
`limitation, even though other references may also contain similar teachings. Thus, Defendant may
`
`rely on uncited references relating to a particular prior art document or system for additional
`
`support for a particular element. Any prior art disclosed as anticipating a limitation also renders
`
`that limitation obvious.
`
`Certain of the Asserted Claims are also invalid due to obviousness-type double patenting
`
`based on the grounds discussed in Section d.3 below.
`
`
`
`
`
`-9-
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`

`
`
`Additionally, persons of ordinary skill in the art at the time of the alleged inventions
`
`generally read a prior art reference as a whole and in the context of other publications and literature.
`
`Numerous prior art references, including those identified herein and in the attached exhibits, reflect
`
`common knowledge and the state, scope, and content of the prior art before the priority date of the
`
`Asserted Claims of the Asserted Patents. Defendant may rely on uncited portions of the prior art
`
`references and on other publications and expert testimony to provide context and as aids to
`
`understanding and interpreting the portions that are cited.
`
`In general, a claimed invention is invalid due to obviousness “if the differences between
`
`the claimed invention and the prior art are such that the claimed invention as a whole would have
`
`been obvious before the effective filing date of the claimed invention to a person having ordinary
`
`skill in the art.” 35 U.S.C. § 103; Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966). The
`
`ultimate determination of whether an invention is or is not obvious is a legal conclusion based on
`
`underlying factual inquiries including: “(1) the scope and content of the prior art; (2) the
`
`differences between the prior art and the claims; (3) the level of ordinary skill in the art at the time
`
`of invention; and (4) objective evidence of nonobviousness.” Miles Labs., Inc. v. Shandon, Inc.,
`
`997 F.2d 870, 877 (Fed. Cir. 1993); see Graham, 383 U.S. at 17-18. The U.S. Supreme Court
`
`decision in KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739 (2007) reaffirmed Graham, but
`
`further held that a claimed invention can be obvious even if there is no explicit teaching,
`
`suggestion, or motivation for combining the prior art to produce that invention.
`
`To the extent that any claim limitation is not anticipated pursuant to 35 U.S.C. § 102,
`
`Defendant contends that any purported differences are such that the claimed subject matter as a
`
`whole would have been obvious to one skilled in the art at the time of the alleged inventions, in
`
`view of the state of the art and knowledge of those skilled in the art under 35 U.S.C. § 103. Each
`
`
`
`
`
`-10-
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`

`
`
`Asserted Claim would have been obvious in view of each reference cited in the attached Exhibits
`
`either alone or combined with the knowledge that was possessed by one of ordinary skill in the
`
`art. Additionally, each Asserted Claim would have been obvious to one of ordinary skill in the art
`
`in view of the combination of any one of the prior art references identified in the attached Exhibits
`
`with one or more of the other references identified or discussed in the same Exhibits.
`
`In particular, those of ordinary skill in the art at the time of the alleged inventions of the
`
`Asserted Patents would have been motivated to modify or combine the prior art references because,
`
`for example: (a) the references in general deal with the same or related subject matter; (b) one of
`
`ordinary skill in the art would have been motivated by the problem that the inventor was attempting
`
`to solve, or with other problems that would have been faced in reaching a solution, and would have
`
`looked to references that concerned similar issues or taught how to overcome the problems faced;
`
`(c) the combinations were obvious to try and would have operated in their known and expected
`
`way; (d) the combinations were within the technical skill and understanding of a person of ordinary
`
`skill in the art; (e) the combinations would have been motivated by the developments in
`
`technology; and (f) the combinations reflect various design choices that would have been known
`
`to one of ordinary skill in the art and within that person’s technical capability to implement (i.e.,
`
`technically feasible).
`
`The various motivations described above provide a basis for combining or modifying
`
`references, as detailed below, to render each of the Asserted Claims obvious. In addition, the Court
`
`can consider the inferences and creative steps a person of ordinary skill in the art would employ in
`
`making such combinations. See KSR, 127 S. Ct. at 1741 (“a court can take account of the
`
`inferences and creative steps that a person of ordinary skill in the art would employ”).
`
`
`
`
`
`-11-
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`

`

`
`
`If, and to the extent, Ocean challenges the correspondence of the references in the Exhibits
`
`with respect to particular limitations of the Asserted Claims of the Asserted Patents, Defendant
`
`reserves the right to supplement these Preliminary Invalidity Contentions to identify additional
`
`combinations, motivations to modify, or explanations for particular references with additional
`
`particularity.
`
`Additionally, Defendant believes that certain non-parties and current or former employees
`
`thereof may have possession of relevant information and/or documents constituting prior art to the
`
`Asserted Patents, including prior art products and systems. Defendant has identified several prior
`
`art products and systems in these Preliminary Invalidity Contentions. Defendant is continuing its
`
`investigation into these and other companies and their products. Defendant reserves the right to
`
`supplement
`
`these Preliminary Invalidity Contentions
`
`to
`
`identify additional references,
`
`combinations, motivations to modify, or explanations for particular references based on any
`
`information and/or documents provided by the former employees and/or successors-in-interests of
`
`companies or individuals who may possess relevant information and/or documents constituting
`
`prior art to the Asserted Patents, including information and documents about prior art systems.
`
`The concepts disclosed and claimed in each of the Asserted Patents are not new, and had been
`
`disclosed, used, offered for sale, sold, and practiced by others prior to the claimed priority date of
`
`the patents. The prior art identified herein and in the Exhibits, individually or in combination,
`
`invalidates the asserted claims under 35 U.S.C. §§ 102 (a), (b), (e), (g) and §103. Because
`
`discovery has not yet opened, Defendants expect to gather additional information about the
`
`identified prior art, and other prior art, through third party discovery or other discovery, and will
`
`thus amend and supplement these invalidity contentions once they obtain that discovery and have
`
`meaningful and reasonable time to analyze it.
`
`
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`-12-
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`

`
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`Moreover, Defendant reserves the right to rely on inventor admissions concerning the
`
`scope of the prior art relevant to the Asserted Patents found in, inter alia, the prosecution histories
`
`of the Asserted Patents or related patents and/or patent applications, any testimony or declarations
`
`of the named inventors concerning the Asserted Patents or related patents, and any papers or
`
`evidence submitted by Plaintiff in connection with this litigation, any other pending or future
`
`litigation brought by Plaintiff involving the Asserted Patents or related patents, or inter partes
`
`review proceedings involving the Asserted Patents or related patents. Defendants also may
`
`establish what was known to a person having ordinary skill in the art through treatises, published
`
`industry standards other publications, products, and/or testimony.
`
`a. The ’651 Patent
`
`1. Identification of Prior Art
`
`The tables below list prior art that anticipates and/or renders obvious one or more of the
`
`asserted claims. The attached claim charts in Exhibits A1-A14 demonstrate where each limitation
`
`of the claims is found in certain of the references listed below, either expressly or inherently in the
`
`larger context of the passage, as understood by a person having ordinary skill in the art. The
`
`following patents, publications, products and/or services are prior art under at least 35 U.S.C. §§
`
`102(a), (b), or (e).
`
`a. Prior Art Patents, Patent Publications, And Printed
`Publications To The Asserted Claims of the ’651 Patent.
`
`Exhibit
`
`Reference
`
`International Publication No. WO
`01/22480
`U.S. Patent No. 6,940,582
`
`Application
`Patent
`Japanese
`Publication No. JP H11-274031
`
`A1
`
`A1
`
`A2
`
`
`
`
`
`Filing /
`Priority
`Date
`September
`20, 1999
`May
`2001
`March
`1998
`
`21,
`
`20,
`
`Date of Issue
`or
`Publication
`March
`29,
`2001
`September 6,
`2005
`October
`1999
`
`8,
`
`Short
`Cite
`
`Tanaka
`
`Tanaka
`’582
`Wakui
`
`-13-
`
`
`
`

`

`Filing /
`Priority
`Date
`March
`1999
`N/A
`
`17,
`
`Date of Issue
`or
`Publication
`December 4,
`2001
`February 25,
`2001
`
`Short
`Cite
`
`Wakui
`’026
`Sluijk
`
`24,
`
`July 9, 2002 Hurwitt
`
`July 11, 2000 Pinarbasi
`April 4, 2002 Tanaka
`’179
`July 10, 2001 Dordi
`
`19,
`
`Loopstra
`
`January
`2000
`May 28, 1998 Hawkins
`
`July
`1995
`June 5, 1998
`October
`4,
`2001
`April
`1999
`July
`1999
`November 7,
`1997
`November 26,
`June
`2002
`1999
`November 21,
`June
`2000
`1999
`July 7, 2000 March
`2005
`February
`1999
`March
`2004
`Spring 1999
`
`
`
`Exhibit
`
`Reference
`
`A2
`
`A4
`
`A5
`
`A6
`A7
`
`A8
`
`A9
`
`A10
`
`A11
`
`U.S. Patent No. 6,327,026
`
`Sluijk et al., Performance results of a
`new
`generation
`of
`300-mm
`lithography
`systems,
`Optical
`Microlithography XIV, Proceedings
`of SPIE Vol. 4346, 544-557 (2001)
`U.S. Patent No. 6,416,635
`
`U.S. Patent No. 6,086,727
`U.S. Patent App. Pub. No.
`2002/0039179
`U.S. Patent No. 6,258,220
`
`European Patent Appl. No.
`EP 0 973 067
`International Publication No. WO
`98/022638
`U.S. Patent No. 6,486,492
`
`A11
`
`U.S. Patent No. 6,150,664
`
`A12
`
`U.S. Patent No. 6,861,614
`
`A13
`
`A14
`
`International Publication No. WO
`99/005703
`U.S. Patent No. 6,707,529
`
`Butler, et al., “Scanning stage for
`exposure tools,” Microlithography
`World (Spring 1999)
`U.S. Patent No. 6,068,784
`
`U.S. Patent No. 6,251,792
`
`U.S. Patent No. 4,836,905
`
`U.S. Patent No. 6,538,720
`
`U.S. Patent No. 4,952,858
`
`Su
`
`Su ’664
`
`Tanabe
`
`Li
`
`Aoki
`
`Butler
`
`1,
`
`4,
`
`16,
`
`3,
`
`31,
`
`16,
`
`October
`1989
`July
`1990
`July
`1987
`February 28,
`2001
`May
`1988
`
`18,
`
`May 30, 2000 Collins
`’784
`June 26, 2001 Collins
`’792
`June 6, 1989 Davis
`
`March
`2003
`August
`1990
`
`25,
`
`Galburt
`
`28,
`
`Galburt
`’858
`
`
`
`
`
`-14-
`
`
`
`8,
`
`15,
`
`29,
`
`29,
`
`23,
`
`July
`1997
`February 12,
`1999
`N/A
`
`

`

`
`
`Exhibit
`
`Reference
`
`International Publication No. WO
`00/058994
`U.S. Patent No. 6,961,113
`
`U.S. Patent No. 6,133,982
`
`European Patent Appl. No.
`EP 1 030 351
`U.S. Patent No. 5,474,647
`
`International Publication No. WO
`99/034257
`U.S. Patent No. 5,877,843
`
`U.S. Patent No. 5,926,690
`
`Zwart et al., “Performance of a Step
`and
`Scan
`System
`for DUV
`Lithography,” Proc. SPIE, Optical
`Microlithography (Mar. 1997)
`Japanese
`Patent
`Application
`Publication No. JP H 10-177942
`Japanese
`Patent
`Application
`Publication No. JP H 6-204107
`Japanese
`Patent
`Application
`Publication No. JP H 10-125586
`Japanese
`Patent
`Application
`Publication No. JP H 6-145974
`U.S. Patent No. 6,614,050
`
`U.S. Patent No. 6,512,571
`
`Patent
`Unexamined
`Japanese
`Application Publication No. 2001-
`143984
`U.S. Patent No. 5,701,041
`
`Application
`Patent
`Japanese
`Publication No. JP H 07-111238
`European Patent Application No. EP
`1 037 117
`
`28,
`
`Filing /
`Priority
`Date
`March 1999,
`31
`May
`1999
`November
`15, 1996
`November
`12, 1997
`November
`15, 1993
`December
`29, 1997
`September
`12, 1995
`May
`1997
`N/A
`
`28,
`
`October 16,
`1996
`December
`25, 1992
`October 16,
`1996
`October 29,
`1992
`October 25,
`2000
`April
`1999
`November
`16, 1999
`
`28,
`
`Date of Issue
`or
`Publication
`October
`5,
`2000
`November 1,
`2005
`October 17,
`2000
`August
`2000
`December 12,
`1995
`July 8, 1999
`
`23,
`
`Short
`Cite
`
`Hao
`
`Hayashi
`
`Inoue
`
`Magome
`
`Poultney
`
`Sperling
`
`2,
`
`Takagi
`
`March
`1999
`July 20, 1999 Toprac
`
`March 1997
`
`Zwart
`
`June 30, 1998 Kida
`
`July 22, 1994 Nose
`
`May 15, 1998 Hoshino
`’586
`May 27, 1994 Hoshino
`’974
`Yamada
`
`September 2,
`2003
`January
`2003
`May 25, 2001 Sai
`
`28,
`
`Hara
`
`3,
`
`October
`1994
`October 12,
`1993
`February 24,
`2000
`
`December 23,
`1997
`April
`1995
`September
`20, 2000
`
`25,
`
`Akutsu
`
`Akutsu
`’238
`Jasper
`
`
`
`
`
`-15-
`
`
`
`

`

`
`
`b. Prior Art Systems/Services To The Asserted Claims of
`the ’651 Patent
`
`Exhibit
`
`System/Service
`
`Relevant
`Dates
`
`A3
`
`N/A
`
`ASML TWINSCAN™ System At least as
`early as
`November
`8, 2000
`1995
`
`Applied Materials Centura
`System
`
`2. Obviousness Combinations
`
`Persons/Entities
`Involved in
`Prior Use, Sale,
`or Offers for
`Sale
`ASML
`TSMC
`
`Short Cite
`
`TWINSCA
`N
`
`Applied
`Materials
`
`Centura
`
`To the extent that any one of the anticipation references is found not to disclose a limitation
`
`recited in the asserted claims from the ’651 patent, it would have been obvious to one of ordinary
`
`skill in the art at the time of the alleged invention of the ’651 patent either (i) to modify the
`
`reference to include this limitation and any remaining limitations of this claim and any claim(s)
`
`from which this claim depends and/or (ii) to combine said reference with any other of the
`
`references in Exhibits A1 to A14 and/or with a person having ordinary skill in the art’s
`
`(“POSITA’s”) general knowledge. Generally, motivation to combine any of these references with
`
`others exists within the references themselves, as well as within the knowledge of those of ordinary
`
`skill in the art at the relevant time. A person having ordinary skill in the art would have been
`
`motivated to combine any of the references described in attached Exhibits A1 to A14, including
`
`for the reasons described below. A person having ordinary skill in the art at the time of filing of
`
`the asserted ’651 patent would have understood the references listed above, alone or in
`
`combination, to contain explicit and/or implicit teaching, suggestion, and/or rationales to combine
`
`them for at least the following exemplary reasons.
`
`
`
`
`
`-16-
`
`
`
`

`

`
`
`Defendant contends that it would have been obvious to modify the above-listed prior art to
`
`include any allegedly missing element, in view of the knowledge of one of ordinary skill in the art,
`
`the admitted prior art of the ’651 patent, and/or in combination with any of the other prior art
`
`references identified for the ’651 patent. By way of example, and without limitation, Defendant
`
`provides the following exemplary combinations for particular claim limitations based on teachings
`
`of the cited prior art references. Defendant reserves the right to rely upon any combination of prior
`
`art references whether listed herein or otherwise.
`
`A person of ordinary skill in the art having knowledge of the above-listed patents, articles,
`
`and systems, among other things, would be motivated, taught, and suggested to combine the prior
`
`art discussed in Exhibits A1 to A14 with one another, in any number of ways, including as detailed
`
`below.
`
`As a threshold matter, the Asserted Claims of the ’651 patent simply arrange old elements
`
`known in the field of semiconductor fabrication technology, with each performing the same
`
`function it had been known to perform, and yield no more than what one would expect from such
`
`an arrangement. Such combinations of the prior art are obvious, as further detailed below.
`
`The ’651 patent uses entirely (and admittedly) conventional processing-tool components
`
`(e.g., a wafer stage, actuators such as pneumatic cylinders, and a process chamber). As the ’651
`
`patent explains, the alleged novelty is simply to make adjustable the wafer stage surface of an
`
`otherwise conventional processing tool. And, even when it adds adjustability to the wafer stage,
`
`