Trials@uspto.gov
`571-272-7822
`
`Paper 61
`Date: February 7, 2023
`
`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 6,968,248 B1)
`IPR2021-01344 (Patent 6,907,305 B2)
`
`
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, JOHN D. HAMANN, and DAVID COTTA,
`Administrative Patent Judges.
`QUINN, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Consolidated Final Written Decision
`Determining All Challenged Claims Unpatentable
`Granting-in-part Petitioner’s Motion to Strike
`35 U.S.C. § 318(a); 37 C.F.R. §§ 42.20, 42.23(b)
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 61
`Date: February 7, 2023
`
`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 6,968,248 B1)
`IPR2021-01344 (Patent 6,907,305 B2)
`
`
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, JOHN D. HAMANN, and DAVID COTTA,
`Administrative Patent Judges.
`QUINN, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Consolidated Final Written Decision
`Determining All Challenged Claims Unpatentable
`Granting-in-part Petitioner’s Motion to Strike
`35 U.S.C. § 318(a); 37 C.F.R. §§ 42.20, 42.23(b)
`
`
`
`
`
`
`
`
`IPR2021-01342 (Patent 6,968,248 B1)
`IPR2021-01344 (Patent 6,907,305 B2)
`INTRODUCTION
`I.
`We instituted inter partes review pursuant to 35 U.S.C. § 314 to
`review claims 1–22 of U.S. Patent No. 6,968,248 B1 (“the ’248 patent”) and
`to review claims 1–25 and 33–53 of U.S. Patent No. 6,907,305 B2 (“the
`’305 patent”) owned by Ocean Semiconductor LLC (“Patent Owner”). We
`have jurisdiction under 35 U.S.C. § 6(c). This Consolidated Final Written
`Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 47.73.
`For the reasons discussed below, Applied Materials, Inc. (“Petitioner”) has
`shown by a preponderance of the evidence that all the challenged claims of
`the ’248 and ’305 patents are unpatentable.
`II. CONSOLIDATION OF PROCEEDINGS
`The two captioned proceedings (IPR2021-013421 and IPR2021-
`013442) involve related patents. The 1342 IPR involves the ’248 patent, 3
`which is a continuation of the ’305 patent, 4 involved in the 1344 IPR. Both
`of these patents have a common disclosure. The proceedings have the same
`asserted prior art, present the same expert testimony, and involve the same
`threshold issues. For instance, the arguments presented by Patent Owner for
`both proceedings are identical as they primarily focus on limitations recited
`in the independent claims, which recite substantively identical subject
`matter. Given the significant overlap of arguments and evidence across both
`proceedings, consolidation is appropriate because the Board can more
`efficiently handle the common issues and evidence, and also remain
`
`
`1 Hereinafter referred to as “the 1342 IPR.”
`2 Hereinafter referred to as “the 1344 IPR.”
`3 Filed as Exhibit 1001 in the 1342 IPR.
`4 Filed as Exhibit 1001 in the 1344 IPR, and as Exhibit 1002 in the 1342
`IPR.
`
`2
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`IPR2021-01342 (Patent 6,968,248 B1)
`IPR2021-01344 (Patent 6,907,305 B2)
`consistent across proceedings. Under 35 U.S.C. § 315(d), the Director may
`determine the manner in which these pending proceedings may proceed,
`including “providing for stay, transfer, consolidation, or termination of any
`such matter or proceeding.” See also 37 C.F.R. § 42.4(a) (“The Board
`institutes the trial on behalf of the Director.”). And more specifically, Rule
`122(a) specifically authorizes the Board to consolidate multiple proceedings
`involving the patent that is before the Office. 37 C.F.R. § 42.122(a). Out of
`an abundance of caution, and because the proceedings do not involve the
`same patent, the Board inquired whether the parties object to consolidation
`and neither party raised objections to consolidation of these proceedings.
`Tr. 33:6−13. Therefore, for a more efficient disposition of these
`proceedings, we consolidate the 1342 IPR and 1344 IPR for rendering this
`consolidated Final Written Decision.
`III. BACKGROUND
`Petitioner filed the 1342 and 1344 petitions requesting inter partes
`review as follows:
`(a) in the 1342 IPR, Petitioner requested review of claims 1–22 of the
`’248 patent (1342 IPR, Paper 1 (“1342 Pet.”)); and
`(b) in the 1344 IPR, Petitioner requested review of claims 1−25,
`33−53 of the ’305 patent (1344 IPR, Paper 1 (“1344 Pet.”)).
`Patent Owner filed a Preliminary Response in both proceedings,
`presenting substantially the same arguments. IPR2021-01342, Paper 10;
`IPR2021-01344, Paper 10. After considering the merits of the Petition and
`the arguments presented against institution by Patent Owner, we instituted
`inter partes review. 1342 IPR, Paper 17 (“1342 Dec. on Inst.”); 1344 IPR,
`Paper 17 (“1344 Dec. on Inst.”).
`
`3
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`
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`IPR2021-01342 (Patent 6,968,248 B1)
`IPR2021-01344 (Patent 6,907,305 B2)
`During the trial phase, Patent Owner filed a substantively identical
`Response in each proceeding. 1342 IPR, Paper 21 (“1342 PO Resp.”); 1344,
`Paper 21 (“1344 PO Resp.”). Petitioner filed a Reply in each proceeding.
`1342 IPR, Paper 30 (“1342 Reply”); 1344 IPR, Paper 30 (“1344 Reply”).
`Subsequently, Patent Owner filed a Sur-reply in each proceeding. 1342 IPR,
`Paper 41 (“1342 Sur-reply”); 1344 IPR, Paper 41 (“1344 Sur-reply”). 5
`During trial, Petitioner filed a Motion to Strike seeking exclusion of
`certain Patent Owner Sur-reply arguments. 1342 IPR, Paper 46; 1344 IPR,
`Paper 46 (hereinafter referred to as “Motion” or “Mot.” because the Motion
`is identical in both proceedings). Patent Owner opposes the Motion. 1342
`IPR, Paper 49; 1344 IPR, Paper 49 (hereinafter referred to as “Opposition”
`or “Opp.” because the Opposition is substantively identical in both
`proceedings). Petitioner filed a reply responding to Patent Owner’s
`arguments in opposition. 1342 IPR, Paper 53; 1344 IPR, Paper 53
`(hereinafter referred to as “Reply to Opposition” or “Reply to Opp.” because
`the Reply to Opposition is identical in both proceedings).
`A single oral argument was held for both captioned proceedings, the
`transcript of which is filed in the record. 1342 IPR, Paper 60 (“Tr.”)
`(identical copy filed as Paper 58 in the 1344 IPR).
`A. Related Matters
`The parties indicate that the ’248 and ’305 patents have been asserted
`in the following proceedings: Ocean Semiconductor LLC v. Analog
`Devices, No. 1:20-cv-12310 (D. Mass); Ocean Semiconductor LLC v.
`
`
`5 These are titled “Amended Sur-reply” because after filing the initial Sur-
`reply, Patent Owner sought leave to update its brief with citations to the final
`transcript of the deposition of Dr. Shanfield. Ex. 2044 (dated September 22,
`2022). We refer to the Amended Sur-reply throughout this proceeding.
`
`4
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`
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`IPR2021-01342 (Patent 6,968,248 B1)
`IPR2021-01344 (Patent 6,907,305 B2)
`Infineon, No. 1:20-cv-12311 (D. Mass.); Ocean Semiconductor LLC v.
`Huawei, No. 4:20-cv-911 (E.D. Tex.); Ocean Semiconductor LLC v.
`MediaTek, No. 6:20-cv-1210 (W.D. Tex.); Ocean Semiconductor LLC V.
`NVIDIA, No. 6:20-cv-1211 (W.D. Tex.); Ocean Semiconductor LLC v. NXP,
`No. 6:20-cv-1212 (W.D. Tex.); Ocean Semiconductor LLC v. Renesas, No.
`6:20-cv-1213 (W.D. Tex.); Ocean Semiconductor LLC v. Silicon Labs, No.
`6:20-cv-1214 (W.D. Tex.); Ocean Semiconductor LLC v. ST Micro, No.
`6:20-cv-1215 (W.D. Tex.); and Ocean Semiconductor LLC v. Western
`Digital, No. 6:20-cv-1216 (W.D. Tex.). 1342 Pet. 1–2; Paper 5, 2; 1344
`Pet. 1–2; Paper 5, 2.
`
`B. The Challenged Patents
`The ’305 patent issued from U.S. App. No. 10/135,145 (“parent ’145
`application”) filed April 30, 2002. 1342 IPR, Ex. 1002 (the ’305 patent,
`which is also filed as Ex. 1001 in the 1344 IPR). 6 The ’248 patent issued
`from U.S. App. No. 11/151,098 (“’098 application”), which claims priority
`to the parent ’145 application. Ex. 1001 (the ’248 patent); Ex. 1002.
`1. Prosecution History
`During the prosecution of the parent ’145 application, the Examiner
`found all pending claims anticipated or obvious in view of U.S. Patent No.
`5,444,632 (“Kline”), which discloses a method and a computer system with
`a scheduler module in an automated manufacturing environment. 1342 IPR,
`Ex. 1006, 152–54. In response, the Applicant argued that Kline fails to
`teach that its wafer specification module is “anything other than an
`information provider.” Ex. 1006, 164. The Applicant also argued that Kline
`
`
`6 Hereinafter, all citations refer to the papers and exhibits filed in the
`1342 IPR, unless stated otherwise.
`
`5
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`IPR2021-01342 (Patent 6,968,248 B1)
`IPR2021-01344 (Patent 6,907,305 B2)
`does not teach the “software scheduling agent” recited in the claims because
`Kline’s workstation “includes a user and significant hardware components.”
`Id. In a subsequent Office rejection, of anticipation by Parad, Applicant
`argued that Parad did not disclose the “software scheduling agent” for
`similar reasons—implementation in hardware. Id. at 190.
`The Examiner maintained the rejection over Parad and responded that
`the claims as drafted are broad enough to encompass “anybody involve[ed]
`in scheduling,” and the Specification does not limit the claim to software
`programming. Id. at 204. Applicant argued that “there is no support in
`Applicant’s specification for the proposition that a scheduling agent
`represent more than one manufacturing domain entity at any given time or
`that a scheduling agent be implemented in anything other than software.”
`Id. at 204−205. Applicant further clarified, “there is no support for a
`definition of the term ‘software scheduling agent’ in which an entity
`represents, for instance, a whole subsystem comprising large numbers of
`manufacturing domain entities.” Id. at 205. Further, Applicant noted that
`the word “software” in the claim term itself denotes that the scheduling
`agent must be implemented as software. Id. at 205−206. The Office issued
`an advisory action rejecting all pending claims. Id. at 209. After a notice of
`appeal and brief from Applicant, the Office issued a Notice of Allowance
`without providing any reasons. Id. at 243−246.
`
`6
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`IPR2021-01342 (Patent 6,968,248 B1)
`IPR2021-01344 (Patent 6,907,305 B2)
`The Applicant filed the ’098 application on June 13, 2005, one day
`before the issuance of the ’305 patent, and included 22 claims substantially
`identical to some claims of the ’305 patent. Ex. 1005, 7 75−81 (amending
`claims slightly to add “automatically” to the steps that recite detecting and
`notifying, as well as adding “integrated, automated” to the term “process
`flow”). On August 22, 2005, the Examiner issued a Notice of Allowance
`and the ’248 patent issued November 22, 2005. Ex. 1005, 96–97.
`2. Overview
`The specification of the two patents are identical. Therefore, we
`discuss the subject matter described therein with respect to the ’248 patent.
`The ’248 patent relates to “scheduling in an automated manufacturing
`environment.” Ex. 1001, 1:20–21. The ’248 patent describes the
`manufacture of integrated circuits for modern semiconductor devices
`containing numerous structures or features, typically the size of a few
`micrometers. Id. at 1:38–41. The ’248 patent further describes that the
`fabrication of integrated circuits generally involves processing a number of
`wafers through a series of fabrication tools, where layers of material are
`added to, removed from, and/or treated on a semiconducting substrate. Id. at
`1:41–45. According to the ’248 patent, controlling a semiconductor factory
`(“fab”) that fabricates such integrated circuits is a challenging task, where
`the fab is a complex environment 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. As each wafer
`moves through the fab, it may undergo more than 300 processing steps,
`
`
`7 Exhibit 1005 in the 1342 IPR is the Prosecution History File for the
`’248 patent.
`
`7
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`IPR2021-01342 (Patent 6,968,248 B1)
`IPR2021-01344 (Patent 6,907,305 B2)
`many of which use the same machines, where a large factory may contain
`approximately 500 computer-controlled machines to perform this wafer
`processing. Id. at 2:3–8. As described in the ’248 patent, routing,
`scheduling, and tracking material through the fab is a difficult and
`complicated task, even with the assistance of a computerized factory control
`system. Id. at 2:8–11.
`The specification then describes a process flow that fabricates
`semiconductor devices. Id. at 5:5−8. “However, the invention may be
`applied to other types of manufacturing processes.” Id. As such, the lots of
`wafers are generically referred to as “work pieces.” Id. at 5:8−10. Indeed,
`the specification goes on to describe that the tools and process operations in
`the manufacturing process “need not necessarily be related to the
`manufacturing of semiconductor devices in all embodiments.” Id. at
`5:13−16. In accordance with the desire to explain the invention using
`semiconductor fabrication terminology, the ’248 patent goes on to describe
`that the process flow includes a portion of a Manufacturing Execution
`System or “MES.” Id. at 5:26−29. An automated MES “enables a user to
`view and manipulate, to a limited extent, the status of machines or tools, or
`‘entities,’ in a manufacturing environment.” Id. at 2:27−31. Further, the
`process flow also includes an Automated Materials Handling System or
`“AMHS,” which handles the lots of wafers and facilitates their transport
`from one station to another, as well as other locations in the process flow.
`Id. at 5:26−32.
`Figure 3 illustrates an implementation of reactive scheduling of
`activities of a process flow for a semiconductor fabrication facility and is
`reproduced below. Id. at 4:28–32.
`
`8
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`IPR2021-01342 (Patent 6,968,248 B1)
`IPR2021-01344 (Patent 6,907,305 B2)
`
`
`
`Figure 3 shows a portion of process flow 100 from a semiconductor
`fabrication facility, and the manner in which it schedules appointments for
`the consumption of resources. Id. Process flow 100 includes stations 105,
`each station 105 including computing device 110 communicating with
`process tool 115. Id. at 5:17–19. Process tools 115 process lots 130 of
`wafers that will eventually become integrated circuit devices, where process
`tool 115 may be a fabrication tool used to fabricate some portion of the
`wafers. Id. at 5:24–26, 6:43–45.
`Each computing device 110 includes software agent 265, where
`software agents 265, collectively, are responsible for efficiently scheduling
`and controlling lots 130 of wafers 135 through the fabrication process. Id. at
`6:24–26, 47–50. Collectively, software agents 265 reactively and
`proactively schedule activities for each lot 130 for operations on a specific
`qualified process tool 115. Id. at 6:63–7:3. More specifically, the software
`agents (or scheduling agents) 265 include: Lot Scheduling Agent (“LSA”)
`
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`IPR2021-01342 (Patent 6,968,248 B1)
`IPR2021-01344 (Patent 6,907,305 B2)
`305 that schedules activities on behalf of lots 130; Machine Scheduling
`Agent (“MSA”) 310 that schedules activities on behalf of process tools 115;
`PM Scheduling Agent (“PMSA”) 315 that schedules activities on behalf of
`preventative maintenance (“PMs”) and equipment qualification (“Quals”)
`(not shown in Figure 3); and Resource Scheduling Agent (“RSA”) that
`schedules activities on behalf of resources (not shown in Figure 3). Id. at
`7:20–30. Some of these activities are scheduled reactively (i.e., in response
`to events occurring in process flow 100). Id. at 7:36–37. For example, the
`’248 patent describes the process as detecting an occurrence of a
`predetermined event in the process flow 100; notifying a subscribing
`software scheduling agent (e.g., LSA 305, MSA 310, PMAS 315, or RSA
`320) of the occurrence; and reactively scheduling an action responsive to the
`detection of the predetermined event. Id. at 7:38–46.
`C. Illustrative Claims
`Of the challenged claims, claims 1 and 14 of the ’248 patent are
`independent. Each of challenged claims 2–13 and 15–22 depends from
`claim 1 or 14. Of the challenged claims, claims 1, 12, 19, 33, and 44 of the
`’305 patent are independent. Each of challenged claims 2–11, 13–18, 20–
`25, 34–43, and 45–53 depends from claim 1, 12, 19, 33, or 44. We
`reproduce below (with certain portions italicized for emphasis) claim 1 of
`the ’248 patent, followed by claim 1 of the ’305 patent, which are illustrative
`of the subject matter involved.
`Claim 1 of the ’248 patent:
`1. A method
`for scheduling
`manufacturing environment, comprising:
`automatically detecting an occurrence of a predetermined
`event in an integrated, automated process flow;
`
`in an automated
`
`10
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`IPR2021-01342 (Patent 6,968,248 B1)
`IPR2021-01344 (Patent 6,907,305 B2)
`automatically notifying a software scheduling agent of the
`occurrence; and
`reactively scheduling an action from the software
`scheduling agent
`responsive
`to
`the detection of
`the
`predetermined event.
`Ex. 1001, 30:40–48.
`Claim 1 of the ’305 patent:
`for scheduling
`1. A method
`manufacturing environment, comprising:
`detecting an occurrence of a predetermined event in a
`process flow;
`notifying a software scheduling agent of the occurrence;
`
`in an automated
`
`and
`
`reactively scheduling an action from the software
`scheduling agent
`responsive
`to
`the detection of
`the
`predetermined event.
`Ex. 1002, 39:52–60.
`The italicized language in claim 1 of the ’248 patent above reflects the
`limitations added during the preliminary amendment and the only
`differences between the two claims. Noting the differences in claim
`language is important because Patent Owner raises arguments attempting to
`distinguish the “integrated, automated process flow” from the prior art of
`record, without regard for the differences in claim language. See 1342 PO
`Resp. 24−25; 1344 PO Resp. 24−25.
`
`11
`
`
`
`35 U.S.C. §
`103
`35 U.S.C. §
`
`IPR2021-01342 (Patent 6,968,248 B1)
`IPR2021-01344 (Patent 6,907,305 B2)
`D. Asserted Grounds and Testimony of Record
`Both captioned proceedings involve the following prior art references:
`a) Schulze: US 2002/0116083, published August 22, 2002, filed as
`Exhibit 1007 in the 1342 IPR and as Exhibit 1005 in the 1344 IPR;8 and
`b) Gupta: US 4,888,692, issued December 19, 1989, filed as Exhibit
`1008 in the 1342 IPR and as Exhibit 1006 in the 1344 IPR. 9
`Petitioner asserts the following grounds of unpatentability:
`Claims Challenged
`in the 1342 IPR
`1–22
`Claims Challenged
`in the 1344 IPR
`Schulze, Gupta
`103
`1–25, 33–53
`As for testimony, Petitioner relies on a Declaration of Dr. Stanley
`Shanfield, filed as Exhibit 1003 in the 1342 IPR (“1342 Shanfield
`Declaration” or “1342 Shanfield Decl.”) and Exhibit 1002 in the 1344 IPR
`(“1344 Shanfield Declaration” or “1344 Shanfield Decl.”). The deposition
`transcript of Dr. Shanfield is filed in the record of both proceedings as
`Exhibit 2044, dated September 22, 2022 (“Shanfield Depo.”).
`Patent Owner relies on a Declaration of Kurt D. Humphrey, filed as
`Exhibit 2041 in both proceedings. 1342 IPR, Ex. 2041 (“1342 Humphrey
`Declaration” or “1342 Humphrey Decl.”); 1344 IPR, Ex. 2041 (“1344
`Humphrey Declaration” or “1344 Humphrey Decl.”). The deposition of
`
`References
`Schulze, Gupta
`References
`
`
`8 For convenience we refer to all citations of Schulze as Exhibit 1007 (or
`“Schulze” where it makes sense) notwithstanding that the reference has been
`filed in the 1344 IPR as Exhibit 1005.
`9 For convenience we refer to all citations of Gupta as Exhibit 1008 (or
`“Gupta” where it makes sense) notwithstanding that the reference has been
`filed in the 1344 IPR as Exhibit 1006.
`
`12
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`IPR2021-01342 (Patent 6,968,248 B1)
`IPR2021-01344 (Patent 6,907,305 B2)
`Mr. Humphrey is filed in the 1342 IPR as Exhibit 1046, dated June 22, 2022
`and in the 1344 IPR as Exhibit 1044 (“Humphrey Depo.”).
`E. Level of Ordinary Skill in the Art
`Petitioner contends that a person having ordinary skill in the art
`“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.” 1342 Pet. 17; 1344 Pet.
`16. Patent Owner does not dispute this contention “to the extent that it
`encompasses a degree in materials science and notes that additional
`education might compensate for less experience, or vice versa.” 1342 PO
`Resp. 7; 1344 PO Resp. 7. Neither party argues that a particular level of
`ordinary skill in the art makes a difference in the outcome of the issues
`presented in these proceedings. We adopt Petitioner’s level of ordinary skill
`in the art, particularly because, consistent with the challenged patents and
`the cited prior art, it specifies having knowledge of automated
`manufacturing processes; we note that this knowledge may be obtained
`either from three-years of experience or from additional education. See
`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (stating that the
`absence of specific findings on the level of skill in the art does not give rise
`to reversible error where the prior art itself reflects an appropriate level and a
`need for testimony is not shown). We note however, that our analysis
`regarding obviousness does not depend on whose level of ordinary skill in
`the art we adopt.
`IV. CLAIM CONSTRUCTION ANALYSIS
`In inter partes review proceedings based on petitions filed on or after
`November 13, 2018, such as this one, we construe claims using the same
`claim construction standard that would be used in a civil action under
`
`13
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`IPR2021-01342 (Patent 6,968,248 B1)
`IPR2021-01344 (Patent 6,907,305 B2)
`35 U.S.C. § 282(b), as articulated in Phillips v. AWH Corp., 415 F.3d 1303
`(Fed. Cir. 2005) (en banc), and its progeny. See 37 C.F.R. § 42.100(b).
`Petitioner submits that no claim term needs to be construed, as the
`prior art relied on in the Petition discloses the subject matter of the
`challenged claims under any reasonable construction, including their plain
`meaning. Pet. 16. However, in its Petition, Petitioner asserts that the
`preamble of the independent claims is not limiting. See, e.g., 1342 Pet. 41
`(arguing that the preamble, “a method for scheduling an automated
`manufacturing environment,” is not limiting because it merely states “a
`purpose or intended use for the invention”); 1344 Pet. 40. Patent Owner
`states in its response that “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.” 1342 PO Resp. 7; 1344
`PO Resp. 7 (stating identical argument but referring to the ’305 patent).
`Patent Owner changed course with its Sur-reply, asserting that the
`preamble is limiting and stating that Petitioner had the burden to seek a
`claim construction for the preamble as not being a limitation. 1342
`Sur-reply 2; 1344 Sur-reply 2−3. Patent Owner further asserts that an
`“automated manufacturing environment is one in which multiple machines
`or resource operations are scheduled simultaneously.” 1342 Sur-reply 3;
`1344 Sur-reply 3.
`At oral argument, Petitioner argued that the preamble is not limiting
`and that it “simply informs of what the intent of the claims is to be used for,
`intended use or purpose.” Tr. 6:13−19. According to Petitioner, it is
`possible that an MES might be sufficient to satisfy the “automated
`manufacturing environment” given that they were known to have some
`automatic features in that they would be able to control tools and follow the
`
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`process, but it is not clear what minimum amount of automated
`manufacturing would be required if the preamble were limiting. Id. 7:6−21.
`For its part, Patent Owner argued at oral argument that the preamble is
`limiting because the claims do not recite “a method for scheduling
`compromising [sic],” but rather, the claim specifically recites a method for
`reactively scheduling in an automated manufacturing process. Id. at 13:1−9
`(also proffering that by reciting the “integrated, automated process flow,”
`the claim requires the context of the preamble’s “automated manufacturing
`environment”). Patent Owner also, for the first time at oral argument,
`argued that the plain and ordinary meaning of the claim, illuminated by the
`specification, must take into account the title of the patent and the abstract,
`both of which mention the “automated manufacturing environment.” Id. at
`13:22−14:16 (alluding also to the problems in the prior art dealing with MES
`system and the flow of materials within an automated system).
`Other claim construction issues are evident from the parties’
`arguments. For instance, buried in the obviousness analysis, as will be
`discussed in more detailed below, Patent Owner attempts to limit the recited
`“integrated, automated process flow” to one that requires certain
`components and that the “software scheduling agents” must reactively
`schedule in a “dynamic” and “globally reactive” manner.
`Accordingly, there are disputes, as to the scope of the claim, which we
`resolve here.
`
`A. Whether the preamble is limiting
`The standard that governs the significance of the “preamble” in claim
`construction is set forth in Catalina Marketing Int’l, Inc. v.
`Coolsavings.com, Inc., 289 F.3d 801 (Fed. Cir. 2002). See Pet. 41. In
`
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`IPR2021-01342 (Patent 6,968,248 B1)
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`general, a preamble limits the invention if it recites essential structure or
`steps, or if it is necessary to give life, meaning, and vitality to the claims.
`Catalina Marketing, 289 F.3d at 808.
`Claims 1 and 14 of the ’240 patent and claims 1, 12, 19, 33, and 44 of
`the ’305 patent recite preambles as follows:
`Claim No.
`Preamble
`Claim 1 of ’240 patent
`a method for scheduling in an automated
`manufacturing environment, comprising:
`an automated manufacturing environment, comprising:
`a method for scheduling in an automated
`manufacturing environment, the method comprising:
`a computer-readable, program storage medium
`encoded with instructions that, when executed by a
`computer, perform a method for scheduling in an
`automated manufacturing environment, the method
`comprising:
`Claim 19 of ’305 patent a computing system programmed to perform a method
`for scheduling in an automated manufacturing
`environment, the method comprising:
`an automated manufacturing environment, comprising:
`an automated manufacturing environment, comprising:
`
`Claim 14 of ’240 patent
`Claim 1 of ’305 patent
`
`Claim 12 of ’305 patent
`
`Claim 33 of ’305 patent
`Claim 44 of ’305 patent
`
`Review of the above recitations together informs us that there are two
`permutations of the preamble. The first is where the claim is directed to an
`apparatus, used in an automated manufacturing environment. The second is
`where method claims (or computing/program claims) are directed to
`scheduling in an automated manufacturing environment. Either way, the
`
`16
`
`
`
`IPR2021-01342 (Patent 6,968,248 B1)
`IPR2021-01344 (Patent 6,907,305 B2)
`body of these claims do not mention further, or grammatically refer back to,
`the “automated manufacturing environment.” The body of the claims also
`fails to expressly address any structural significance of the “automated
`manufacturing environment,” and there is no evidence that the term was a
`point of distinction over the prior art during prosecution.
`Patent Owner’s argument that the preamble is limiting lacks factual
`and legal support. In the Response, Patent Owner makes a naked assertion
`that the independent claims recite a “sophisticated ‘automated
`manufacturing environment’ (preamble)” (among other limitations) and that
`neither Shulze nor Gupta, alone or in combination, teaches or suggests the
`mentioned limitations. 1342 PO Resp. 8; 1344 PO Resp. 8 (similar
`argument, but referring to the “automated manufacturing environment” as
`“advanced” rather than “sophisticated”). Similarly, in the 1344 IPR, Patent
`Owner asserts that the independent claims “explicitly refer” to an
`“automated manufacturing environment,” without explaining why this is a
`claim limitation even though the term appears only in the preamble of the
`independent claims. 1344 PO Resp. 24.
`Petitioner cites Arctic Cat Inc. v. GEP Power Prods., Inc., 919 F.3d
`1320, 1328 (Fed. Cir. 2019), for the proposition that a preamble is not
`limiting where a patentee defines a structurally complete invention in the
`body of the claim and the preamble only states a purpose or intended use for
`the invention. 1342 Reply 2−3; 1344 Reply 2−3. We agree with Petitioner.
`The body of the apparatus claims defines the structural elements that make
`up the “automated manufacturing environment.” For instance, claim 14 of
`the ’248 patent recites an “integrated, automated process flow” and “a
`computing system” as the main elements comprising the “automated
`manufacturing environment” of the preamble. Ex. 1001, 32:3−11.
`
`17
`
`
`
`IPR2021-01342 (Patent 6,968,248 B1)
`IPR2021-01344 (Patent 6,907,305 B2)
`Likewise, claim 33 recites “a process flow” and a “computing system” as the
`main elements comprising the “automated manufacturing environment” of
`the preamble. Ex. 1002, 43:43−50. Notably, dependent claim 41, which
`depends from claim 33, further recites “at least one of a manufacturing
`execution system and an automated materials handling system.” Id. at
`44:38−41. In sum, the independent claims recite the required structures and
`some dependent claims recite further structures in the body of those claim.
`The “automated manufacturing environment” is merely the “environment”
`in which these structures are employed to perform the recited “scheduling.”
`The method claims are similarly structured. For instance, claim 1 of
`the ’248 patent recites the steps of the method and identifies the structures
`for performing the recited steps as “integrated, automated process flow” and
`“software scheduling agent.” Ex. 1001, 30:40−48. The claim again recites
`the structural elements that are needed to perform the claimed steps. The
`“automated” part of the preamble is not necessary to define the claimed
`method given that the step already recites what must happen “automatically”
`and that the process flow is “automated.” Nor is the “manufacturing
`environment” necessary for the performance of the method steps. Rather, it
`specifies the environment in which to perform the method claims.
`Patent Owner argues that its expert, Mr. Humphrey, testified that from
`“a technical perspective, certainly the preambles describe the scope and
`nature of the claim elements,” and that “to that extent, they are limit[ing].”
`1342 Sur-reply 2; 1344 Sur-reply 2. Neither Patent Owner nor
`Mr. Humphry elaborates further. Although there are situations in which the
`context of the invention is necessary to give life and meaning to the claims,
`that situation is not present here. See Applied Materials, Inc. v. Advanced
`
`18
`
`
`
`IPR2021-01342 (Patent 6,968,248 B1)
`IPR2021-01344 (Patent 6,907,305 B2)
`Semiconductor Materials Am., Inc., 98 F.3d 1563, 1572−73 (Fed. Cir. 1996)
`(addressing a district court’s analysis that determined whether a preamble
`was limiting given the context of the state of the art at the time of the
`invention). After analysis of the specification, described below, we
`conclude that the specification also does not support Patent Owner’s
`contention that the preamble is limiting as necessary to give context to the
`claim.
`The ’248 patent10 describes the problems with facilities for
`manufacturing products, such as semiconductor chips, where the fab is
`described as a “complex environment.” Ex. 1001, 1:65−2:3; 2:12−26. The
`manufacturing process used tracking and monitoring at every step and the
`challenge was to perform regular maintenance and qualification procedures
`without affecting significantly the manufacturing process itself. Id. The
`specification describes one solution known in the prior art, using an
`“automated MES” to view and manipulate the status of machines and tools,
`or “entities,” in “a manufacturing environment.” Id. at 2:27−31. But
`another problem, according to the specification, needed solving, the
`involvement of a wafer fab technician (“WFT”). Id. at 2:45−3:22. The
`WFTs injected inefficiencies in an otherwise “automated MES” because the
`scheduling decisions were made when attention and time permitted. Id.
`Shift changes, breaks, days off, etc., also create inefficiencies or machine
`idle time. Id. This method of operation is called “passive” in the
`
`
`10 The specification of the ’305 patent is identical to the ’248 patent
`specification, so the analysis presented here is equal
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