Case: 17-2474
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`Document:70
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`Page:1
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`Filed: 07/12/2019
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`2017-2474,-2475,-2476,-2478,-2479, -2480, -2482,-2483,
`2018-1050, -1079, -1080, -1081, -1082
`
`United States Court of Appeals
`for the Federal Circuit
`
`
`
`SAMSUNG ELECTRONICS CO. LTD., MICRON TECHNOLOGY,INC.,
`SK HYNIX, INC.
`
`Appellants,
`
`v.
`
`ELM 3DS INNOVATIONSLLC,
`Appellee.
`
`Appealsfrom the United States Patent and Trademark Office, Patent Trial and
`Appeal Board in Inter Partes Review Nos. IPR2016-00386, IPR2016-00387,
`IPR2016-00388, IPR2016-00390, IPR2016-00391, IPR2016-00393,
`IPR2016-00394, IPR2016- 00395, IPR2016-00708, IPR2016-00687,
`IPR2016-00691, IPR2016-00770, and IPR2016-00786
`
`APPELLEE ELM 3DS INNOVATIONSLLC’s
`COMBINED PETITION FOR PANEL REHEARING
`AND REHEARING EN BANC
`Michael T. Renaud
`mtrenaud@mintz.com
`James M. Wodarski
`jwodarski@mintz.com
`William A. Meunier
`wameunier@mintz.com
`Michael C. Newman
`mcnewman@mintz.com
`MINTZ LEVIN COHN FERRIS
`GLOVSKY AND POPEO PC
`One Financial Center
`Boston, MA 02111
`Tel. (617) 542.6000
`Fax (617) 542.2241
`Counselfor Appellee Elm 3DS Innovations LLC
`
`July 12, 2019
`
`gS COUNSEL PRESS, LLC
`
`(888) 277-3259
`
`

`

`Case: 17-2474
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`Document: 70
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`Page:2
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`CERTIFICATE OF INTEREST
`
`Counsel for Appellee Elm 3DSInnovations LLC certifies the following:
`
`1. The full name of every party represented by meis:
`
`Elm 3DS Innovations LLC
`
`2. The nameofthe real party in interest (if the party namedin the captionis
`
`not the real party in interest) represented by meis:
`
`None.
`
`3. All parent corporations and any publicly held companies that own 10
`
`percent or moreof the stock of the party represented by me are:
`
`None.
`
`4. The namesofall law firms and the partnersor associates that appeared for
`
`the party now represented by mein the trial court or agency or are
`
`expected to appearin this Court (and who have not entered an appearance
`
`in this Court) are:
`
`Robins Kaplan LLP (Cyrus A. Morton and Kelsey Thorkelson).
`
`Carmichael IP, PLLC (James Carmichael).
`
`5. The title and numberof any case knownto counsel to be pendingin this or
`
`any other court or agency that will directly affect or be directly affected by
`
`this court’s decision in the pending appeal:
`
`

`

`
`
`Case: 17-2474 Page:3_Filed: 07/12/2019Document: 70
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`
`
`The following cases pending before the Delaware District Court: Elm |
`
`3DS Innovations LLC v. Samsung Electronics Co. Ltd., Civil Action No.
`
`1:14-cv-01430-LPS, Elm 3DS Innovations LLC v. Micron Technology
`
`Inc., Civil Action No. 1:14-cv-01431-LPS, and Elm 3DS Innovations LLC
`
`v. SK hynix Inc., Civil Action No. 1:14-cv-01432-LPS.
`
`Dated: July 12, 2019
`
`/s/ William_A. Meunier
`William A. Meunier
`
`il
`
`

`

`
`
`Case: 17-2474 Page:4_Filed: 07/12/2019Document:70
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`
`
`TABLE OF CONTENTS
`
`CERTIFICATE OF INTEREST....0.....:eeceseseeseccsseeessssessesescesesesseseersseseeseesssensesereeseees i
`
`TABLE OF AUTHORITIES........ccccesseesceeeseseccesenceceseeeeeseeecseesesesesssseseesssssasseseneenies iv
`
`FEDERAL CIRCUIT RULE35(b)(2) STATEMENT OF COUNSEL........... eee 1
`I.
`SUMIMALY ..... eee ecseeteeeeecceeceeeeeseseeecesecesseeesesceceeseeseeusesseseseeeessaeessesensaeesesnaeeenees 2
`II.
`Points of Law or Fact Overlooked or Misapprehended By The Panel............4
`
`Ifl.
`
`The Panel Should Grant Rehearing To Omit The 50 Microns
`ReQUIFEMEN 0... eee eeeeceseeeceeseseeseeseesereeeeassenseeeseseeessenscseessessssecseeeeeneeeseseeeserees 5
`A.—The Court Need Not Resolve The 50 Microns Dispute................006 5
`B.|Examples Are Not Clear And Unambiguous Disavowals................0+ 7
`C.
`“50 Microns” Was An Example Of A Sufficiently Low Value,
`Not A Clear And Unambiguous Disavowal............cecsseessessssesseeees 10
`1.
`“50 Microns” Was Merely An Example Of A
`Sufficiently Low Thinness..0........ccccceesseesseccessseesecssseesseereseenes 11
`
`2.
`
`3.
`
`4.
`
`The Prosecution History’s Indefiniteness Rejection
`Response Did Not Clearly And Unambiguously Disavow
`Substantially Flexible Substrates Thicker Than 50
`MUCIOMDS.........:cccesecescceseceeseceeeseeeeessssecsssecnsecensseeseseeasseeeeseseeensees 12
`
`There Is No Evidence That A POSITA Would
`Understand That Substantially Flexible Substrates
`Thicker Than 50 Microns Were Disavowed..............ccses0sss000e0 15
`
`The Claim Differentiation Doctrine Confirms There Was
`No Disavowal Of Sufficiently Thinned Substrates That
`Are Thicker Than 50 Microns................ccccssecesssssssccesssesceceseeees 17
`
`IV.
`
`V.
`
`The En Banc Court Should Grant Rehearing To Consider and Modify
`Its “Substantially Flexible” Construction To Omit The 50 Microns
`REqUIFEMENL..... eee eee cececeseeeeeseeeenensenseeaeeseeseeeseeseeseesseeeseeeesseseeesenaenensenteees 18
`CONCLUSION ...........c.ccccecesecceccccssseccecessececeuscceseuccescucceesuccassescesscesceeseneeseccesauenees 19
`
`iil
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`

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`Case: 17-2474
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`Document: 70
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`TABLE OF AUTHORITIES
`
`Page(s)
`
`Federal Cases
`
`Aventis Pharma S.A. v. Hospira, Inc.,
`675 F.3d 1324 (Fed. Cir. 2012) oo... eeeeeeeccessesseeereeeeseceeseeseeeeesssssensseesssesesesPQSSIM
`
`Bayer-Cropscience AG v. Dow Agrosciences LLC,
`728 F.3d 1324 (Fed. Cir. 2013) ..... cee eeesceesseessecsseseesceseesessseecsssesseeeseeeseesaeens 6, 19
`
`Dealertrack, Inc. v. Huber,
`674 F.3d 1315 (Fed. Cir. 2012) .0.... eee cceescessecseceeeeseeeneceseeseeesseesseeeesessieee 1,9, 19
`
`Elkay Mfg. Co. v. Ebco Mfg. Co.,
`192 F.3d 973 (Fed. Cir. 1999) oo... eeceeeeeseceeeseseseeseseeeesseeeaeenssesaeeseaeens 1, 16, 19
`
`Inre Trans Tex. Holdings Corp.,
`498 F.3d 1290 (Fed. Cir. 2007) .0... ee eeecceesesssccnereceeseseeeeesesenseseneseeseseneesaes 1,9, 19
`
`K-2 Corp. v. Salomon S.A.,
`191 F.3d 1356 (Fed. Cir. 1999) oo... es eesscesessseeesesesssesesssasseeecseessesesseesseseseeeanenes 7
`
`Leo Pharm. Prods. v. Rea,
`726 F.3d 1346 (Fed. Cir. 2013) .o...ecceeeceeeceeseesserssesssessecesessseesessseeessesensesseaseeeenes 6
`
`.
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)......... sesescesesesecceeseaneneesseesscneenecessensesseeeseeneenspassim
`
`SanDisk Corp. v. Memoroex Prods.
`415 F.3d 1278 (Fed. Cir. 2005) 0... eee ceeeecessessceeseesseeesseesseseessseesseeseeesressseesues 14
`
`Seachange Int'l, Inc. v. C-COR, Inc.,
`413 F.3d 1361 (Fed. Cir. 2005) ooo... cece ceceeseeescesseseessseesssceeeceeeseeseeaneeseesseeseees 17
`
`Thorner v. Sony Computer Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) 0... eee ceesesesceeseeeseeeneecseecssssseeeseeenseees 1,9, 16, 19
`
`Toshiba Corp. v. Imation Corp.,
`681 F.3d 1358 (Fed. Cir. 2012) oo. cece scesecessseesreccneeeessseessneeeseeees 1, 7, 14, 19
`
`

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`Document: 70
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`FEDERAL CIRCUIT RULE 35(b)(2) STATEMENT OF COUNSEL
`
`Based on myprofessional judgment, I believe the panel decision is contrary
`
`to the following decisions of this Court:
`
`e Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324 (Fed. Cir.
`
`2012);
`
`e Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362 (Fed. Cir.
`
`2012);
`
`e Toshiba Corp. v. Imation Corp., 681 F.3d 1358 (Fed. Cir. 2012);
`
`e Dealertrack, Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012);
`
`e
`
`Inre Trans Tex. Holdings Corp., 498 F.3d 1290 (Fed. Cir. 2007);
`
`e Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005);
`
`e Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973 (Fed. Cir. 1999).
`
`Date: July 12, 2019
`
`/s/ William A. Meunier
`Attorney for Appellee
`
`

`

`Case: 17-2474
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`Document: 70
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`I.
`
`Summary
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`In construing “substantially flexible,” the Court properly acknowledgedthat
`
`“5 x 108 dynes/cm” was just an exampleofa sufficiently low dielectric stress, and
`
`thus could not be read into the construction. But even though “50 microns” was
`
`just an example ofa sufficient thinness, the Court improperly read “50 microns”
`
`into the construction of “substantially flexible.” This resulted in an internal
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`inconsistency, and also contradicted the Federal Circuit’s controlling precedent
`
`against treating examplesas limiting disavowals.
`
`Therefore, Patent Owner/Appellee Elm 3DS Innovations LLCpetitions for a
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`panel or en banc rehearing on one narrow issue: whether the Court should amend
`
`its “substantially flexible” construction to require only that a semiconductor
`
`substrate be thinned (and subsequently polished or smoothed) so that it is largely
`
`able to bend without breaking, without further requiring that the substrate be
`
`thinned to a specified value of 50 micronsor less. This change will not impact the
`
`ultimate disposition, as no issue turned on the 50 micronvalue.
`
`Particularly, Elm requests that the Court amend its June 12, 2019 Opinion
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`and “substantially flexible” construction as follows:
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`[W]e interpret a substantially flexible semiconductorsubstrate as a
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`semiconductor substrate that is thinned #e$@-44 and subsequently
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`

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`| polished or smoothedsothatit is able to largely able to bend without
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`breaking.
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`Op., Doc. 68, at 11 (proposed amendment added).
`
`Elm does not challenge the Court’s conclusion that
`
`the full scope of
`
`“substantially flexible” was disavowed during prosecution to require making the
`
`substrate sufficiently thin and subsequently polished such that it is able to bend —
`
`without breaking. But Elm respectfully submits that there was no clear and
`
`unambiguous disavowal requiring the thinness be further limited to 50 microns.
`
`Rather, a thinness of 50 microns is merely an example of a sufficient thinnessthat,
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`along with other factors, can make the substrate substantially flexible.
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`The correct analysis of the “thinned” disclaimer should be consistent with
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`the Court’s parallel analysis of the low stress dialectic disclaimer,
`
`in which the
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`Court concluded that “[w]e see nothing in the specification or prosecution history
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`that limits the dielectric to a particular stress value. Both merely provide as an
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`example that a tensile stress of 5 x 10® dynes/cm?is sufficient.” Op. at 10-11
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`(emphasis added). Similarly, the intrinsic evidence identified a thinness of 50
`
`microns as an example ofa sufficient thinness:
`
`e
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`“A substantially flexible semiconductor substrate may be achieved by
`
`grinding until considerably thin, for example to a thickness of less than
`
`

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`50 microns, and polishing the resulting surface.” J.A. 10313; J.A. 10316
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`(emphasis added).
`
`e
`
`“Two features are required to achieve substantial flexibility. Oneis that
`
`the semiconductor material must be sufficiently thin, e.g., 50 microns or
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`less.” J.A. 16038 (emphasis added).
`
`The Court’s reading 50 microns into the construction was thus erroneous and
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`inconsistent with its low stress dielectric analysis.
`
`The deletion of “50 microns” will not affect the Court’s affirmance, which
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`relied solely on the missing low stress dielectric requirement, and not on any 50
`
`microns requirement. Because the 50 microns limitation played no part in the
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`Court’s affirmance, the Court need not even address or resolve the issue of whether
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`thinning the substrate to 50 microns is a necessary part of the “substantially
`
`flexible” construction.
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`However, if the Court does address this issue, the Court should modify its
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`construction to omit this 50 microns requirement.
`
`II.
`
`Points of Law or Fact Overlooked or Misapprehended By The Panel
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`The following points of law or fact were overlooked or misapprehended by
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`the Court in its panel decision:
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`

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`The issue of whether 50 microns was a requirement of the “substantially
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`flexible” construction was unnecessary to its affirmance of the decisions
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`below and need not be addressed or resolved on appeal;
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`the intrinsic record clearly and unambiguously identified 50 microns as
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`merely one exampleof a sufficient thinness that, along with other factors,
`
`can makethe substrate substantially flexible;
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`the intrinsic record did not clearly and unambiguously disavow
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`substantially flexible substrates that are thicker than 50 microns; and
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`it was improper and contrary to this Court’s precedent
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`to construe
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`“substantially flexible” to include a 50 microns requirement where the
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`intrinsic record unambiguously identified 50 microns as merely an
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`example of a sufficient thinness that, along with other factors, can make
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`the
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`substrate
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`substantially
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`flexible,
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`and
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`did
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`not
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`clearly
`
`and
`
`unambiguously disavow substantially flexible substrates that are thicker
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`than 50 microns.
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`Il.
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`The Panel Should Grant Rehearing To Omit The 50 Microns
`Requirement
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`The Court Need Not Resolve The 50 Microns Dispute
`
`The Court’s June 12, 2019 Opinion affirmed each of PTAB’s final written
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`decisions finding that Appellants/Petitioners failed to establish the unpatentability
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`of any of the Challenged Patents and claims. Op., Doc. 68, at 2, 18. This was
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`

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`based on Appellants’/Petitioners’ failure to establish the obviousness of the low
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`stress dielectric limitation required in each claim. Op., Doc. 68, at 18. The Court’s
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`affirmance did not turn on “50 microns” and, therefore, will not be affected by
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`deleting the “50 microns” requirement from the Court’s “substantially flexible”
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`construction.
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`Accordingly,
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`the Court need not and should not resolve the issue “50
`
`microns”is a part of the “substantially flexible” construction. “In other cases, this
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`court has limited its claim-construction analysis to go no further than was required
`
`to affirm or otherwise rule on the judgment appealed.” Bayer-Cropscience AG v.
`
`Dow Agrosciences LLC, 728 F.3d 1324, 1331-32 (Fed. Cir. 2013); see also Leo
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`Pharm. Prods. v. Rea, 726 F.3d 1346, 1352-53 (Fed. Cir. 2013) (“Because it is
`
`unnecessary for this court to adopt a specific alternative constructionto resolve this
`
`appeal, this court declines to do so, leaving that question to a later forum where the
`
`issue is determinative.”). This is.particularly apt here where the construction
`dispute and evidence focused on whether “substantially flexible” required
`
`flexibility versus rigidity, and not on a particular thinness of 50 microns. See, e.g.,
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`J.A. 42 (“although [Appellants argue] that the prior art showsa particular thinning
`
`of a substrate, [Appellants do] not argue that the combination of[the prior art] who
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`have conveyed to one of ordinary skill in the art a substrate that is (largely) able to
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`bend without breaking’).
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`However, if the Court does address the issue, the Court should modify its
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`construction to omit “50 microns.”
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`B.
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`Examples Are Not Clear And UnambiguousDisavowals
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`“A statement in the prosecution history can only amountto a disclaimer if
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`the applicant ‘clearly and unambiguously’ disavowed claim scope.” Toshiba Corp.
`
`v. Imation Corp., 681 F.3d 1358, 1367 (Fed. Cir. 2012) (internal citations omitted).
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`The Appellants/Petitioners bear the burden of establishing the required clear and
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`ambiguous disavowal. K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1363 (Fed. Cir.
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`1999).
`
`|
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`In its June 12, 2019 Opinion,
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`the Court correctly acknowledged that
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`providing examples of a sufficient value does not amount
`
`to a clear and
`
`unambiguousdisavowallimiting the claims to that particular value. See Op.at 10-
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`11. Specifically, the Court considered whether prosecution language such as the
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`following was a clear and unambiguous disavowal requiring not only that the
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`claimed substantially flexible circuit layer have a sufficiently low stress dialectic
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`material, but also that this low stress dielectric material have a stress of 5 x 10°
`
`dynes/cm’orless:
`
`e
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`“For a circuit layer to be substantially flexible, Applicant has found that
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`the dielectric material must have low tensile stress, for example, 5 x 10°
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`dynes/cm”.”
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`

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`e
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`“[T]he dielectric material used in processing the semiconductor material
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`must be sufficiently low stress. Otherwise, substantial flexibility is
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`defeated. As set forth in the present specification, stress of 5 x 10°
`
`dynes/cm?or less has been demonstratedto satisfy this requirement.”
`Op.at 10, quoting J.A. J.A. 10314 and 6038 (emphasis added).
`|
`
`The Court properly determined that this language was only a disavowal
`requiring the claimed substantially flexible circuit layer have a sufficiently low
`
`stress dialectic material. Op. at 10-11. The disavowal did not also include a
`
`requirementthat the low stress dielectric material be limited to a particular value—
`
`5 x 108 dynes/cm? or less—because that stated value was only an example of a ,
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`stress value that is sufficiently low enough to achieve the claimed substantial
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`flexibility. In the Court’s words:
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`Considered in its entirety, the prosecution history clearly and
`
`unambiguously demonstrates that a substantially flexible circuit
`
`layer, and similar terms, must contain a substantially flexible
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`semiconductor substrate and a sufficiently low tensile stress
`
`dielectric material. We see nothing in the specification or
`
`prosecution history that limits the dielectric to a particular
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`stress value. Both merely provide as an example that a
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`tensile stress of 5 x 10° dynes/cm’is sufficient.
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`

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`Op.at 10-11 (emphasis added).
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`The Court’s analysis andits rejection of the “5 x 10® dynes/cm””example as
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`part of the disavowalis consistent with the Federal Circuit’s precedent prohibiting
`
`treating exemplary embodiments as disavowals or special definitions limiting the
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`ordinary meaning of a claim term. For example, Phillips confirmed this Court’s
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`longstanding express rejection of confining claims to exemplary embodiments—
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`even if only one exemplary embodimentis identified—particularly where the
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`patentee is “provid[ing] an example of howto practice the invention.” Phillips v.
`
`AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005). The Court has consistently
`
`- applied this precedent, stating that any argumentthat claim scope should be limited
`
`to “examples ... conflicts with our decision in Phillips.” See In re Trans Tex.
`
`Holdings Corp., 498 F.3d 1290, 1298-99 (Fed. Cir. 2007); Dealertrack, Inc. v.
`
`Huber, 674 F.3d 1315, 1322 (Fed. Cir. 2012) (confirming that declining to treat
`
`“example[s]” as limiting is “the only reading that does not violate this court’s
`repeated prohibition against importing limitations from the specification”); see
`
`also, e.g., Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir.
`
`2012) (“to disavow claim scope... it is not enough that the only embodiments, or
`
`all embodiments, contain a particular limitation”); Thorner v. Sony Computer
`
`Entm’t Am. LLC, 669 F.3d 1362, 1366-67 (Fed. Cir. 2012).
`
`

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`Case: 17-2474
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`Document:70
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`Page: 15
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`C.
`
`“50 Microns” Was An Example Of A Sufficiently Low Value, Not
`A Clear And Unambiguous Disavowal
`
`The Court did not
`
`follow this same analysis and precedent when it
`
`determined that the disavowal requiring a sufficiently thinned substrate should
`
`further include the exemplary sufficient thinness of 50 microns. Op., Doc. 68, at
`
`11. Just like the exemplary low stress value of 5 x 10° dynes/cm’, the prosecution
`
`history identified a thinness of 50 microns as a mere example of a substrate
`
`thinness.
`
`Thus, while Elm does not now challenge that
`
`the full scope of
`
`“substantially flexible” was disavowed so as to require making the substrate
`
`sufficiently thin such that it is able to bend without breaking, Elm respectfully
`
`submits that there was no clear and unambiguous disavowal requiring that this
`
`sufficient thinness be further limited to 50 micronsorless.
`
`There was no such disavowalfor at least the following reasons:
`
`e
`
`The intrinsic record clearly and unambiguously identified 50 microns
`
`as merely an example of a thinness sufficient to achieve “substantial flexibility.”
`
`e
`
`. The Office Action response did not clearly and unambiguously
`
`disavow substantially flexible substrates that are thicker than 50 microns.
`
`e
`
`At most, the Office Action response is ambiguous, and, in the context
`
`of the other clear and explicit statements that 50 microns is an example and not a
`
`requirement, is not a clear and unambiguousdisavowal.
`
`10
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`

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`e
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`The claim differentiation doctrine confirms there was no disavowal of
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`flexible substrates that are thicker than 50 microns.
`
`The Court’s low stress dielectric disavowal analysis is therefore equally
`
`applicable here and compels the deletion of “50 microns” from the “substantially
`
`flexible” construction.
`
`1.
`
`“50 Microns” Was Merely An Example Of A Sufficiently
`Low Thinness
`
`During prosecution, Applicant repeatedly and explicitly stated that 50
`
`microns was just an example of a thinness sufficient to achieve the claimed
`flexibility.
`For example,
`to overcome the Bertin reference relied on by
`
`Appellants/Petitioners, Applicant stated in numerous different Office Action
`
`Responsesthat:
`
`A substantially flexible semiconductor
`
`substrate may be
`
`achieved by grinding until considerably thin, for example to a
`
`thickness of less than 50 microns, and polishing the resulting
`
`surface.
`
`E.g., J.A. 10313; J.A. 10316 (emphasis added).
`Similarly,
`in a different Office Action Response, Applicants again made
`
`clear that 50 microns was only an example of a sufficiently thin semiconductor
`
`substrate, and that the only real requirement was sufficient thinness, not a thinness
`
`of precisely 50 micronsorless:
`
`

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`Case: 17-2474
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`Document: 70
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`Page: 17
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`Two features are required to achieve substantial flexibility.
`
`One is that the semiconductor material must be sufficiently
`
`thin, e.g., 50 micronsorless.
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`J.A. 16038 (emphasis added).
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`These repeated statements that 50 microns was just an example of a
`
`sufficiently thin substrate are consistent with the specification, which likewise
`
`repeatedly referred to a substantially flexible substrate as thinned, without any
`
`mention or requirement that the substrate be thinned to a specific value of 50
`
`microns or less. For example: “The thinned (substantially flexible) substrate
`
`circuit layers of the 3DS memory circuit are typically ...” and “The thinned
`
`(substantially flexible) substrate circuit layer are preferably ... .” E.g., J.A. 885 at
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`8:34-46 (emphasis added).
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`2.
`
`The Prosecution History’s Indefiniteness Rejection
`Response Did Not Clearly And Unambiguously Disavow
`Substantially Flexible Substrates Thicker Than 50 Microns
`
`Applicant’s response to an indefiniteness rejection in one of the applications
`
`was consistent with these explicit prosecution history statements that 50 micronsis
`
`merely an example of a thinness sufficient to achieve the claimed flexibility.
`
`In
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`response to the indefiniteness
`
`rejection, Applicant cited to the following
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`specification passage describing an example of how a “substantially flexible”
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`substrate may be achieved in one embodiment:
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`2A. Grind the backside or exposed surface of the secondcircuit
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`substrate to a thickness of less than 50 um and then polish or
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`smooth the
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`surface.
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`The
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`thinned substrate
`
`is now a
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`substantially flexible substrate.
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`J.A. 1159 at 9:14-17; J.A. 10275. Consistent with the foregoing prosecution
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`history statements, nothing in this passage “clearly and unambiguously”states that
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`50 micronsorless is the only thinness sufficient to achieve the claim flexibility;
`
`it
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`merely describes an embodiment in which the utilized sufficient thinness was 50
`microns or less. J.A. 1159 at 9:14-17.
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`And in citing this passage to overcome the indefiniteness rejection,
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`Applicant did not “clearly and unambiguously” require that the sufficient thinness
`
`be limited to 50 microns. Rather, the Applicant restated this passage’s description
`
`of an embodiment in which the sufficient thinness was 50 microns orless and,
`
`critically, did not state that it was limiting the meaning of “substantially flexible”
`
`to the precise values used in this embodiment, but instead explicitly stated that the
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`meaning of “substantially flexible” is consistent with this description in the
`
`specification:
`
`As described in this passage, a semiconductor substrate is
`
`caused to be substantially flexible by thinning it to 50 microns
`
`or less and polishing or smoothing the thinned semiconductor
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`substrate to relive stress. The phrase “substantially flexible”
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`is used in the claims consistent with this description, which
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`is unambiguous.
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`J.A. 10275 (emphasis added). A substrate that is sufficiently thinned enough (and
`
`then polished or smoothed) to make it substantially flexible is “consistent with” the
`
`specification’s description, regardless of whetherthat sufficient thinness is the “SO
`micronsor less” used in the described exemplary embodiment. This indefiniteness
`
`rejection response thus does not “clearly and unambiguously” disavow flexible
`
`substrates that are thicker than 50 microns because “[t]here is no ‘clear and
`
`unmistakable’ disclaimer if a prosecution argument is subject to more than one
`
`reasonableinterpretation, one of which is consistent with the proffered meaning of
`
`the disputed term.” SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1287
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`(Fed. Cir. 2005).
`
`This §112 rejection response is thus analogous to the one ‘addressed in
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`Toshiba Corp. v. Imation Corp., 681 F.3d 1358 (Fed. Cir. 2012).
`
`In Toshiba, the
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`Court found that the identification of a specification’s example as a “recording
`
`plane” in response to a §112 rejection did not necessarily limit the meaning of
`
`“recoding plane” to the identified example and, therefore, “is not a clear and
`
`unambiguous disavowalof claim scope.” Jd. at 1370-71. The sameistrue here —
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`explaining that
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`thinning a substrate to 50 microns is sufficient
`
`to make the
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`substrate substantially flexible does not necessarily mean that a thinness greater
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`than 50 microns could notalso be sufficiently thin enough to achieve the described
`
`substantial flexibility.
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`3.
`
`There Is No Evidence That A POSITA Would Understand
`That Substantially Flexible Substrates Thicker Than 50
`Microns Were Disavowed
`
`Phillips recognized that “persons of ordinary skill in the art rarely would
`confine their definitions of terms to the exact representations depicted in the
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`embodiments,” Phillips, 414 F.3d at 1323, and Appellants/Petitioners identified no
`
`evidence that a POSITA would understand that, based on this “consistent with”
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`office action response, a substrate must be thinned to 50 micronsorless in order to
`
`be sufficiently thin enough to achieve substantial flexibility.
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`Indeed, despite
`
`bearing the burden of proving disavowal, Appellants/Petitioners provided no
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`expert testimony or evidence of how a POSITA would understand this office
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`action response at all, much less testimony and evidence showing that a POSITA
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`would understand it
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`to disavow any substrate that was thinned to achieve
`
`substantial flexibility but was thicker than 50 microns. There could be no such
`
`evidence because a POSITA would understand that the thickness required to
`
`achieve substantial flexibility is not a constant value (of 50 microns or otherwise),
`
`but is variable calculated based on, among other things, the substrate’s material
`
`and its given surface area. See, e.g., J.A. 44-46.
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`At most, the current record establishes only that the foregoing “consistent
`with” argument is ambiguous, which is not sufficient to be the required “clear and
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`unambiguous” disavowal of all substantially flexible substrates thicker than 50
`
`microns.
`
`This Court has repeatedly held that
`
`the standard for disavowal
`
`is
`
`“exacting” and “stringent,” while also noting that the prosecution history often
`
`lacks
`the clarity necessary for claim construction purposes “because the
`prosecution history represents an ongoing negotiation between the PTO and the
`applicant, rather than the final product of the negotiation.” Aventis, 675 F.3d at
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`1330; Thorner, 669 F.3d at 1366; Phillips, 414 F.3d at 1329. This at-most
`
`ambiguous statement on which Appellants/Petitioners provided no evidence does
`
`not meet an “exacting” and “stringent” standard of a clear and unambiguous
`
`disavowal.
`
`Indeed,
`
`the Court must assess disavowal “based on the totality of the
`
`prosecution history.” Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 979 (Fed.
`Cir. 1999) (emphasis added). Here, in addition to the foregoing at-most ambiguous
`
`“consistent with” argument, the totality of the prosecution history also includes
`
`explicit and clear statements that the 50 microns was only an example of a
`
`sufficient substrate thinness, statements that were made both two monthsbefore_
`
`(J.A. 10313) and three-four months after (J.A. 10316; J.A. 16038) the “consistent
`
`with” statement.
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`Thus, Appellants/Petitioners have not proven the at-best ambiguous
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`“consistent with” argument is a clear and ambiguous disavowal of substrates that
`
`are sufficiently thin enough to achieve the claimed substantial flexibility but are
`
`thicker than 50 microns, particularly in light of all of the statements in the intrinsic
`
`evidence explicitly informing a POSITAthat 50 micronsorless is only an example
`
`of a sufficient substrate thinness.
`
`4.
`
`The Claim Differentiation Doctrine Confirms There Was
`No Disavowal Of Sufficiently Thinned Substrates That Are
`Thicker Than 50 Microns
`
`The doctrine of claim differentiation confirms that there was no disavowalof
`
`sufficiently thinned substrates that were thicker than 50 microns. Although not
`
`dispositive, the “doctrine is at its strongest ‘where the limitation sought to be read
`
`into an independent claim already appears in a dependent claim.’”
`
`°
`
`Seachange
`
`Int’l,
`Inc. v. C-COR, Inc., 413 F.3d 1361, 1368-69 (Fed. Cir. 2005), quoting
`Liebel-Flarsheim Co.v. Medrad Inc., 358 F.3d 898, 910 (Fed. Cir. 2004).
`
`Here, construing “substantially flexible” to include a 50 microns or less
`requirement would render numerousother claim limitations and dependent claims
`
`superfluous. For example, challenged ’499 Patent claim 1 requires a “substantially
`
`flexible ... semiconductor layer,” while its dependent claim 5 further requires that
`
`this substantially flexible semiconductorlayer also “has a thickness of 50 microns
`
`or less.” J.A. 1130-1131 at claims 1 and 5; see also, e.g., J.A. 1165 at claims 58
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`
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`and 86.
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`If “substantially flexible” means “50 microns orless,” then there is no
`
`need to specify that
`
`the claimed semiconductor layer
`
`is both “substantially
`
`flexible” and “has a thickness of 50 micronsor less.” Construing “substantially
`
`flexible” have a “50 microns or less” requirement would thus render dependent
`
`claim 5 and other similar claims and limitations entirely superfluous.
`
`While claim differentiation is not per se dispositive, such dependent claims
`
`and limitations are further intrinsic evidence that a POSITA would not understand
`
`that
`
`the full scope “substantially flexible” was clearly and unambiguously
`
`disavowed to include only substrates/layers that are 50 micronsorless, particularly
`
`in light of the prosecution history’s repeated express statements to the contrary.
`
`IV. The En Banc Court Should Grant Rehearing To Consider and Modify
`Its “Substantially Flexible” Construction To Omit The 50 Microns
`Requirement
`
`If the panel does not grant a rehearing and amendits “substantially flexible”
`
`construction to omit the 50 microns requirement, then Elm respectfully submits
`
`that the en banc Court should grant a rehearing and do so. For the reasons
`
`discussed above, the inclusion of a 50 microns requirementis contrary to this
`
`Court’s precedent, including its precedent:
`
`e Requiring that a purported disavowal must be clear and unambiguous
`
`based on thetotality of the prosecution history (see, e.g., Aventis
`
`Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012);
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`
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`Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366-67
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`(Fed. Cir. 2012); Toshiba Corp. v. Imation Corp., 681 F.3d 1358,
`
`1367 (Fed. Cir. 2012); Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d
`
`973, 979 (Fed. Cir. 1999);
`
`e Prohibiting a claim construction limiting claims to exemplary
`
`embodiments, even if only one exemplary embodimentis identified
`
`(see, e.g., Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1322 (Fed. Cir.
`
`2012); Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330
`
`(Fed. Cir. 2012); Thorner v. Sony Computer Entm’t Am. LLC, 66