In its Decision, the Board denied Petitioners’ Request for Rehearing of the Board’s Decision denying institution of inter partes review of claims 1-10 of the ‘124 patent. Although the original Petition had challenged claims 1-10, the Request for Rehearing was limited to the issue of whether independent claim 6 and its dependent claim 10 were unpatentable under 35 U.S.C. § 103(a) over Goda in view of Toshiba.
Petitioners’ Request for Rehearing asserted that the Board had misapprehended or overlooked five separate points.
In addressing the first point, i.e., Toshiba’s use of the term “slightly oval in shape,” the Board noted that the Request had not identified where Toshiba’s meaning of this terminology was addressed previously in the Petition. The Board went on to state that it “cannot overlook or misapprehend facts or arguments that have not been presented in the Petition[,]” and that, regardless, it was not persuaded by Petitioners’ arguments on this point. In reaching this conclusion, the Board cited to a general dictionary evidencing that the word “oval” has several meanings.
Petitioners’ second point disputed the Board’s construction of the disclosure of an “elliptical shape” contact in Toshiba. As with the first issue, the Board found that this argument was not provided in the Petition. Nonetheless, even if it had been, the Board found this argument to be unpersuasive because the analysis that Petitioners provided merely amounted to attorney argument that was unsupported by evidence in the record, and that did not clarify a number of relevant facts.
The third point raised in the Request related to the Board’s conclusion that the combination of Goda and Toshiba did not teach an “elliptical shape” contact. After noting that Petitioners’ had not identified where this line of argument was previously addressed in the Petition in the context of addressing Toshiba, the Board concluded that it was not persuaded that it had abused its discretion in finding that Dr. Mack’s declaration did not sufficiently clarify what “ellipse” meant in the Toshiba reference. According to the Board, testimony by Dr. Mack discussing the Goda reference did not provide sufficient illumination as to the meaning of ellipse” in the context of the Toshiba reference.
Petitioners’ fourth point in its Request was that the Board had misapprehended that Petitioners had not argued “that the combined teachings of Goda and Toshiba teach the elliptical shape limitation, recited in claim 6.” The Board was not persuaded by this position because the Petition had not made clear that Toshiba was being relied upon to teach the elliptical shape contact or that Goda was deficient in disclosing the elliptical shape limitation.
The fifth point raised by Petitioner in its Request related to Petitioners’ use of the term “patterning” in arguing that the patterning techniques of Toshiba were applicable to Goda. In reply, the Board noted that Petitioners had not indicated where the meaning of the term “patterning” was addressed in the Petition. The Board disputed Petitioners’ proposed interpretation of this term as well, noting that Petitioners’ position on this point was “unsupported by sufficient objective evidence, such as testimony by one skilled in the art of photolithography.” The Board also pointed out that “[t]he reasoning presented in the Petition does not address the shape of the contact holes, but is generally directed to patterning and insulation techniques, or manufacturing techniques for memory devices involving patterning of control gates and contact holes.”
Macronix International Co., Ltd., Macronix Asia Limited, Macronix (Hong Kong) Co., Ltd., and Macronix America, Inc. v. Spansion LLC, IPR2014-00106
Paper 15: Decision on Request for Rehearing
Dated: June 9, 2014
Patent: 6,900,124 B1
Before: Howard B. Blankenship, Kristen L. Droesch, and Justin T. Arbes
Written by: Droesch