[00:00:00] Speaker 04:
We've consolidated the first three cases for argument.

[00:00:04] Speaker 04:
It's 14-15-09, 15-10, and 15-11, Board of Trustees versus Micron Technology.

[00:00:12] Speaker 04:
Mr. Somerville and Mr. Cordell, I know early on in the process when we consolidated, I don't know whose great idea it was to give each side 30 minutes, but certainly having gone through the cases, we're not entirely clear that that

[00:00:26] Speaker 04:
amount of time is necessary given the limited issues in this case.

[00:00:30] Speaker 04:
That doesn't go to the importance of the issues, but just tells how complicated or lonely they are.

[00:00:34] Speaker 04:
So feel free to take a much shorter time.

[00:00:37] Speaker 00:
I think we can accommodate the bench, Your Honor.

[00:00:39] Speaker 04:
Thank you.

[00:00:40] Speaker 00:
So the inventions of the three patents ensued involved the notion that when hydrogen is replaced with relatively heavy deuterium in the passivation of semiconductor devices, the bond strength at the interface of the device is increased to such an extent

[00:00:54] Speaker 00:
that the lifetime of the device can be enhanced up to 10 times.

[00:00:58] Speaker 04:
So can I interrupt since we're trying to move this along.

[00:01:02] Speaker 04:
I was a little confused between blue and gray.

[00:01:06] Speaker 04:
And by gray, you seem to really focus down what the number of your issues are and your argument.

[00:01:12] Speaker 04:
And it seemed to me, so I want you to correct me if I'm misunderstanding, that your real argument is that in the prior art, whoever the reference is, whatever they had, it was for before and after.

[00:01:28] Speaker 04:
And since you are just after, and you mentioned something like it's a coin flip, something like that.

[00:01:34] Speaker 04:
So tell me if that's your main argument, and then maybe you can tease it out for me a little.

[00:01:39] Speaker 00:
It's virtually our argument, Your Honor.

[00:01:40] Speaker 00:
What we're saying is that Lysenko may, in passing, suggest to one of ordinary skill in the art the use of post-metalization passivation.

[00:01:50] Speaker 00:
So it's not even that it's a coin flip.

[00:01:52] Speaker 00:
the teachings of Lysenko are weighed very heavily in favor of pre-metal passivation.

[00:01:57] Speaker 03:
So are you suggesting that, because let's be clear, that the PTABs erred and that there was not substantial evidence for their fact finding that Lysenko discloses post-metallization of the alleys?

[00:02:10] Speaker 00:
No, what we're saying, Your Honor, is that because

[00:02:13] Speaker 00:
viewed in a light most favorable to lysineker because it arguably teaches both.

[00:02:17] Speaker 03:
A favorable to lysineker?

[00:02:18] Speaker 03:
You mean most favorable to micron or most favorable to PTAB?

[00:02:21] Speaker 00:
The lysineker reference.

[00:02:23] Speaker 03:
Okay.

[00:02:23] Speaker 00:
The point is that what the PTAB found was that lysineker teaches both pre and post metal annealing, and that's micron's position as well.

[00:02:31] Speaker 00:
We're saying, well, even assuming that that's true,

[00:02:34] Speaker 03:
So you're not disputing the factual finding that Lysenko discloses post-metallization annealing?

[00:02:41] Speaker 00:
No, we're accepting that for purposes of argument on appeal.

[00:02:44] Speaker 00:
What we're saying is that the question becomes whether someone reading Lysenko

[00:02:49] Speaker 00:
would have necessarily selected post-medal annealing and therefore obtained the tenfold enhancement in device lifetime that's claimed in the patents.

[00:02:58] Speaker 04:
Okay, so on that point, whether someone would have necessarily have taken the post, we agree it includes pre and post.

[00:03:08] Speaker 04:
Correct.

[00:03:09] Speaker 04:
So what is your argument?

[00:03:12] Speaker 04:
We've got numerous cases which say, for purposes of an obviousness inquiry, we look at the

[00:03:17] Speaker 04:
possibilities, the options that you choose.

[00:03:20] Speaker 04:
And if it's an ascertainable number or something that's not astronomically high, like you would have experimented with 10,000 options.

[00:03:28] Speaker 04:
Now we have two.

[00:03:30] Speaker 04:
So if those two options are disclosed in Leisinger and you agree that one only, and your argument is only one of them is relevant, how does that comport with our case law saying it wouldn't have been obvious to pick the second one?

[00:03:43] Speaker 00:
Because what we point to, Your Honor, is this court's extensive case law regarding inherency.

[00:03:49] Speaker 00:
That when we're talking about inherency, which is what the board found, it didn't say it would have been obvious to try these different things, it said it was inherent.

[00:03:57] Speaker 00:
And when we talk about the doctrine of inherency,

[00:03:59] Speaker 00:
What we are looking for is something that is necessary and invariable from practicing the prior art.

[00:04:04] Speaker 00:
And if the prior art says, do one or the other, then by definition, it's not necessary or invariable.

[00:04:09] Speaker 00:
Especially with life-sinkers' teachings.

[00:04:11] Speaker 00:
It's not necessarily, I'm sorry, I didn't catch your last one.

[00:04:14] Speaker 00:
Necessary and invariable.

[00:04:15] Speaker 00:
In other words, people practicing the prior art.

[00:04:17] Speaker 03:
Okay, time out.

[00:04:18] Speaker 03:
I didn't think that was the inherency argument from the PTAB.

[00:04:21] Speaker 03:
I thought that their fact-finding on inherency, and please correct me, I may be wrong,

[00:04:26] Speaker 03:
was that when you use post-metallization annealing using deuterium, you get at least a ten-fold increase in lifespan.

[00:04:35] Speaker 03:
I thought the inherency went to using deuterium automatically gets you this ten-fold lifespan if you use it in a post-metallization annealing.

[00:04:44] Speaker 00:
It did, and that's the wrong test, because again, when we're talking about inherency, we're talking about what happens when you practice the prior arts.

[00:04:51] Speaker 00:
and we can't just cherry pick out of Lysinger or whatever teachings there were.

[00:04:54] Speaker 03:
Why?

[00:04:55] Speaker 03:
If Lysinger gives, and I realize this is not the way Lysinger is written, but suppose that Lysinger gave two examples expressly.

[00:05:04] Speaker 03:
Post-metalization annealing was one example and the second embodiment was pre-metalization annealing and they say, without referencing the inherent tenfold increase that you would receive in the post-metalization annealing scenario, but they say

[00:05:16] Speaker 03:
You can replace the deuterium for the hydrogen in either of these scenarios and this will work.

[00:05:25] Speaker 03:
They never mention the tenfold increase, but I understand that you accept that that is an inherent result of post-metallization annealing using deuterium.

[00:05:35] Speaker 03:
The disclosure of two embodiments, why does the disclosure of one embodiment that's not relevant to your patent somehow render the second concrete and explicit disclosure, which is exactly relevant to your patent, not relevant to the inquiry?

[00:05:50] Speaker 00:
That might be the case, Your Honor, if Lysenko said, and if you use post-metal annealing, you will get more deuterium at the interface in this result.

[00:05:58] Speaker 03:
So why do they have to say that?

[00:06:00] Speaker 03:
I thought, this is why I asked you in the beginning, do you agree

[00:06:03] Speaker 03:
I don't see you disputing it.

[00:06:05] Speaker 03:
In fact, page one of your great brief says it pretty much, that when you use Ceterium in a post-metallization annealing process, it is inherent that the result will give you a tenfold increase in lifespan.

[00:06:19] Speaker 03:
What I don't see anywhere here or before the pH tab is some sort of argument like, well, if you do the annealing at only a certain temperature or only for a certain amount of time, you won't have a sufficient concentration of deuterium built up so that maybe you'll only get a seven-fold.

[00:06:33] Speaker 03:
Like, I don't see any sort of teasing out from a technological standpoint of some difference.

[00:06:38] Speaker 00:
That's right, Your Honor.

[00:06:38] Speaker 00:
In other words, we aren't saying that you have to vary other manufacturing parameters in order to get this result.

[00:06:44] Speaker 00:
If you do post-medal annealing, this is what the patents say, if you do post-medal annealing, it's a tenfold increase.

[00:06:51] Speaker 00:
The question, however, is how do you evaluate that within the teachings of Lysenko?

[00:06:56] Speaker 00:
And we say it's analogous to this court's line of cases that talk about the patentability of a species within a genus.

[00:07:03] Speaker 00:
where one discovers an unexpected result from a species.

[00:07:08] Speaker 00:
In other words, the genus can have been disclosed in the past, but if the species produces an unknown or unexpected result, that species may be independently patentable and that's what we have here.

[00:07:18] Speaker 00:
The genus is the use of deuterium

[00:07:21] Speaker 03:
You think that's true when the genus includes only two species?

[00:07:25] Speaker 03:
You know, it's kind of narrow, right?

[00:07:27] Speaker 03:
I mean, they don't talk about the unexpected result which you've admitted is inherent from the youth and only two examples who exist of species.

[00:07:36] Speaker 03:
I don't know.

[00:07:36] Speaker 03:
I'm feeling a little nervous about your analogy.

[00:07:38] Speaker 00:
But Your Honor, this Court has never really set out a numerical limit where there has to be some

[00:07:46] Speaker 00:
minimum number of species within the genus before discovering the unexpected properties of a species make that species patentable, independent from the genus.

[00:07:57] Speaker 04:
Well, we've got two here.

[00:07:59] Speaker 04:
And what you say in gray is a person of ordinary skill in the art, reading, listening, would have been left with his own devices to determine whether to use pre or post.

[00:08:10] Speaker 04:
So you've got two choices.

[00:08:12] Speaker 04:
And given that post-metal annealing is required for the claim temporal process, the likelihood of obtaining the increase in the teachings of the Listicor is no better than coin flip.

[00:08:22] Speaker 04:
Do you think under our case law, if there's a disclosure of two options and then you pick one of them and patent it, that doesn't lead you to obviousness when you've had a choice between two options and you picked one of them?

[00:08:36] Speaker 00:
Not by itself, Your Honor.

[00:08:37] Speaker 00:
There has to be some motivation to understand

[00:08:40] Speaker 00:
that one option is better than the other.

[00:08:43] Speaker 00:
I mean, otherwise, we are really talking about... Now we're down... Why do you need motivation?

[00:08:47] Speaker 01:
I mean, doesn't that, if you have a range, and isn't that just a matter of just tinkering within the range?

[00:08:52] Speaker 01:
There's no logical leaps here.

[00:08:56] Speaker 01:
What's the requirement of motivation in these circumstances?

[00:09:00] Speaker 00:
Attempting to get an enhanced lifetime performance, Your Honor.

[00:09:03] Speaker 00:
One reading, my thinker, would say, well, all I have to do is replace hydrogen with deuterium at some point during the fabrication process.

[00:09:10] Speaker 00:
As long as I do that, I'm going to get enhanced device improvement because LifeSinker doesn't even talk about it.

[00:09:16] Speaker 04:
Okay, so even if we're talking about motivation, so your motivation is to enhance the life.

[00:09:21] Speaker 04:
So you try two things.

[00:09:22] Speaker 04:
You try the kneeling before and the kneeling after, and you discover, according to your invention, that the kneeling after yields this tenfold increase in lifetime.

[00:09:31] Speaker 00:
But, Your Honor, where is the suggestion of that in LifeSanker as opposed to what Judge Moore talked about, which is varying the temperature, the time, all the other manufacturing parameters that one could tinker with in order to come up with a better semiconductor device?

[00:09:44] Speaker 00:
There's nothing in LifeSanker that says tinker with when you add the deuterium.

[00:09:49] Speaker 00:
It could be myriad other things that one of ordinary skilled near reading LifeSanker could try to get at this enhanced lifetime performance.

[00:10:00] Speaker 00:
So there's nothing in Life Tinker that says, if you want to try something to improve upon our teachings, tinker with when you add the deuterium.

[00:10:10] Speaker 00:
And that is the feature that these inventors discovered.

[00:10:15] Speaker 00:
The thing that you vary is adding the deuterium post-metallization.

[00:10:21] Speaker 03:
That's why I started, because you know, I think Leisinger's a little fuzzy on that, but I didn't see you appeal, and I understand why, and the narrator issues, but Leisinger, you are accepting the premise that Leisinger discloses two embodiments, pre-mentalization annealing and post-mentalization annealing, using deuterium.

[00:10:42] Speaker 03:
That's why we were going through all this in the beginning about pinning you down to know exactly where you were.

[00:10:48] Speaker 03:
So if that is the universe, there's no appeal, that fact-finding is not supported by substantial evidence, and that's the universe I have to accept on appeal, then it's not a matter of somebody choosing, it's actually disclosed.

[00:11:02] Speaker 00:
Your Honor, it's not a question of just being two embodiments.

[00:11:04] Speaker 00:
As I mentioned before, the embodiments in Lysenko, as far as all the manufacturing parameters are concerned, are virtually limitless.

[00:11:14] Speaker 00:
Because Lysenko doesn't just disclose,

[00:11:17] Speaker 00:
adding deuterium.

[00:11:18] Speaker 00:
It talks about, again, it talks about a variety of process parameters, time, temperature, et cetera.

[00:11:23] Speaker 00:
So someone reading Lysenko wouldn't know inherently, well, if I want to improve on Lysenko, I am going to look at when to add the deuterium as opposed to varying any of the other process parameters that one might vary.

[00:11:37] Speaker 00:
So Lysenko doesn't call out adding deuterium at particular times during the manufacturing process.

[00:11:46] Speaker 00:
as something particular that one should be looking at if one's looking to improve on life center's teachings.

[00:11:52] Speaker 00:
So back before the claim, before the applications for the patent institute were filed, before anyone had the benefit of the claims as a blueprint, what would they have done reading life center to try to improve on it?

[00:12:05] Speaker 00:
Well, the conclusion now in hindsight is, well, of course they would vary when you add the deuterium because that's the thing that we're focused on.

[00:12:12] Speaker 00:
But without the benefit of the claims to know that, how would someone of ordinary skill in the art possibly know that that's the parameter to vary?

[00:12:19] Speaker 00:
Especially when Lysenko says absolutely nothing whatsoever about whether there's a benefit to adding deuterium before, during, or after metallization.

[00:12:29] Speaker 00:
As a matter of fact, Lysenko's teachings, as we say in our brief, are agnostic in that regard.

[00:12:34] Speaker 00:
So what in Lysenko calls out that particular parameter is the thing to vary?

[00:12:40] Speaker 00:
Well, nothing.

[00:12:41] Speaker 00:
And so that is the inventive discovery that the inventors made.

[00:12:45] Speaker 00:
This is the thing we are going to look at.

[00:12:48] Speaker 00:
And what they discovered was if you add deuterium post-metallization, you avoid the high temperatures associated with the pre-metallization fabrication steps.

[00:12:56] Speaker 00:
And that's when you retain more deuterium at the interface.

[00:12:59] Speaker 00:
And that's what gets you the tenfold increase.

[00:13:02] Speaker 00:
Whereas other people may have been muddling around with things like, well, if we vary the temperature, what's going to happen?

[00:13:07] Speaker 00:
If we have varied the length of time in which we subject these devices,

[00:13:11] Speaker 00:
to different manufacturing steps that might improve on it, they would have been looking around in the dark for a target that may or may not have existed.

[00:13:18] Speaker 00:
So the inventors discovered this.

[00:13:20] Speaker 00:
And yes, in this circumstance, we believe that this is an example of a species that's independently patentable from the genus, where the only thing the inventors varied was when you add the deuterium.

[00:13:37] Speaker 00:
Thank you.

[00:13:44] Speaker 02:
We certainly agree with the court's analysis, particularly with respect to the inherency issue.

[00:13:53] Speaker 02:
The inherency issue doesn't lie with respect to whether or not licensure teaches

[00:13:57] Speaker 02:
post-metal annealing in the presence of deuterium.

[00:14:00] Speaker 04:
What about the last kind of discussion your friend had about when we were talking about the number of options?

[00:14:07] Speaker 04:
So we look at licensing and we say, well, you can do it before, you can do it after.

[00:14:11] Speaker 04:
You just tip after.

[00:14:12] Speaker 04:
But he's saying there are countless variables that you could play with.

[00:14:16] Speaker 04:
given Lysinger, countless in terms of temperature or whatever, to get improvement or a longer lifetime.

[00:14:23] Speaker 04:
And why isn't that countless number of options, which if we're playing with what was laid out for us in Lysinger, enough to avoid the obviousness?

[00:14:31] Speaker 02:
Because I disagree with the university's reading of Lysinger as A or B, pre or post.

[00:14:38] Speaker 02:
Instead, what Lysinger tells us is to do it at every stage in BLSI processing.

[00:14:44] Speaker 02:
That is the fundamental teaching of Lysinger.

[00:14:46] Speaker 02:
It tells us that over and over again.

[00:14:48] Speaker 04:
So your view is it tells us to do it before and it tells us to do it after, and after is there.

[00:14:53] Speaker 04:
Correct.

[00:14:55] Speaker 04:
Well, except those aren't the only two options, he says.

[00:14:59] Speaker 04:
I mean, there are all these potential variations in Lysinger in terms of temperature variation and all this other stuff.

[00:15:04] Speaker 02:
There are certainly other variables that could be managed, I suppose, but the fundamental teaching of Lysinger is to introduce deuterium at every stage in the BLSI processing.

[00:15:15] Speaker 02:
We see the record over and over again.

[00:15:17] Speaker 04:
But part of what they discovered, right, was that it works much, much, much more effectively if you do it after.

[00:15:25] Speaker 04:
And that's where you get the tenfold increase.

[00:15:27] Speaker 04:
So why isn't that enough of a discovery or an inventive taking away from, given what Lysinger let us do?

[00:15:35] Speaker 02:
I think I had three responses to that.

[00:15:37] Speaker 02:
is that what King Farmer tells us is that you can't rely on an undisclosed inherently that you then later claim to a greater extent than what you have put into your patent.

[00:15:53] Speaker 02:
So in this case,

[00:15:54] Speaker 02:
The patents themselves say nothing in the specification as originally filed in 1996 about this post-metal annealing.

[00:16:02] Speaker 02:
It's completely absent.

[00:16:03] Speaker 02:
The original claim simply said, passivating a semiconductor in the presence of deuterium.

[00:16:10] Speaker 02:
That was claim one filed originally.

[00:16:12] Speaker 02:
Two years later, over two years later, in April of 1998, they introduced claims for the first time, introducing this post-metal anneal concept.

[00:16:20] Speaker 02:
That is nowhere in the specification, in column four of the specification.

[00:16:23] Speaker 04:
Yeah, but the claims that they're relying on now, they've limited their universe.

[00:16:26] Speaker 04:
So we're just relying, they're just asserting the claims here that have this tenfold increase.

[00:16:31] Speaker 02:
They have.

[00:16:31] Speaker 02:
They have.

[00:16:32] Speaker 02:
But what King Pharma says precisely is that the prior art need only meet the inherently disclosed limitations to the extent the patented method does.

[00:16:40] Speaker 02:
The patented method, as disclosed, says nothing about the significance of post-medal annealing.

[00:16:46] Speaker 02:
It's completely absent.

[00:16:48] Speaker 02:
And in fact, it says just the opposite.

[00:16:49] Speaker 02:
In column four, it says you could do it before or after.

[00:16:53] Speaker 02:
And it says it over.

[00:16:54] Speaker 02:
It says it three separate times in the specification.

[00:16:56] Speaker 02:
It never attributes any significance whatsoever to the post-medal annealing.

[00:17:02] Speaker 01:
Are you saying that the pen doesn't disclose a ten times limitation?

[00:17:08] Speaker 02:
It does.

[00:17:09] Speaker 02:
It does disclose a ten times lifetime extension, but it does not ever associate that with post-metal annealing.

[00:17:16] Speaker 02:
They attempted to argue before the board this unexpected results argument that we heard counsel make here today, and the board said that

[00:17:23] Speaker 02:
all well and good, but you haven't associated it with a particular embodiment in the patent, because the patent is agnostic as to pre or post-metal annealing.

[00:17:33] Speaker 02:
The patent itself doesn't tell you that the post-metal annealing is responsible for the 10 times lifetime improvement, and therefore the board denied them any unexpected results.

[00:17:43] Speaker 02:
And that's the absolute fact that the university has to labor with, is that its own patent doesn't support the distinction council is now trying to

[00:17:53] Speaker 03:
Are you suggesting that the claim, I want to ask you what I'm looking at and what claim number this is.

[00:17:59] Speaker 03:
I guess it's claim two of the five three great.

[00:18:02] Speaker 03:
Are you suggesting that this claim isn't limited to post-metallization annealing?

[00:18:06] Speaker 03:
It's broader and includes both pre and post?

[00:18:08] Speaker 02:
No, I think it is limited to post-metal annealing.

[00:18:11] Speaker 02:
It says so pretty straightforwardly.

[00:18:13] Speaker 03:
So if the claim is limited to post-metalization annealing and the claim recognizes a ten-fold increase in the post-metalization annealing process, I don't understand your argument.

[00:18:23] Speaker 03:
Your argument seems to me to be written description or enablement or something, but it doesn't really seem directly

[00:18:29] Speaker 03:
supportive of an obvious misdetermination.

[00:18:32] Speaker 02:
Well, it's King Farma.

[00:18:33] Speaker 02:
So what King Farma tells us is that if you are relying on an aspect of your claims that is only inherently disclosed, you can't be critical of the prior art

[00:18:45] Speaker 02:
for suffering from the same defect.

[00:18:47] Speaker 02:
In other words, the level of disclosure, it is very akin to a written description requirement.

[00:18:51] Speaker 02:
I found it very interesting.

[00:18:52] Speaker 03:
Yes, but this is not inherently disclosed in the claim.

[00:18:55] Speaker 03:
It's expressly disclosed in the claim.

[00:18:57] Speaker 03:
Well, that's true.

[00:18:58] Speaker 03:
It doesn't have us in the King Pharma universe.

[00:19:00] Speaker 03:
I understand the King Pharma case is based on the idea if you didn't say it in your claim, the prior art doesn't have to say it.

[00:19:05] Speaker 03:
But here they did.

[00:19:06] Speaker 03:
They actually made it an express limitation.

[00:19:08] Speaker 02:
But recall that there's no dispute in this case that the express limitation, the post-metal annealing, is disclosed in lysineker.

[00:19:16] Speaker 02:
So they concede to that, as you pointed out at page one of the gray brief, they say it right up front, that in fact lysineker discloses both pre-metal annealing and post-metal annealing.

[00:19:26] Speaker 02:
So the question then shifts to whether the 10 times limitation is inherent.

[00:19:30] Speaker 02:
Again, as you

[00:19:32] Speaker 02:
artfully articulated.

[00:19:33] Speaker 03:
Well, Lysinger doesn't disclose all the steps, right?

[00:19:35] Speaker 03:
I mean, this is an obviousness, rejection.

[00:19:41] Speaker 03:
Lysinger is being used for use of deuterium in post-medalization annealing, correct?

[00:19:49] Speaker 03:
That's right.

[00:19:49] Speaker 03:
It's not being used on all the elements.

[00:19:54] Speaker 02:
So the issues have shifted a bit.

[00:19:56] Speaker 02:
Before the board, that was absolutely true.

[00:19:58] Speaker 02:
The university took the position before the board that licensure failed to disclose post-medal annealing at all.

[00:20:05] Speaker 02:
And I think that's what drove it to an obviousness conclusion rather than anticipation.

[00:20:09] Speaker 02:
But a couple of things have happened since then.

[00:20:11] Speaker 02:
We have the admissions you've seen in the gray brief.

[00:20:13] Speaker 02:
of two significant issues.

[00:20:14] Speaker 02:
Number one, that Lysinger does disclose post-medal annealing, and that when you have post-medal annealing, it is inherent that you have a 10 times lifetime improvement.

[00:20:24] Speaker 02:
Those two admissions, and they're reflected in other places in the record, I think have taken us frankly to a place where anticipation is appropriate here.

[00:20:33] Speaker 02:
But having said that, the obviousness case is compelling.

[00:20:36] Speaker 02:
Not only do we have licensors teaching that deuterium is good in response to Judge Raina's questions, the reference itself talks about strengthening the bonds.

[00:20:46] Speaker 02:
It talks about maximizing the deuterium at the critical part of the semiconductor, at the interface between the silicon substrate and the silicon dioxide overlay.

[00:20:55] Speaker 02:
And that maximizing the deuterium there strengthens the bonds and makes it resistant, more resilient, and more reliable, exactly the purpose for which the patents talk about the invention.

[00:21:06] Speaker 02:
And then beyond that, if for some reason you can't find it all in Lysinger, the obviousness case here is very, very compelling.

[00:21:12] Speaker 02:
We have references like Diehl and Geis and Wang that lay out the BLSI process in great detail, talk about the criticality of annealing post-metal in hydrogen, because it does exactly the same thing, improves the reliability, reduces the bond stresses, all of the things that the patents claim.

[00:21:32] Speaker 02:
And then you add that with Lysinger's teaching that you want to replace

[00:21:36] Speaker 02:
hydrogen with deuterium at every step in the BLSA process, including the post-metal anneal.

[00:21:42] Speaker 02:
The board found, and that's a fact finding that's entitled to a substantial evidence standard of review, that in fact the motivation to combine was there.

[00:21:52] Speaker 02:
It's the only thing that the university has challenged with respect to this obvious discombination.

[00:21:56] Speaker 03:
Does Lysinger ever disclose post-metallization annealing?

[00:22:00] Speaker 02:
It talks about doing it all through the process.

[00:22:03] Speaker 02:
It never comes out and says, only do post-metal annealing.

[00:22:07] Speaker 02:
So if this were a case with a negative limitation, it would be a different story.

[00:22:11] Speaker 03:
Does it ever talk about pre-metalization annealing?

[00:22:13] Speaker 02:
Well, it does.

[00:22:14] Speaker 02:
It talks about it all through.

[00:22:15] Speaker 03:
You can see passages that talk about passivation, and that is typically done at a post-metallic phase, but if I can... Prisinger is generally a patent about pre-metallization annealing, and isn't it true that the only thing that you're relying on for its disclosure of post-metallization annealing is

[00:22:31] Speaker 03:
an error sentence that says the LSI fabrication flows employ deuterium-containing compounds in many or all of the fabrication steps that would normally employ hydrogen.

[00:22:41] Speaker 03:
And you're saying because of the sentence that says you can replace hydrogen with

[00:22:46] Speaker 03:
Deuterium, anywhere you would normally use hydrogen, that you're extrapolating from that, that you could also therefore do it in post-fetalization annealing, even though the patent never ever talks about post-fetalization annealing.

[00:22:59] Speaker 02:
Well, I've got a couple of responses.

[00:23:00] Speaker 02:
So there are more quotes.

[00:23:02] Speaker 02:
So at 491, for example, it talks about contacting a silicon wafer with deuterium or deuterium containing compound before, during, and or after formation of a device oxidized.

[00:23:12] Speaker 03:
Which has nothing to do with annealing.

[00:23:13] Speaker 03:
Do you understand your semiconductor fabrication?

[00:23:15] Speaker 03:
That is not speaking about before or after.

[00:23:17] Speaker 03:
That is not pre or post-metallization annealing.

[00:23:20] Speaker 02:
It talks about nothing to do with annealing.

[00:23:22] Speaker 02:
Well, after oxide formation.

[00:23:23] Speaker 02:
So at least we know that it's talking about it there.

[00:23:26] Speaker 02:
I'll move on then.

[00:23:27] Speaker 03:
That certainly is not a sentence.

[00:23:28] Speaker 03:
When you point to before, during, or after, you're not talking about the timing of the annealing, right?

[00:23:34] Speaker 02:
Well, I'm talking about the timing with respect to formation of the device oxide layer.

[00:23:39] Speaker 03:
That is not a disclosure, is it?

[00:23:42] Speaker 03:
I didn't see the PTAB holding that that amounted to a disclosure of criminalization and kneeling, and I don't think it does technically, but are you telling me that I should assume it does, or that you think it does, or are you arguing for me it does?

[00:23:54] Speaker 02:
I'm making the argument based on the disclosure and the specification, and it's useful for whatever purpose it's useful for.

[00:24:01] Speaker 02:
That was just very clear, thank you.

[00:24:06] Speaker 02:
Go ahead, what else were the ones you got?

[00:24:07] Speaker 02:
Let me try another one then.

[00:24:09] Speaker 01:
To clarify, you made reference to a number of other prior art references and those other references were not before this, right?

[00:24:18] Speaker 02:
They were before the board.

[00:24:20] Speaker 02:
They were before the board.

[00:24:21] Speaker 02:
There were different grounds upon which the rejections were made.

[00:24:24] Speaker 02:
And so, for example, in the 533, it was licensure in view of deal, I believe.

[00:24:29] Speaker 02:
For the 204, it was licensure in view of guise.

[00:24:33] Speaker 01:
And for the 387... The board didn't rely on them in order to make its decision.

[00:24:37] Speaker 02:
They did make obvious decisions, but you are correct.

[00:24:40] Speaker 02:
They primarily focused on licensure.

[00:24:42] Speaker 02:
That was the focus of the debate.

[00:24:43] Speaker 01:
If the board didn't rely on them, then we can't either.

[00:24:46] Speaker 02:
So there is a recent case that the court issued, I guess it's Henry Cuso, that suggested that, in fact, you can review the entirety of the record and affirm on other grounds.

[00:24:59] Speaker 02:
But we haven't pursued that in the appeal.

[00:25:01] Speaker 02:
It hasn't been a significant issue.

[00:25:02] Speaker 02:
That is correct.

[00:25:03] Speaker 03:
Are you telling me you think I can affirm on a ground that wasn't addressed by the board on a question of obviousness by looking at references they didn't analyze and reaching conclusions about them?

[00:25:15] Speaker 02:
No.

[00:25:15] Speaker 03:
No, they did analyze them.

[00:25:17] Speaker 03:
Oh, so they did analyze them?

[00:25:19] Speaker 03:
I thought that they didn't actually say, you know, rejected this in light of this, this in light of this.

[00:25:24] Speaker 03:
I thought that it was all unlicensed growth.

[00:25:25] Speaker 02:
No, they did.

[00:25:26] Speaker 02:
They went through combinations, several combinations.

[00:25:29] Speaker 02:
keyed on those three, but there were many that they actually held on.

[00:25:33] Speaker 02:
If I can come back to Judge Ward, your question about whether or not Lysinger has a specific disclosure of a post-metal anneal, there is one, but it's complicated.

[00:25:42] Speaker 02:
And it has to do with the fact that Lysinger discloses the existence of deuterium at the interface between the silicon-silicon dioxide stack.

[00:25:53] Speaker 02:
And it's found at appendix 495 and 496.

[00:25:57] Speaker 02:
And what it tells us there is that through the use of the invention disclosed in the disclosure of lysinger, you find a significant increase in the concentration of deuterium at that interface.

[00:26:11] Speaker 02:
It goes from a 1 to 6,000 ratio to a 99 to 1 or 99 to 5, depending on which part of it you look at.

[00:26:18] Speaker 02:
That's over a 500,000 times increase in the concentration of deuterium at that interface.

[00:26:26] Speaker 02:
There is record evidence from the university that tells us that the only way

[00:26:32] Speaker 02:
The only way to achieve that kind of concentration at the interface between the silicon and silicon dioxide layers is through a post-metal anneal.

[00:26:45] Speaker 02:
We find that at, for example, the

[00:27:01] Speaker 02:
So it's in live synchro again at the at 49525 to 4966.

[00:27:07] Speaker 03:
That paragraph starts with, in general, electronic devices formed according to the above processes.

[00:27:15] Speaker 03:
But all of the above processes seem to be clearly pre-metalization annealing processes.

[00:27:23] Speaker 03:
So I don't know.

[00:27:26] Speaker 02:
Well, let me see if I can drive it home, Your Honor.

[00:27:29] Speaker 02:
What it tells us earlier is that you do annealing with deuterium all through the process, pre-end post.

[00:27:35] Speaker 02:
We get to this example, the one example that's this post.

[00:27:37] Speaker 03:
No, it doesn't say pre-end post.

[00:27:38] Speaker 03:
No, no, it doesn't say you do annealing all through the process, pre-end post.

[00:27:41] Speaker 03:
We went over this.

[00:27:42] Speaker 03:
Lysinger never says you do annealing post, ever, anywhere.

[00:27:47] Speaker 03:
So you're starting from the wrong premise.

[00:27:50] Speaker 02:
Well, let me try it one more time.

[00:27:52] Speaker 02:
So at 493, when it talks about

[00:27:54] Speaker 02:
The present invention can be implemented through the VLSI fabrication procedure.

[00:27:59] Speaker 02:
A typical fabrication procedure will include various doping, etching, annealing, deposition, cleaning, passivation, and oxidation steps.

[00:28:07] Speaker 02:
Those would include the post-metal annealing, particularly IT on the passivation term there.

[00:28:14] Speaker 02:
But the fact of the matter is there is some disclosure that is done all the way through the process, so I think we need to credit that.

[00:28:19] Speaker 02:
But then this example tells us

[00:28:21] Speaker 03:
It's not all the way through the process, but you wouldn't... I don't know if I'm right about this.

[00:28:27] Speaker 03:
I'm just going to throw it out there.

[00:28:28] Speaker 03:
But I don't understand technically why you would pre-metalize a needle with deuterium and then post-metalize a needle.

[00:28:35] Speaker 03:
You're saying it as though there's necessarily always a post-metalization annealing.

[00:28:40] Speaker 03:
step, and then this is deuterium.

[00:28:42] Speaker 03:
You just used deuterium there, and I feel like it's actually, he's right that it's an either-or at least.

[00:28:47] Speaker 03:
I mean, isn't it?

[00:28:48] Speaker 03:
I mean, I don't understand the technology to suggest there's always post-metallization nearing such that, annealing such that I would read this to require it.

[00:28:57] Speaker 02:
No part of lysis or tell you either-or.

[00:28:59] Speaker 02:
It may be wasteful, it may be the kind of thing that you wouldn't want to do because you wouldn't want to waste deuterium, but it never says that.

[00:29:05] Speaker 02:
It says do it at every step that you use hydrogen.

[00:29:08] Speaker 02:
And this example, based on their expert's deposition testimony...

[00:29:13] Speaker 02:
shows that, in fact, it is a post-metal anneal.

[00:29:15] Speaker 03:
If I can offer you that.

[00:29:16] Speaker 03:
Because you can't imagine, because nobody has put into evidence how they could get these particular results at the top of 496, unless it was through a post-metallization anneal.

[00:29:27] Speaker 02:
It's actually better than that.

[00:29:28] Speaker 02:
He says the only way to do it is through a post-metal anneal.

[00:29:30] Speaker 02:
So if we go to 804, the question was, Dr. Wallace, do you agree that to achieve these high ratios of 99 to 1, for example, of deuterium to hydrogen,

[00:29:40] Speaker 02:
that at the interface and at the interface and in the silicon dioxide 99.5 or 99 to 1, do you agree that a post fabrication anneal would be required to achieve such high concentration ratios?

[00:29:52] Speaker 02:
Yes.

[00:29:53] Speaker 02:
And then a follow on question.

[00:29:55] Speaker 02:
Skipping down.

[00:29:56] Speaker 02:
When you said that retention of the deuterium at the interface necessarily requires the post metal annealing, correct?

[00:30:03] Speaker 02:
Answer, yes.

[00:30:03] Speaker 03:
You obviously know this record very well, which I appreciate.

[00:30:06] Speaker 03:
It's very helpful for me.

[00:30:07] Speaker 03:
But is that a basis upon which the PTAB expressly made a fact finding that Lissinger discloses deuterium in a post-metallization annealing?

[00:30:17] Speaker 03:
I don't remember them discussing this example and saying, ah, we find this example, in combination with their expert, establishes that Lissinger actually disclosed post-metallization annealing.

[00:30:29] Speaker 02:
You are correct.

[00:30:30] Speaker 02:
It doesn't appear in their final written decision.

[00:30:33] Speaker 02:
what they did internally, we certainly don't know.

[00:30:35] Speaker 02:
But again, this court is reviewing the decision, ultimately, not the opinion that they wrote.

[00:30:41] Speaker 02:
And so to me, if we're searching for that example, this does give us that example.

[00:30:46] Speaker 02:
And Dr. Wallace's testimony was intact.

[00:30:52] Speaker 02:
There are no further questions.

[00:30:54] Speaker 02:
Thank you.

[00:31:13] Speaker 00:
I see I have 17 minutes left for rebuttal.

[00:31:15] Speaker 00:
I don't think I'll be using all that time.

[00:31:18] Speaker 00:
The first thing I want to start with is Mr. Cordell's statement that Lysenko mandates the use of deuterium at every stage where hydrogen can be used.

[00:31:28] Speaker 00:
Instead of making it optional is how I understood the controversy.

[00:31:32] Speaker 00:
If we go to page A-12 of the appendix 1509 appeal, we see the four passages from Lysenko that the board relied upon.

[00:31:42] Speaker 00:
in talking about Lysenko's teachings regarding the replacement of hydrogen with deuterium.

[00:31:47] Speaker 00:
And we see that far from Mr. Cordell's characterization of a mandate, these passages make it very clear that it is the option of the user, or the person who's designing the parameters, as to when the steps will be used with deuterium as opposed to hydrogen.

[00:32:05] Speaker 00:
So the first quote, it talks about hydrogen can be replaced with deuterium.

[00:32:11] Speaker 00:
The second quote says that deuterium can be used in many or all of the fabrication steps.

[00:32:19] Speaker 00:
The third quote talks about using deuterium before, during, and or after formation of the device oxide layer.

[00:32:26] Speaker 00:
And the last step uses the disjunctive or throughout its quote.

[00:32:31] Speaker 00:
The point is that Lysenko doesn't mandate anything.

[00:32:35] Speaker 00:
It leaves it to the user to figure out what steps one can replace hydrogen with deuterium in.

[00:32:41] Speaker 00:
So if Mr. Cordell's argument hangs on the fact that Lysenko mandates the use of deuterium at every step, which I understand it to, then he is incorrect, and there is no inherency here.

[00:32:53] Speaker 00:
And I really want to focus on the third quote here because this is important.

[00:32:56] Speaker 00:
This is the one that talks about the formation of the SID and SIOD bonds being accomplished in the present invention by contacting a silicon wafer with deuterium

[00:33:07] Speaker 00:
or a deuterium containing compound before, during, and or after formation of a device oxide layer.

[00:33:15] Speaker 00:
If we go to the 533 patent to figure out what a device oxide layer is, and we can look at page A95, and this is again in the appeal.

[00:33:32] Speaker 00:
It's page A95 of the 1509 appeal.

[00:33:43] Speaker 00:
And we look at lines 10 through 17 of column 4.

[00:33:48] Speaker 00:
There, there's a clear distinction drawn between the field oxide layer, which is element 16, and the conductive contacts, which are the metal parts that we're talking about in pre- and post-metallization, which are elements 18 through 20.

[00:34:07] Speaker 00:
The patent clearly distinguishes between the oxide layer and the metal context.

[00:34:12] Speaker 00:
This third quote here, which is one of the things the board relied upon, is talking about before, during, and or after formation of a device oxide layer.

[00:34:21] Speaker 00:
All of those are pre-metalization steps.

[00:34:23] Speaker 00:
So the point is Lysenko doesn't talk about, it doesn't say, do this post-metalization.

[00:34:29] Speaker 00:
It says, do it any time you feel like it, but what we're really talking about here is pre-metal annealing.

[00:34:35] Speaker 00:
Now, Mr. Cordell talked about these ratios that are disclosed in life-sinkering.

[00:34:39] Speaker 00:
The only way to get them is post-medal annealing.

[00:34:41] Speaker 00:
Well, the point is whether those ratios are accomplished some of the time or not is irrelevant to an inherency determination.

[00:34:48] Speaker 00:
They have to be accomplished all of the time.

[00:34:50] Speaker 00:
And when we look at the other evidence in the record, and this is specifically at Micron's own brief at page 16 of the 1509 appeal, their own expert talks about

[00:35:01] Speaker 00:
measuring the results of Lysenko.

[00:35:03] Speaker 00:
These results actually don't appear in Lysenko.

[00:35:04] Speaker 00:
He conducted tests that were supposed to replicate Lysenko, and he found results varying from 3.9 to 35 times.

[00:35:13] Speaker 00:
Those results don't support an inherency finding.

[00:35:16] Speaker 00:
As a matter of fact, it's just the contrary.

[00:35:18] Speaker 00:
When you have that diverse a range, no one can say with a straight face that these results are inherent.

[00:35:24] Speaker 03:
I don't understand.

[00:35:25] Speaker 03:
You didn't appeal inherently.

[00:35:28] Speaker 03:
You have accepted that post-metalization annealing creates at least a tenfold increase in lifetime when you use deuterium.

[00:35:38] Speaker 03:
So I don't understand your last point.

[00:35:41] Speaker 00:
The point is, Your Honor, that someone practicing life anchor might get 3.9 times increase, they might get 35 times.

[00:35:47] Speaker 00:
3.9 is not tenfold.

[00:35:50] Speaker 00:
So their own evidence says that depending on what you do with life thinker, you may get the tenfold increase, you may not.

[00:35:57] Speaker 00:
And the point is life thinker doesn't tell you how to get the tenfold increase as opposed to the 3.9 fold increase or some other increase below tenfold.

[00:36:07] Speaker 00:
It's left to the imagination of the reader.

[00:36:11] Speaker 01:
Is that consistent with the statement you make from page one of the great brief?

[00:36:16] Speaker 01:
where it seems to me you're making a concession as to the post-metal preservation step and what happens at that point.

[00:36:26] Speaker 00:
Well, page one, we say if you do post-metal annealing, you will get the tenfold increase.

[00:36:30] Speaker 00:
The if is the problematic issue here.

[00:36:33] Speaker 00:
There's nothing in Lysenko that says, do this specifically and if you want to get the tenfold increase, don't worry about temperature, don't worry about time, don't worry about the things you use for the other steps in the fabrication process.

[00:36:47] Speaker 00:
Just add deuterium any time you feel like it.

[00:36:50] Speaker 00:
That's what Lysenko says.

[00:36:52] Speaker 00:
That's not the discovery of the patents and suits.

[00:36:54] Speaker 00:
The patents and suits say, do it post-metallization.

[00:36:58] Speaker 00:
That's how you get the result.

[00:37:00] Speaker 00:
That's the distinction between the prior art and the patents ensued.

[00:37:08] Speaker 00:
The last issue I want to address, Your Honors, is Mr. Cordell's point that the patent itself doesn't talk about, doesn't tie the tenfold increase to post-metal annealing.

[00:37:17] Speaker 00:
In fact, if we look at A95 again, column four, line 16, it's describing device 11 of figure one.

[00:37:31] Speaker 00:
which is the main depiction of the invention in this patent.

[00:37:35] Speaker 00:
It's described as already including conductive contacts.

[00:37:38] Speaker 00:
In other words, that device has already gone through the metallization steps.

[00:37:42] Speaker 00:
So the device that is being subjected to deuterium annealing in this example would be post-metallization.

[00:37:51] Speaker 00:
Then we have in column seven of the same patent, lines four through five,

[00:37:55] Speaker 00:
The wafers used in the examples of the patents are described as containing NMOS transistor structures.

[00:38:01] Speaker 00:
Again, those wafers have already been metallized, so the annealing to which these devices are subjected is post-metal.

[00:38:09] Speaker 00:
So the patent very clearly uses examples where the annealing is all done post-metallization.

[00:38:15] Speaker 01:
Is there any way to do the post-metal annealing and not get the 10X result?

[00:38:20] Speaker 00:
No, Your Honor.

[00:38:21] Speaker 00:
We agree that if that is what the person decides to do, you will get that result.

[00:38:30] Speaker 00:
You will necessarily get that result, not a ring.

[00:38:33] Speaker 00:
Yes.

[00:38:34] Speaker 00:
But the question again is why would someone reading Lysenko choose to do that as opposed to the myriad other things they might do using Lysenko's teachings or some variation thereof.

[00:38:47] Speaker 00:
And finally, with regard to the prosecution history of the Patents Institute, which we can look at to talk about what this invention is all about, Micron itself quotes this passage from the prosecution history on page 12 of its 1509 red brief.

[00:39:00] Speaker 00:
The university's prosecution expert clearly tied an order of magnitude improvement in device lifetime performance, at least 10x,

[00:39:08] Speaker 00:
to a post-metallization anneal and deuterium semiconductor device fabrication step.

[00:39:13] Speaker 00:
So Micron itself calls out the part of the prosecution history where the result is tied specifically to post-metallization.

[00:39:21] Speaker 00:
We think that's sufficient enough, Your Honors, to indicate that you need post-metallization to get this 10X improvement.

[00:39:27] Speaker 00:
And simply taking a shot at Lysenko using some

[00:39:33] Speaker 00:
iteration of live center without the benefit of the claims would not have resulted in this improvement inherently.

[00:39:41] Speaker 04:
Thank you.