[00:00:00] Speaker 02: 2474, Samsung Electric vs. Allen. [00:00:59] Speaker 02: Cordell, please proceed. [00:01:01] Speaker 00: Thank you, Your Honor. [00:01:02] Speaker 00: Ruffin Cordell, I'm pleased to court. [00:01:04] Speaker 00: I'm here on behalf of all appellants. [00:01:09] Speaker 00: This case presents a dispute over the proper approach to claim construction. [00:01:13] Speaker 00: We have appellees taking us back 15 years to the days of Texas Digital. [00:01:18] Speaker 00: And we're relying on extrinsic lay dictionaries that have generic definitions for application in a very highly specialized and technical field. [00:01:29] Speaker 00: For Pellin's part, we were advancing a Phillips construction. [00:01:32] Speaker 00: We were looking at the definitions given to us by the patentee both in the specification and in the prosecution history. [00:01:39] Speaker 00: And that really is the fundamental dispute of this case. [00:01:42] Speaker 00: What was perhaps most remarkable as I confirmed this appeal in reading the briefing is that in the blue brief we advanced a very forceful, cogent, and I think persuasive argument that... [00:01:54] Speaker 00: in response to a indefiniteness rejection. [00:01:56] Speaker 02: Would you just stand up in front of us and tell me that in your blue brief you articulated a cogent, persuasive argument? [00:02:03] Speaker 00: I'll just go with argument, Your Honor, if that'll do it. [00:02:06] Speaker 02: Because adjectives characterizing affirmatively your own quality of briefing seem not to be a good use of time. [00:02:14] Speaker 00: OK. [00:02:14] Speaker 00: Well, then I'll just call it an argument. [00:02:16] Speaker 00: We made a substantial argument. [00:02:18] Speaker 00: We can call it that. [00:02:20] Speaker 00: And in response, the red brief says nothing. [00:02:23] Speaker 00: So we've laid out for your honors that applicants suffered a 112-2 rejection on indefiniteness on the key term, substantially flexible substrate. [00:02:36] Speaker 00: In response to that rejection, the applicant gave us a definition for substantially flexible substrate. [00:02:42] Speaker 00: And in response, the red brief says nothing. [00:02:45] Speaker 00: And again, I won't characterize the argument because it's simply silent. [00:02:49] Speaker 00: But we have significant [00:02:52] Speaker 00: Extrinsic record evidence here that gives us the definition of that term. [00:02:56] Speaker 01: Did you say extrinsic or intrinsic? [00:02:57] Speaker 00: Intrinsic. [00:02:58] Speaker 00: I'm sorry, your honor. [00:02:59] Speaker 00: Intrinsic evidence. [00:03:00] Speaker 00: So when we look at the specification, we have several instances where the term, substantially flexible substrate is equated with thinning. [00:03:10] Speaker 00: And we can argue about the degree of thinning, but it happens over and over again in appendix 885, column 8, lines 34 through 38. [00:03:17] Speaker 00: The thinned print, substantially flexible closed print substrate. [00:03:22] Speaker 00: We have it again at appendix 884, column 8, lines 45 through 50, the thinned print, substantially flexible closed print substrate. [00:03:31] Speaker 00: Those examples were then reinforced in the prosecution history. [00:03:34] Speaker 00: Because when the examiner said substantially flexible was indefinite, it was vague, he couldn't figure out what it meant. [00:03:40] Speaker 00: Applicants said the following. [00:03:43] Speaker 00: And this is at A10275. [00:03:44] Speaker 02: Just to be clear, before we get to the prosecution history, is it your view that through lexicography in the specification, [00:03:52] Speaker 02: the patentee defined substantially flexible to be thinned to 50 microns or less in the spec? [00:04:00] Speaker 00: Yes. [00:04:01] Speaker 02: Yes? [00:04:02] Speaker 02: I thought you said we could pass on the degree to which it has to be thinned. [00:04:07] Speaker 02: I thought that the column 8 sites that you point us to had thinned, and then in parentheses, substantially flexible, but that none of those sites said thinned to 50 microns or less. [00:04:18] Speaker 00: So there were others, Your Honor. [00:04:21] Speaker 00: Appendix 8-8-2, columns 2, line 65 through column 3, line 8, actually makes specific reference to thinning of the memory circuit to less than about 50 micrometers in thickness. [00:04:36] Speaker 03: How can those references be lexicography? [00:04:40] Speaker 03: Lexicography is setting forth a definition, correct? [00:04:47] Speaker 03: A definition of a term that's outside of its ordinary meaning. [00:04:51] Speaker 03: And here, it seems to me that there's a reference to the meaning as you find it throughout the specification. [00:05:01] Speaker 03: It doesn't set out a clear, definite, new definition that's contrary or outside of the plain meaning of that term. [00:05:12] Speaker 03: So if it just references at large the specification, and of course, as you know, [00:05:19] Speaker 03: thousands of pages of the specification, how can that be lexicography? [00:05:24] Speaker 00: I'll answer it in this way, Your Honor. [00:05:26] Speaker 00: We first have agreement by all the experts, both parties, that there is no plain accepted meaning for substantially flexible substrate in this art. [00:05:35] Speaker 00: So what we're talking about here is VLSI. [00:05:38] Speaker 00: We're talking about taking a wafer of mono crystalline silicon. [00:05:46] Speaker 00: And the question is, is that [00:05:48] Speaker 00: substantially flexible. [00:05:49] Speaker 00: What does that term mean? [00:05:50] Speaker 00: So imagine a slice of quartz, if you will. [00:05:53] Speaker 00: And the flexibility in the normal sense and the everyday sense doesn't really have a lot of application in that field. [00:05:59] Speaker 00: And that was agreed on both sides. [00:06:01] Speaker 00: And so we then resorted to the intrinsic record to the specification of the prosecution history to come up with the proper definition. [00:06:07] Speaker 00: And the answer that I was about to summarize in response to the indefiniteness rejection was not just a reference. [00:06:15] Speaker 00: It was not an association. [00:06:16] Speaker 00: It was definition. [00:06:18] Speaker 00: So the applicant was asked, what does this mean? [00:06:21] Speaker 03: Is this definition at the expense of all of the possible definitions? [00:06:25] Speaker 00: I think it is in that it was very clear. [00:06:27] Speaker 03: In fact, the applicant uses... So there's a disavowal within this definition. [00:06:31] Speaker 00: I think it is. [00:06:32] Speaker 00: I think that the applicant uses the term clear. [00:06:35] Speaker 03: It's a clear and unmistakable disavowal. [00:06:37] Speaker 03: I don't see that. [00:06:39] Speaker 03: I don't see that passage that you're taking us through to be a clear and disavowal [00:06:47] Speaker 00: of all of the other definitions of a substantially thin… [00:07:02] Speaker 00: were clear and unambiguous, and they were doing it in a definitional sense. [00:07:06] Speaker 02: You're down in the prosecution history, not the spec anymore. [00:07:08] Speaker 02: What page in the prosecution history would you like us to look at? [00:07:11] Speaker 00: Yes, Your Honor. [00:07:11] Speaker 00: It's Appendix 10275. [00:07:14] Speaker 00: This is the response to the Office Act. [00:07:15] Speaker 02: You're going to have to start by telling me every time you cite this spec what volume, because you guys submitted, what, 13 or 14 volumes. [00:07:23] Speaker 00: The last volume, right? [00:07:24] Speaker 00: At 13. [00:07:25] Speaker 00: Volume 13 out of 13. [00:07:26] Speaker 02: What page? [00:07:27] Speaker 00: 10275. [00:07:34] Speaker 01: So I mean, I agree with you that this passage in 10.275 is your best evidence for something that is trying to define what substantially flexible means. [00:07:49] Speaker 01: But I guess what I'm concerned about, nevertheless, is even if I were to agree that for a substantially flexible substrate requires the substrate to be thinned to 50 microns or less, I'm not [00:08:04] Speaker 01: so sure that that necessarily displaces the notion of substantially flexible, also meaning its typical understanding of bendable without breaking. [00:08:16] Speaker 01: That is to say, the claim still requires, when it says substantially flexible, something that's bendable without breaking. [00:08:25] Speaker 01: And you get there with a substrate that's 50 microns or less. [00:08:30] Speaker 00: So we would certainly be [00:08:32] Speaker 00: happy with a construction that says thin to 50 microns or less such that it is bendable without breaking. [00:08:40] Speaker 00: That would be acceptable. [00:08:42] Speaker 00: What we can't do is simply ignore the definition that the applicant gave us, gave to the patent office in order to secure allowance, made representations to the patent. [00:08:50] Speaker 01: There are a couple other places in the prosecution history where the applicant was communicating to the examiner that the prior art did not teach [00:09:00] Speaker 01: the substantially flexible substrate because those prior art teachings were rigid substrates unlike the claimed flexible substrate. [00:09:10] Speaker 01: So there, you know, it's quite clear to me that the applicant was communicating to the agency that substantially flexible is also understood in its ordinary sense, bendable without breaking [00:09:21] Speaker 00: Well, so with all due respect, Your Honor, I think that what that does is it simply leaves open the question of how we decide whether something is rigid versus flexible in this art. [00:09:30] Speaker 00: So again, recall we're talking about a wafer of quartz, of silicon, of monocrystal and silicon. [00:09:36] Speaker 00: The notion that it is bendable without breaking is not something that an everyday definition really applies to. [00:09:42] Speaker 00: I note that the Pellies picked one definition out of the set. [00:09:47] Speaker 00: I mean, the thing that undid Texas Digital was [00:09:50] Speaker 00: the practice of choosing the definition that best suited a particular party's interests. [00:09:56] Speaker 00: And the other definitions out of Dictionary A, 15365, that's in volume 13, could have been pliable, it could have been manageable, it could have been adaptable, it could have been variable. [00:10:06] Speaker 00: And yet they picked, you know, essentially bendable, which I don't think has, there's certainly nothing in this record to suggest. [00:10:15] Speaker 00: … that a wafer and protect – and what we're really talking about here is a chip. [00:10:18] Speaker 00: We're talking about a very small piece of a wafer. [00:10:21] Speaker 00: It's bendable in any sense. [00:10:23] Speaker 00: And so the suggestion that that definition would apply versus the one they gave us in the specification and in the prosecution history where they called it… … they said with respect to the language, substantially flexible, the meaning of this phrase as used in the claims is clearly explained in the specification and they give us a sign. [00:10:42] Speaker 00: And that side is the one that I've read to Judge Moore. [00:10:44] Speaker 00: If you want to go to talk about the rest of the debate. [00:10:47] Speaker 03: Is that a clear expression of an intent to redefine the term? [00:10:53] Speaker 00: I guess the difficulty I'm having, Your Honor, is that it's not redefining the term. [00:10:56] Speaker 00: It's defining it. [00:10:56] Speaker 00: There is no definition in this art for substantially flexible substrate. [00:11:00] Speaker 00: We've all agreed about that. [00:11:01] Speaker 00: At least there's been no evidence. [00:11:02] Speaker 02: But I don't understand why Judge Trina and Judge Chen's points aren't right, given that [00:11:11] Speaker 02: What you say in this clearly explained part is, as described in this passage, a semiconductor substrate is caused to be substantially flexible by thinning it to 50 microns or less. [00:11:24] Speaker 02: So they're still even here focusing, as Judge Shen had mentioned earlier, on causing flexibility. [00:11:32] Speaker 02: And what does flexibility mean? [00:11:34] Speaker 02: I don't know if this is definitional. [00:11:40] Speaker 02: so much as explaining that here is how we can make something substantially flexible if you're starting with a standard silicon wafer, which is what they're starting with in this particular case. [00:11:53] Speaker 00: Unfortunately, Your Honor, I'm burdened with what they said. [00:11:56] Speaker 00: So they chose this as their definition. [00:11:58] Speaker 02: It may be imprecise. [00:12:00] Speaker 02: But you can't just say the conclusion. [00:12:03] Speaker 02: They chose it as their definition. [00:12:05] Speaker 02: I think that what I'm struggling with is whether this [00:12:09] Speaker 02: expression is definitional or not. [00:12:11] Speaker 00: They say so. [00:12:12] Speaker 00: They say the meaning of this phrase, as used in the claims, is clearly explained in the specification, including, for example, at page 18-23. [00:12:20] Speaker 02: Then it goes on to say, 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 substrate to relieve stress. [00:12:32] Speaker 02: Just so I understand, is it your view that the polishing and smoothing contributes to the flexibility? [00:12:40] Speaker 00: Yes. [00:12:42] Speaker 02: So you have to have both thinning to 50 microns or less and polishing or smoothing under your definition. [00:12:49] Speaker 00: I think that that's debatable. [00:12:51] Speaker 00: I think you could probably stop at the less than 50 microns limitation. [00:12:55] Speaker 00: I think we were trying to remain very true to what they told the Patent Office and the reference there to page 18, columns, lines 1 through 3 is to [00:13:07] Speaker 00: the patent, volume two, appendix 886, at column nine, three through seven. [00:13:11] Speaker 00: And I'll read it. [00:13:12] Speaker 00: Grind the backside or exposed surface of the second circuit substrate to a thickness of less than 50 micrometers and then polish or smooth the surface. [00:13:22] Speaker 00: The thinned substrate is now a substantially flexible substrate. [00:13:27] Speaker 00: So that's the reference that they pointed to that they said is the definition of this term. [00:13:32] Speaker 03: Doesn't that just tell you how to get to substantially flexible? [00:13:37] Speaker 00: It does. [00:13:38] Speaker 00: The process to use? [00:13:39] Speaker 00: It does, but it gives me several important clues as to the definition of the term, that it's less than 50 microns and that the thinned substrate is now a substantially flexible substrate. [00:13:49] Speaker 03: Is that saying that there's no other way to do this? [00:13:52] Speaker 00: We are not asking for a process limitation here. [00:13:55] Speaker 03: We don't request that the court's construction... The problem is that this paragraph that you're pointing this to [00:14:05] Speaker 03: is not definitional because it's describing a process. [00:14:11] Speaker 00: Well, Your Honor, again, that is the definition they chose. [00:14:15] Speaker 00: They described it in somewhat processed terms, but again, we're not asking... Is it fair to say, are there any other ways of doing this? [00:14:22] Speaker 00: I think there are other ways, and I think they would be covered if the end result was less than 50 microns. [00:14:28] Speaker 02: Can I ask you something? [00:14:30] Speaker 02: I've been through all of the claims at issue and all of these IPRs, and every one of them [00:14:35] Speaker 02: can if I were to import into these claims a low stress dielectric requirement, maybe not 5 times 10 to the 8th because that's a little absurd that you're trying to limit it to a particular number, but I recognize that some claims have that limitation expressly, others have low stress, others have substantially flexible circuit or substantially flexible die, but every single claim as far as I can tell if you are correct that a low [00:15:01] Speaker 02: uh, stress dielectric is required. [00:15:04] Speaker 02: Every single claim here has that limitation in it at issue in front of us, right? [00:15:10] Speaker 00: That is correct. [00:15:11] Speaker 00: Under our construction. [00:15:13] Speaker 02: Are there any claims in front of the district court? [00:15:16] Speaker 02: Because I understand there's a parallel district court litigation to your knowledge. [00:15:20] Speaker 02: Do the claims in front of the district court have the same limitations or [00:15:26] Speaker 02: Is it the case that this is only tangentially relevant? [00:15:30] Speaker 00: No, I know that it is directly relevant. [00:15:32] Speaker 00: I know that many of the claims overlap. [00:15:33] Speaker 00: I don't know the answer as to whether all of them overlap, but certainly there is. [00:15:38] Speaker 01: Before you go, because I know we're running out of time here, the other passage in the prosecution history that I think is helpful for you is JA-16038 in the same volume. [00:15:51] Speaker 01: Yes. [00:15:53] Speaker 01: passage that talks about how the two features are required to achieve substantial flexibility. [00:15:59] Speaker 00: That's right, Your Honor. [00:16:00] Speaker 01: In the context... For a circuit layer. [00:16:01] Speaker 01: For a circuit layer. [00:16:02] Speaker 01: Not the substrate, but for the circuit layer. [00:16:04] Speaker 01: Substantially flexible circuit layer. [00:16:06] Speaker 00: I apologize for the complexity, but those are two distinct terms, similarly phrased, but two distinct terms. [00:16:11] Speaker 01: And here, again, the applicant's communicating something to the agency and, by extension, the public. [00:16:19] Speaker 01: One is that the semiconductor material must be sufficiently thin [00:16:23] Speaker 00: That's right. [00:16:24] Speaker 01: 50 microns or less. [00:16:26] Speaker 01: Burton and Cato are believed to satisfy this requirement. [00:16:29] Speaker 01: The other is that the dielectric layer used in the processing semiconductor material must be sufficiently low stress. [00:16:36] Speaker 01: Otherwise, substantial flexibility is defeated. [00:16:39] Speaker 00: Correct. [00:16:39] Speaker 01: So potentially, this could be read as understanding substantially flexible die, substantially flexible circuit layers having two requirements. [00:16:49] Speaker 01: Correct. [00:16:49] Speaker 01: But again, it may still not yet [00:16:53] Speaker 01: completely displace what I think is also required with the end result property of something that's bendable but not without breaking. [00:17:02] Speaker 00: If the requirements were conjunctive, we have no problem with that. [00:17:06] Speaker 01: But I don't see how we wouldn't affirm here because the claim construction ultimately rested on something that was bendable without breaking and which therefore [00:17:19] Speaker 01: did not accept your construction, which was narrowly just based on 50 microns or less. [00:17:23] Speaker 00: Well, so my answer to that is because it's incorrect. [00:17:26] Speaker 00: So unless we have the 50 micron or less limitation, the construction is incorrect and it informs the entirety of the rest of the case. [00:17:32] Speaker 00: So when we get to the obviousness analysis and we're talking about motivation and combined, the question is only relevant in view of the correct claim construction. [00:17:41] Speaker 00: We also have significant indefiniteness issues in this case that the board [00:17:45] Speaker 00: in somewhat surprising fashion was very clear about the fact that they weren't going to resolve the true claim scope. [00:17:51] Speaker 00: They sort of walked away quietly after doing what they felt was necessary in order to get us what we needed. [00:17:58] Speaker 01: Let me make sure I understand. [00:18:00] Speaker 01: If I ultimately find that there's substantial evidence in the record to support the board's finding that there wasn't a motivation to combine Leedy with Burton or you, because either there wasn't a motivation or because there was no reasonable expectation of success, [00:18:15] Speaker 01: And I agree that substantially flexible should be understood to be something that's bendable without breaking, but also be a layer that's 50 microns or less. [00:18:26] Speaker 01: Why wouldn't that result in a complete affirmance here of the board's decision? [00:18:31] Speaker 00: Well, because again, the board's decision was done through the lens of their construction, which was different. [00:18:36] Speaker 00: And it's not really a question of whether it's narrower or broader. [00:18:39] Speaker 00: It was different. [00:18:40] Speaker 00: And the motivation to combine [00:18:43] Speaker 00: evidence was muddled in a different way, having to do with whether dialectics were put down in a front end of line process versus back end of line process. [00:18:53] Speaker 02: Yes, but I don't understand. [00:18:54] Speaker 02: The board found these claims under a broader construction than what Judge Chen, I think, is proposing and what you're saying you're agreeing to. [00:19:10] Speaker 02: Why would their decision necessarily be different if the construction was narrower? [00:19:15] Speaker 00: Because the prior art is targeted toward that narrower construction. [00:19:19] Speaker 00: The prior art is targeted toward exactly what is shown in the patent. [00:19:23] Speaker 00: So we have a strange situation here in that the prior art forms the gravamen of the disclosure of the patents in suit. [00:19:31] Speaker 00: So we're not talking about a situation where we're taking prior art and we're arguing about whether it's similar or dissimilar. [00:19:36] Speaker 02: It's the same. [00:19:38] Speaker 02: Yes, but you didn't make that argument below, which is your problem. [00:19:41] Speaker 02: Because you know what? [00:19:42] Speaker 02: I was all in on this case when the fact that Berlin is 30 microns or less. [00:19:47] Speaker 02: How can they say it's not substantially flexible? [00:19:49] Speaker 02: It has to be. [00:19:49] Speaker 02: It's 30 microns or less. [00:19:51] Speaker 02: But then I got to that portion of the board opinion where they say [00:19:54] Speaker 02: You expressly did not make this argument below, and they're not going to give you that. [00:19:58] Speaker 02: And so I didn't know what the heck to do with that. [00:20:00] Speaker 02: And that's what I feel like you're trying to back door in right now, an argument you didn't make below. [00:20:04] Speaker 00: I'd like to go through the front door on that one, because I believe we did make it. [00:20:07] Speaker 02: I'm sure you would. [00:20:07] Speaker 02: You should have gone through the front door on that before the board. [00:20:10] Speaker 02: But they expressly said you didn't make that argument. [00:20:12] Speaker 00: Well, they have held that. [00:20:14] Speaker 00: But the reality is we did make that argument in the following sense. [00:20:17] Speaker 00: And this is as far as we needed to take it, which is that the prior argument. [00:20:20] Speaker 02: They said you made it an oral argument for the first time in the oral hearing. [00:20:24] Speaker 00: And they did deal with it in that sense. [00:20:27] Speaker 00: But with all due respect to the board, we did raise that argument previously, again, in a limited sense. [00:20:33] Speaker 00: Can you show us where? [00:20:36] Speaker 00: Yes. [00:20:36] Speaker 00: It must be in the reply. [00:20:37] Speaker 00: It certainly wasn't in the petition. [00:20:39] Speaker 00: It was in the reply. [00:20:41] Speaker 00: OK. [00:20:41] Speaker 01: Because we didn't have the You didn't have the patent owner's counterargument until the response. [00:20:47] Speaker 00: Exactly. [00:20:47] Speaker 00: And recall the way it unfolded is that the board went with us on our claim construction in the initials. [00:20:52] Speaker 00: Yes. [00:20:52] Speaker 00: So where in the reply would that be? [00:21:11] Speaker 00: I wonder if I could get it during the interim and bring it back. [00:21:15] Speaker 02: Okay, that's fine. [00:21:16] Speaker 02: Let's hear from opposing counsel. [00:21:19] Speaker 02: Sir, how do I say your name? [00:21:21] Speaker 04: Meunier. [00:21:22] Speaker 02: Mr. Meunier. [00:21:23] Speaker 02: Please proceed. [00:21:24] Speaker 04: Thank you, Your Honor. [00:21:27] Speaker 04: So may it please the Court, there was a lot of talk about claim construction. [00:21:31] Speaker 04: Let me just start out with, I think, what you've all been hinting at. [00:21:34] Speaker 04: Whether you change the claim construction or not doesn't affect that all of the [00:21:40] Speaker 04: claims being found valid by the board should be affirmed. [00:21:44] Speaker 04: Now all but eight claims, we didn't talk really much about the dielectric, the low tensile dielectric limitation. [00:21:52] Speaker 04: All of the challenge claims except for eight have that express limitation of a low stress dielectric. [00:21:59] Speaker 04: They admitted that their primary art doesn't teach that limitation and they needed to combine the Burton 695 reference [00:22:08] Speaker 04: with one of the others. [00:22:10] Speaker 02: I'm sorry, Leedy, yes. [00:22:12] Speaker 02: Burton with Leedy. [00:22:12] Speaker 02: And the board said that there was no reasonable expectation of success in taking that substrate and using the low stress dielectric with it. [00:22:22] Speaker 04: It said that as well as there was no motivation to do it in the first place, that they had failed to meet their burden of proving either one of those facts. [00:22:29] Speaker 02: So it's your argument then, as I understand it, that if there wasn't [00:22:35] Speaker 02: obviousness under a broader construction, how the heck could there be obviousness under a narrower construction? [00:22:42] Speaker 02: If the reference didn't render obvious the broader construction, even if we read in a low stress dielectric to every single claim limitation, the board's fact findings remain that that low stress dielectric isn't, there's no motivation to combine it, and there's no reasonable expectation of success. [00:22:59] Speaker 02: Is that your argument? [00:23:00] Speaker 04: That's one of them, Your Honor. [00:23:02] Speaker 04: That's it exactly. [00:23:04] Speaker 04: So again, if we focus on the ones that actually have the dielectric, there were findings of fact. [00:23:11] Speaker 04: They don't even argue that they're not supported by substantial evidence. [00:23:13] Speaker 04: So they've lost on that issue, that they've lost on that you would combine leading to get the low stress dielectric. [00:23:20] Speaker 04: So all of the claims, except for the eight that don't expressly say that, they've lost on it. [00:23:25] Speaker 02: But if we were to read those eight as requiring that, because those eight all do have the substantially flexible circuit limitation, and if we were to read in [00:23:34] Speaker 02: to that substantially flexible circuit limitation of requirement of a low-stress dielectric, then they've lost on that one too. [00:23:41] Speaker 04: We obviously strongly disagree with that claim construction. [00:23:45] Speaker 04: You're right. [00:23:46] Speaker 02: Then the same argument would extend to those claims. [00:23:49] Speaker 04: Correct. [00:23:50] Speaker 04: But the argument that was also brought up, that it sounded like all of a sudden now, they agreed that the construction should require some flexibility as opposed to [00:24:01] Speaker 04: It's thinned to a certain amount, and it's polished, and it's... In addition to. [00:24:04] Speaker 04: In addition to that, that it's now got flexible. [00:24:07] Speaker 04: That's not only a new argument, but there was also already a finding of fact that they didn't teach, that they didn't prove that the prior art that they relied on, teached a flexible substrate or flexible circuit. [00:24:17] Speaker 04: All they, as was hinted at, all they tried to do was, and all they asked their expert to do was, was this substrate thinned and was it obvious to polish it? [00:24:27] Speaker 04: He was expressly requested not to consider [00:24:30] Speaker 04: whether it was actually flexible. [00:24:32] Speaker 04: And he testified, and the board relied on this, that if you wanted to figure out whether a substrate was actually flexible, whether a circuit was actually flexible, you can't just look at the dimensions. [00:24:42] Speaker 04: You can't just look at what their definition was. [00:24:45] Speaker 04: You have to look at a bunch of other factors, which they did not put any evidence in. [00:24:50] Speaker 04: And I think it's important that none of the references that they point to actually talk about using a substantially flexible circuit [00:24:58] Speaker 04: a substantially flexible substrate. [00:25:00] Speaker 04: None suggests it's a good thing to do. [00:25:02] Speaker 02: No, but the references like Burton, for example, discloses the exact same standard silicon semiconductor wafer, and it thins it to 30 microns or less. [00:25:14] Speaker 02: So it would inherently be substantially flexible if we're talking about just the substrate layer, because your patent says if you start with a standard silicon wafer, the exact same language that appears in Burton, standard silicon wafer, both [00:25:28] Speaker 02: Your patent and Burton's say the exact same thing. [00:25:30] Speaker 02: Let's start with a standard silicon wafer. [00:25:33] Speaker 02: In your patent, you say the substrate becomes substantially flexible if thinned to 50 microns or less. [00:25:38] Speaker 02: In Burton, they thin it to 30 microns or less. [00:25:40] Speaker 02: Hard for me to imagine if it's even thinner, it wouldn't be flexible. [00:25:44] Speaker 04: Except that the board found as fact that mere thinning is not enough to make something flexible. [00:25:51] Speaker 04: Their expert testified that mere thinning is not enough to make something flexible. [00:25:56] Speaker 04: No, there's other things you need to look at. [00:25:58] Speaker 04: You need to look at the material. [00:26:00] Speaker 02: You need to look at... No, but the material is identical here. [00:26:03] Speaker 02: The material is identical. [00:26:05] Speaker 02: This patent discloses starting with a standard silicon wafer. [00:26:09] Speaker 02: That's the language in the patent. [00:26:10] Speaker 02: Burton says let's use a standard silicon wafer. [00:26:15] Speaker 02: The material is identical. [00:26:16] Speaker 02: The expert identified material science type factors and the composition of the material that could cause it a different degree of flexibility based on how much things are thinned. [00:26:24] Speaker 02: But when you're starting with the exact same material, you can't have that difference. [00:26:29] Speaker 04: But there's also the matter of, is it attached to a substrate that's rigid enough that's going to prevent it from flexing? [00:26:36] Speaker 04: So I would disagree with- Attached to. [00:26:38] Speaker 02: You're talking about the circuit. [00:26:39] Speaker 02: I'm talking about the substantially flexible language that's applied to the substrate. [00:26:43] Speaker 04: It needs to be allowed to flex. [00:26:44] Speaker 04: But I think at Essence, we're agreeing, Your Honor. [00:26:48] Speaker 04: that they failed to prove and they failed to argue that there was actually any actual flexibility being taught by Burton, being taught by you, and that that's what the board found. [00:27:00] Speaker 04: At least that's what I think you're saying. [00:27:02] Speaker 01: Burton was part of the prosecution, right? [00:27:05] Speaker 01: Correct. [00:27:06] Speaker 01: And then the patent owner distinguished its claims over Burton by arguing that Burton was a rigid substrate [00:27:16] Speaker 01: unlike the claim substantially flexible substrate, right? [00:27:19] Speaker 04: That's correct, Your Honor. [00:27:20] Speaker 04: The exact point where they're saying that there was a definition, which obviously we disagree with, the reference that was being distinguished over successfully was Burton. [00:27:32] Speaker 01: Can we go to JA16038? [00:27:34] Speaker 01: Sure. [00:27:35] Speaker 01: Is that the... That's the part where you say that Burton and Cato failed to future suggest [00:27:45] Speaker 01: the first or second circuit layer. [00:27:47] Speaker 01: And then it goes on in the prosecution history to explain that two features are required to achieve substantial flexibility. [00:27:57] Speaker 01: Yes, Your Honor. [00:27:58] Speaker 01: Otherwise, quote unquote, substantial flexibility is defeated. [00:28:03] Speaker 01: Let's assume for the moment I think that's definitional. [00:28:05] Speaker 01: Can you explain to me why I would be wrong? [00:28:09] Speaker 04: I just want to make sure. [00:28:10] Speaker 04: Is that 16039, Your Honor? [00:28:12] Speaker 01: 16038. [00:28:14] Speaker 01: It's in the last volume. [00:28:23] Speaker 04: As I'm trying to get there, just to make sure I have the right language in front of me, I believe it's what's been discussed already. [00:28:30] Speaker 04: What's being discussed there is not a definition, and it's certainly not a definition that takes out the context of it has to be flexible. [00:28:38] Speaker 04: It's not saying, don't worry, even if it's rigid, [00:28:41] Speaker 04: This is good enough. [00:28:42] Speaker 04: What it's saying is, here is a way of achieving the type of substantial flexibility we're talking about and we're claiming here. [00:28:51] Speaker 01: Well, I'm not saying it necessarily displaces the need for the substrate or the chip to be flexible as opposed to rigid. [00:29:00] Speaker 01: But on top of that, in addition to that normal, flexible property, it's saying two other things here you need. [00:29:09] Speaker 01: to be understood to be a substantially flexible circuit layer. [00:29:14] Speaker 01: One, 50 microns or less. [00:29:17] Speaker 01: Two, dielectric layer has to be sufficiently low stress. [00:29:21] Speaker 01: What's wrong with that line of thinking, when it says what it says, where it says it, at JA16038? [00:29:28] Speaker 04: Well, I've already stated that I think this is an example of how to do it. [00:29:33] Speaker 04: And not a definition, but even if we look at the language you're talking about, it doesn't say it has to be 50 microns or less, for example. [00:29:40] Speaker 04: I mean, I use the word. [00:29:41] Speaker 04: It says it just must be sufficiently thin. [00:29:43] Speaker 04: For example, 50 microns or less. [00:29:47] Speaker 04: So again, I would say that this certainly isn't a definition that's saying to be substantially flexible, as we're claiming right here, you need to be 50 microns or less. [00:29:57] Speaker 04: If we assume your premise that this is a definition, [00:30:02] Speaker 04: At most, it would be saying it just needs to be thin enough so that it can be flexible. [00:30:06] Speaker 04: It needs to be sufficiently thin. [00:30:08] Speaker 04: For example, 50 microns or less. [00:30:10] Speaker 01: How about the dielectric layer? [00:30:12] Speaker 04: I believe that's the same thing. [00:30:13] Speaker 04: There's that you need a sufficient, you needed a dielectric here. [00:30:21] Speaker 04: I think it was already said, you know, five times 10 to the eighth. [00:30:24] Speaker 04: That's very specific. [00:30:25] Speaker 04: The specification is not always that specific. [00:30:28] Speaker 04: It's recommending [00:30:30] Speaker 01: The dielectric material used in processing semiconductor material must be sufficiently low stress. [00:30:39] Speaker 01: Otherwise, substantial flexibility is defeated. [00:30:44] Speaker 01: I don't see a for example there. [00:30:48] Speaker 01: I don't see an EG there. [00:30:49] Speaker 04: Well, I think maybe we were misunderstanding. [00:30:51] Speaker 04: I was saying, if you are saying that the substantial flexibility is part of the definition, again, [00:30:57] Speaker 04: the specifics 5 times 10 to the 8th would be an example of that. [00:31:02] Speaker 04: So what I'm saying... Pay attention. [00:31:05] Speaker 02: Judge Chen, I think, is very clearly telling you, doesn't this prosecution history require the dielectric material to be low stress? [00:31:12] Speaker 02: Haven't you disclaimed anything other than low stress dielectric because you say it must be sufficiently low stress, otherwise substantial flexibility is defeated? [00:31:24] Speaker 02: isn't that a disclaimer of anything other than low-stress dielectric material? [00:31:30] Speaker 04: And my response was, I don't think this is a clear enough definition in the context of everything else that's been said, but that if it was... Hey, what else has been said about low stress? [00:31:40] Speaker 02: That it is... Because your patent says it should be low stress, that it distinguishes negatively high stress materials. [00:31:48] Speaker 02: Correct. [00:31:48] Speaker 02: And that it tells you low stress [00:31:50] Speaker 02: ideas can you can understand what we mean by low stress by looking at this pattern which we incorporate by reference. [00:31:56] Speaker 02: So what helps I don't understand where there's anything at all in this entire record that supports the idea that the dielectric can be anything other than low stress material. [00:32:07] Speaker 04: My point was if you if you're just looking at substantially flexible [00:32:11] Speaker 04: There are numerous claims throughout that are challenged that claim something that's both substantially flexible, a substantially flexible circuit, and then further requires it have the low stress dialectic. [00:32:25] Speaker 04: This is the claim differentiation argument. [00:32:27] Speaker 04: Exactly. [00:32:27] Speaker 04: So I'm saying in the context of those, for example, I think that makes it clear that those are not two requirements. [00:32:35] Speaker 01: Are you saying that prosecution history statements can never [00:32:41] Speaker 01: render terms and claims redundant? [00:32:44] Speaker 04: I'm not saying that, Your Honor. [00:32:46] Speaker 04: I'm saying that to be a special definition and a special disavowal, there needs to be a very clear intent and there needs to be a clear definition. [00:32:53] Speaker 04: And the point was if you look at the context of the rest of the intrinsic record, I think that sheds light on this not being [00:33:02] Speaker 04: such a special definition, not a clear intent, especially defined to require these things. [00:33:07] Speaker 02: You keep saying that, but you've pointed to nothing else in the record that contradicts the fact that this is a clear definition. [00:33:14] Speaker 02: You keep saying words, but you don't actually point us to any evidence. [00:33:18] Speaker 02: Well, I was talking about... Let me point you to 15404, which is, for me, the strongest passage on the dielectric. [00:33:27] Speaker 02: Although, you know, [00:33:29] Speaker 02: Defeated is a pretty compelling word, and I don't have anything equally as good. [00:33:33] Speaker 02: But at 15.404, you have note the flexible circuit layer must possess a low stress dielectric in order for it to be flexible. [00:33:45] Speaker 02: And how do you say that's not a clear statement? [00:33:48] Speaker 02: You don't think that's a clear statement? [00:33:49] Speaker 04: My point was I think that's inconsistent with the claims that require both those limitations. [00:33:55] Speaker 02: So your only argument to the contrary is the claim differentiation argument. [00:34:00] Speaker 02: You don't have anything in the prosecution history of the spec to point to that would suggest that you didn't mean to limit yourself to low stress dielectric. [00:34:07] Speaker 04: I think that's correct, Your Honor. [00:34:09] Speaker 01: So we're on the same page. [00:34:11] Speaker 01: JA10314. [00:34:15] Speaker 01: There's a statement that says for a circuit layer to be substantially flexible, comma, [00:34:20] Speaker 01: Applicant has found that the dielectric layer must have low tensile stress. [00:34:26] Speaker 01: That was in your remarks section for another office action response, JA10314. [00:34:36] Speaker 04: And I think, again, if those are definitions, if you're taking the position that those are definitions, our main point was [00:34:48] Speaker 04: Well, I think there's three points if I could make those the main point is that's not reading out the flexibility aspect of substantially flexible Which was what was tried to be which was part of the problem? [00:35:01] Speaker 02: Regardless your argument is there's a fact-finding made by the board on motivation combined and reasonable expectation of success regarding to exactly this limitation, right? [00:35:11] Speaker 04: That's correct your honor so if I could just the the other two points I wanted to make [00:35:16] Speaker 04: Each of the passages that you're referring to as the definition are talking about thinning in general and low stress dielectric in general without putting a specific number or requiring a specific number, such as 50 microns or less, or the 10 times 8. [00:35:35] Speaker 04: So again, our main point is 5 times 10 to the 8. [00:35:41] Speaker 02: I'm sorry, but I have to correct your math. [00:35:43] Speaker 02: I'm sorry. [00:35:43] Speaker 02: 10 times 8, that would just be 8. [00:35:45] Speaker 04: uh... thank you uh... but that those numbers shouldn't be part of any construction of substantially flexible our our our main point is the findings of fact under any of these constructions compel an affirmance of the validity of these claims is there anything further? [00:36:03] Speaker 02: I'm going to restore some rebuttal time to Mr. Cordell so to keep it fair if there's anything else you felt like you needed to cover I'll give you a little extra time to do it you don't have to [00:36:13] Speaker 02: Yeah, it's like an ugly sweater contest. [00:36:16] Speaker 02: You don't have to enter. [00:36:17] Speaker 04: Sometimes I enter without realizing. [00:36:19] Speaker 04: I just want to make sure that we're clear. [00:36:26] Speaker 04: There was no agreement of the experts that there's no ordinary meaning of substantially flexible. [00:36:31] Speaker 04: Their expert explained exactly what's needed to be substantially flexible. [00:36:34] Speaker 04: So that was said a number of times. [00:36:36] Speaker 04: We addressed the prosecution history indefiniteness in the court, in the briefing, as did the board. [00:36:43] Speaker 04: And I think I'll leave it at that. [00:36:45] Speaker 02: Okay, very good. [00:36:46] Speaker 02: Mr. Cordell, we'll give you three minutes of rebuttal time. [00:36:49] Speaker 02: Thank you. [00:36:54] Speaker 00: So first, to finish out the discussion we were having before, our discussion of obviousness under the appellee's claim construction is limited. [00:37:05] Speaker 00: There's no ifs, ands, or buts about that. [00:37:08] Speaker 00: best done actually in our opening brief, where at A1521 we summarized the prior art and talked about those features. [00:37:16] Speaker 00: We then, in our reply brief, before the board... What do you mean limited? [00:37:20] Speaker 03: Non-existent? [00:37:22] Speaker 00: It exists, but it requires some sleuthing, Your Honor. [00:37:26] Speaker 00: I want to be as candid as I can about that. [00:37:28] Speaker 00: So we do summarize the prior art. [00:37:30] Speaker 00: We go through the features that we say are common to both the prior art and the disclosed invention, not even the claimed invention. [00:37:38] Speaker 00: We, at A-1800, in volume 3, we make it very clear that we believe that the claim construction pursued by Apollize here, by Elm, is incorrect, and that under a correct construction that, in fact, the claims are obvious. [00:37:54] Speaker 00: So I want to make that just eminently clear. [00:37:58] Speaker 00: With respect to the claim differentiation argument, we certainly believe that the prosecution history trumps anything that could make a difference. [00:38:07] Speaker 02: bull by the horns here, Mr. Cordell. [00:38:09] Speaker 02: What is wrong with his argument, which I find very persuasive, which is that even if we import these limitations into this definition, the board has expressly reached, for example, fact findings related to the low stress material, motivation to combine a reasonable expectation of success, because all but, I guess, eight of the claims had that expressly. [00:38:31] Speaker 02: So what's left? [00:38:32] Speaker 02: Why isn't that an affirmance? [00:38:33] Speaker 00: Well, because I think the board's findings there are flawed. [00:38:36] Speaker 00: So maybe I should spend a moment addressing that. [00:38:38] Speaker 00: So the evidence the board relied upon to make those findings had to do with this distinction between the front end of line and back end of line processing. [00:38:49] Speaker 00: The way the evidence unfolded is that Elm's expert pointed to all of the difficulties in processing these dielectrics in the front end of line because the temperatures are high, the purity requirements are very high. [00:39:03] Speaker 00: and said that that's why the evidence doesn't show the motivation to combine, doesn't show the likelihood of success. [00:39:11] Speaker 00: We took the opposite position that, in fact, these are back end of line. [00:39:14] Speaker 00: I can show you excerpts of Burton where they actually talk about these dielectrics being grown after the metal layer is imposed. [00:39:21] Speaker 00: So by definition, we were at the back end of line. [00:39:24] Speaker 00: What the board did is rather than resolve those disputes, they said, we just don't have to. [00:39:31] Speaker 00: intimated that they were going to accept our view of the world that these were done at back end of line, but then credited the evidence from Elm that these things were done in the front end of line. [00:39:41] Speaker 00: So there was a conflict in the evidence, and for that reason alone, I think that we need to remand it back to the board and get them to sort that out. [00:39:47] Speaker 02: There's a conflict in the evidence on a fact finding that they made. [00:39:50] Speaker 02: That doesn't usually screen remand. [00:39:52] Speaker 00: It's not a conflict in the evidence in the issues, it's a conflict in their process, Your Honor. [00:39:58] Speaker 00: This is challenging for me. [00:40:00] Speaker 00: The evidence they rely on is the suggestion that these are done in front end of line. [00:40:06] Speaker 00: That's the evidence they rely on. [00:40:08] Speaker 00: But then they also say that they're going to assume that it's back end of line. [00:40:12] Speaker 00: And they don't explain the gap. [00:40:13] Speaker 00: So under Chenery, they've got to tell us why they made the decision they made. [00:40:17] Speaker 00: And if they decide that our evidence is no good or they're going to side with Elm on the front end of line versus back end of line debate, that would be one thing. [00:40:25] Speaker 00: But they didn't do that. [00:40:27] Speaker 00: So there's a gap in their analysis, a significant gap that undermines that fact-finding. [00:40:32] Speaker 02: OK. [00:40:33] Speaker 02: I thank both counsel. [00:40:34] Speaker 02: The case is taken under submission.