[00:00:00] Speaker 01:
innovative memory systems versus Micron.

[00:00:03] Speaker 01:
And I might ask you, Mr. Morris, and we won't count this against your time, so you come up, but people listening might be wondering.

[00:00:09] Speaker 01:
This is an unusual situation.

[00:00:11] Speaker 01:
We've got four separate cases, four separate docket numbers today, and they've got the same names.

[00:00:17] Speaker 01:
So maybe you could begin, and as I said, we won't count against your time by talking for a couple minutes how we got here.

[00:00:25] Speaker 01:
I mean, why we're here, how many... Each case involves different patent claims, right?

[00:00:30] Speaker 01:
Yes.

[00:00:30] Speaker 01:
And they were based on separate IPRs that were filed with the PTAP?

[00:00:35] Speaker 04:
That's correct.

[00:00:35] Speaker 04:
Our client sued Micron for patent infringement in the District of Delaware.

[00:00:39] Speaker 04:
We sued them on four different patents.

[00:00:41] Speaker 04:
Micron filed inter-parties reviews for all four, and in all four they were successful, and all four patents are current.

[00:00:47] Speaker 01:
So they filed separate IPRs?

[00:00:49] Speaker 01:
They filed an IPR for each of the patents?

[00:00:52] Speaker 01:
Correct.

[00:00:52] Speaker 04:
Each one of these cases was one of those four IPRs, and I get the luck to do two in a row, just like Mr. Bobra will next.

[00:00:59] Speaker 01:
OK.

[00:01:00] Speaker 01:
And was the district court litigation stayed while these IPRs were decided?

[00:01:06] Speaker 04:
Yes, Your Honor.

[00:01:07] Speaker 04:
The district court litigation was stayed.

[00:01:09] Speaker 04:
Both parties agreed to that stay.

[00:01:11] Speaker 04:
There were originally eight patents that we sued them on.

[00:01:15] Speaker 04:
Two of them we basically dedicated to the public because we essentially agreed with their construction at some level and the IPRs and we didn't challenge those.

[00:01:28] Speaker 04:
Two of the others they did not institute for one reason or another.

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And so we were left with the four that were instituted and the district judge in Delaware doesn't like to proceed on part of a case or not

[00:01:40] Speaker 04:
and basically said, if you want to proceed, then I'm just going to deal with these two, and you can take the others out of the case.

[00:01:45] Speaker 04:
So we all agreed we would just wait and see what happened.

[00:01:48] Speaker 04:
We went through the patent office's PTAB process.

[00:01:51] Speaker 01:
And when you file separate, as your friends did on the other side, they filed four different petitions, same PTAB judges assigned to all of them, or do they all proceed on their separate merry ways?

[00:02:02] Speaker 04:
In this case, we got the same panel.

[00:02:05] Speaker 04:
And we did the same thing that we're doing today when we went to Washington and when

[00:02:09] Speaker 04:
us and our colleagues on the other side met down in Washington, we spent basically a day at the PTAB, and we were there for two or three hours, I think, where we did all four of the trials sequentially.

[00:02:22] Speaker 04:
I think there we broke it up and had lunch in between.

[00:02:25] Speaker 01:
Well, thank you.

[00:02:27] Speaker 01:
We can start the clock running now.

[00:02:28] Speaker 01:
Thank you.

[00:02:30] Speaker 04:
All right.

[00:02:30] Speaker 04:
May it please the court, I'm Robert Morris again, on behalf of IMS.

[00:02:35] Speaker 04:
The title for this patent, the 849 patent,

[00:02:38] Speaker 04:
is the use of voids between elements and semiconductor structures for isolation.

[00:02:42] Speaker 04:
The craziness of some of this at some level is we're going to talk about Chen again.

[00:02:48] Speaker 04:
This time Chen is the, and it's the same Chen, he is the inventor of the 849 pattern.

[00:02:55] Speaker 04:
The abstract makes it clear that gas fills a void

[00:02:59] Speaker 04:
in between, adjacent charge storage.

[00:03:01] Speaker 01:
But before we get to that, can you line up what your legal issue is here?

[00:03:05] Speaker 01:
Because it's not claim construction, right?

[00:03:07] Speaker 04:
Or is it?

[00:03:09] Speaker 04:
It's the same kind of murkiness at some level, Your Honor.

[00:03:20] Speaker 01:
Well, you can tell me if I'm wrong.

[00:03:22] Speaker 01:
I saw at least the major issue here

[00:03:25] Speaker 01:
being whether or not there was a reasonable expectation for success.

[00:03:31] Speaker 04:
That is a big part of where the case is.

[00:03:36] Speaker 04:
The substantial evidence is a big part of this.

[00:03:38] Speaker 04:
I mean, what did the prior art show?

[00:03:43] Speaker 04:
What did it say?

[00:03:44] Speaker 04:
What did it teach?

[00:03:46] Speaker 04:
In our view, there's not even a scintilla of evidence, nevertheless of substantial evidence, to support the obviousness finding.

[00:03:55] Speaker 01:
Because the elements of the invention weren't included in the prior art, or because there was no motivation to combine or no reasonable expectation of success?

[00:04:08] Speaker 04:
Well, it's interesting.

[00:04:09] Speaker 04:
During the trial, I think it was Judge Arpin admitted that he had no reference that showed the claimed 5 to 1 or 8 to 1 aspect ratios that were involved.

[00:04:21] Speaker 04:
This has to do with memory cells, and over time,

[00:04:25] Speaker 04:
As everything happens, you know, Moore's law, everything shrinks, everything gets smaller.

[00:04:31] Speaker 04:
As it gets smaller, sometimes everything has to get higher.

[00:04:35] Speaker 04:
Our expert testified that at some point in time, you hit a problem.

[00:04:40] Speaker 04:
The conventional deposition technique is to use chemical vapor deposition.

[00:04:45] Speaker 04:
It's a conformal technique.

[00:04:46] Speaker 04:
It lays down nice, even layers.

[00:04:49] Speaker 04:
And you could do that.

[00:04:53] Speaker 04:
That's what the prior art says.

[00:04:54] Speaker 04:
Takeuchi says you can do that.

[00:04:57] Speaker 04:
I'm just trying to make sure I don't get the references mixed up here.

[00:05:00] Speaker 04:
Takeuchi says you can do that.

[00:05:01] Speaker 04:
And Takeuchi discloses that sometimes when you do that, you get void between the cells.

[00:05:08] Speaker 04:
And Takeuchi, the only thing he describes and discloses is that it happens at ratios maxing out at 3 to 1.

[00:05:17] Speaker 04:
And so as technology move forward, and I discussed this at trial, as technology move forward and everything gets more condensed and the heights of the cells in relation to the width between the cells change, then that aspect ratio goes higher and higher and higher.

[00:05:33] Speaker 04:
And our expert, Dr. Paul Ho, testified, and it's unrebutted, that you hit this point in time where conformal processes don't work anymore.

[00:05:43] Speaker 04:
Because now you have to use a non-conformal process in order to get

[00:05:47] Speaker 04:
the dielectric down into the area between the two towers, the two gated layers of elements, you have to use a physical deposition technique like PECVD, Plasma Enhanced Chemical Vapor Deposition, or you have to use sputtering.

[00:06:07] Speaker 04:
Because with those techniques, during the process you can actually direct where you want the stuff deposited rather than a conformal process where

[00:06:16] Speaker 04:
The deposition process is just applied in a uniform manner.

[00:06:20] Speaker 00:
I was probably going to ask the same question, which was that I understand what you're saying here about the technology, and I think it relates to your reasonable expectation of success argument.

[00:06:31] Speaker 00:
Am I correct in understanding that?

[00:06:33] Speaker 00:
That's correct.

[00:06:34] Speaker 00:
That's correct.

[00:06:35] Speaker 00:
And so I was just curious, what is the standard of review that our court should apply to a reasonable argument?

[00:06:39] Speaker 00:
Substantial evidence.

[00:06:40] Speaker 00:
So it's a fact question.

[00:06:42] Speaker 00:
and we're supposed to look at whether there's substantial evidence to support the board's finding on the issue?

[00:06:47] Speaker 04:
Yes, there is no substantial evidence to support the board's finding.

[00:06:52] Speaker 01:
What's the difference between motivation and reasonable expectation of success?

[00:06:59] Speaker 04:
The motivation to combine is whether, I mean at some level they're hinged together, but the motivation to combine is whether or not a person of ordinary

[00:07:08] Speaker 04:
skill in the art would even come up with the idea in the first place.

[00:07:12] Speaker 04:
And then it has to have a reasonable expectation of success that it'll succeed in order to satisfy all of that.

[00:07:18] Speaker 01:
Maybe I'm wrong about this.

[00:07:20] Speaker 01:
My recollection is we don't see that many cases that involve exclusively reasonable expectation of success.

[00:07:25] Speaker 01:
So my vague recollection is that most of those cases arise in the pharmaceutical area.

[00:07:32] Speaker 01:
Because they say 10 different scientists have been doing this experiment for 15 years.

[00:07:38] Speaker 01:
and nobody thought that there was going to be it.

[00:07:41] Speaker 01:
So those are the kinds of issues I recall seeing with regard to reasonable expectation of success.

[00:07:47] Speaker 01:
This seems a little out there.

[00:07:49] Speaker 01:
Am I wrong about that?

[00:07:51] Speaker 04:
That may very well be true.

[00:07:55] Speaker 04:
That's out of my wheelhouse.

[00:07:57] Speaker 01:
So you're saying this invention involves use of nonconformal coverage

[00:08:05] Speaker 01:
And no one would have thought to do that, that conformal coverage was used in the prior art, but not non-conformal coverage.

[00:08:12] Speaker 01:
Is that?

[00:08:12] Speaker 04:
Well, the testimony of Dr. Ho.

[00:08:15] Speaker 01:
And it's not a trick question.

[00:08:16] Speaker 01:
I just am really trying to understand whether that's what you're arguing.

[00:08:19] Speaker 04:
Yeah, so essentially, what's disclosed in the 849 patent, when the 849 patent talks about the invention, the core of the invention, essentially, is he says in order, Chen and Fang, actually,

[00:08:35] Speaker 04:
They talk about the fact that in order to achieve the voids, when you have the higher aspect ratios of 5 to 1, 8 to 1, or even higher, that you have to use a different process to put down the materials that has to be lower than the traditional methods that are used.

[00:09:00] Speaker 04:
And he says that on Appendix 482.

[00:09:06] Speaker 04:
Column seven line starts at line 20 and it's basically that whole paragraph that the dielectric layer can be formed with voids 47 by depositing an oxide with lower pressures and temperatures than normally are used to deposit oxide layers such in a low pressure chemical vapor deposition process.

[00:09:28] Speaker 04:
So even though that's called a low pressure chemical vapor deposition process, what Chen on my side this time is saying

[00:09:36] Speaker 04:
is that you need even lower pressures in order to be able to get the materials, the dielectric, where you want it in order to form that void in between the gate towers.

[00:09:47] Speaker 00:
What are the problems I'm having with your argument is that I think that you admitted that the claims are not limited to a conformal or nonconformal process.

[00:09:58] Speaker 00:
And in fact, they say nothing about preferring nonconformal.

[00:10:04] Speaker 00:
Am I correct about that?

[00:10:05] Speaker 04:
Oh, that's absolutely correct.

[00:10:07] Speaker 00:
And what about that the specification says that many different processes could be used to make the voids?

[00:10:14] Speaker 04:
It can.

[00:10:14] Speaker 04:
I mean, and many different processes are, as long as they're physical vapor deposition.

[00:10:17] Speaker 04:
Those are some of the processes that it lists.

[00:10:21] Speaker 04:
And it says you can use whatever process you want, as long as you have lower than normal, low pressure chemical vapor deposition.

[00:10:29] Speaker 04:
And if you use our expert testified, and it was unrebutted,

[00:10:34] Speaker 04:
In order to get lower than low pressure chemical vapor deposition, you have to use physical vapor deposition processes.

[00:10:43] Speaker 04:
And if you're using physical vapor deposition processes, they are, by definition, nonconformal.

[00:10:49] Speaker 02:
Aren't you making a reasonable expectation of success argument?

[00:10:53] Speaker 04:
Yes.

[00:10:54] Speaker 04:
I said that that was part of it.

[00:10:56] Speaker 02:
That's really the crux of your argument.

[00:11:00] Speaker 04:
Yes.

[00:11:01] Speaker 04:
That in many ways is the crux of the argument.

[00:11:04] Speaker 04:
Because as Judge Arpin had said at trial, none of the prior art shows or teaches or suggests in any way.

[00:11:15] Speaker 04:
And he says, I don't have a single reference that teaches a 5 to 1 ratio that's claimed.

[00:11:21] Speaker 04:
I don't have a single reference that teaches the 8 to 1.

[00:11:25] Speaker 04:
So how do I get there?

[00:11:26] Speaker 04:
And he asked Mr. Bobra.

[00:11:28] Speaker 04:
And Mr. Bobra just said, well, you do.

[00:11:31] Speaker 04:
And that's pretty much what he said.

[00:11:33] Speaker 04:
At some level, they rely on the distance that's between the cells in Li.

[00:11:40] Speaker 04:
But Li doesn't talk about height at all.

[00:11:43] Speaker 04:
And because Li doesn't talk about height at all, there's nothing about aspect ratios in anything that Li teaches.

[00:11:49] Speaker 04:
Li is like two pages of pie in the sky.

[00:11:51] Speaker 04:
I really wish that things were different.

[00:11:54] Speaker 04:
And Li actually states within the patent itself that the answer

[00:12:02] Speaker 04:
What is Lee teaching?

[00:12:03] Speaker 04:
Lee isn't teaching, oh, this would be obvious to do.

[00:12:05] Speaker 04:
He says, thus it is required at A870 that we should develop a new cell structure, such as a vacuum isolation of gate-to-gate spacing or very thin floating gate structure.

[00:12:18] Speaker 04:
Nothing about an aspect ratio, nothing about how any of this stuff is going to work, nothing about how you accomplish it.

[00:12:25] Speaker 04:
And I don't see how that could possibly meet the substantial evidence.

[00:12:30] Speaker 01:
You're referring to the 8-1 aspect ratio.

[00:12:32] Speaker 01:
Isn't that a limitation in claim five?

[00:12:36] Speaker 01:
Yes.

[00:12:36] Speaker 01:
And wasn't there some dispute, maybe I'm wrong, or some argument that you waived

[00:12:43] Speaker 01:
the ability to make that argument because you didn't include it.

[00:12:47] Speaker 01:
You never called out the specific limitation of claim five.

[00:12:50] Speaker 01:
I may have this confused with another case.

[00:12:52] Speaker 04:
I don't understand how I could wave an argument that limitations in the claim don't matter.

[00:12:57] Speaker 04:
I'll take a look at that.

[00:12:58] Speaker 01:
I'll talk specifically about claim five.

[00:13:00] Speaker 04:
Yes, I'll take a look at that while Mr. Barber speaks, and then I'll take the rest of my time.

[00:13:04] Speaker 01:
Well, I guess you could answer by just saying, is that an argument about the claim five and the eight one aspect ratio?

[00:13:10] Speaker 04:
I don't think we waived any such thing.

[00:13:11] Speaker 01:
And throughout the briefs... Was it made before the board, my question was.

[00:13:14] Speaker 01:
Sure.

[00:13:15] Speaker 01:
Was it?

[00:13:16] Speaker 01:
What's that?

[00:13:17] Speaker 01:
Was that argument made before the board, the argument with regard to the limitation of claim five on the eight one aspect ratio?

[00:13:24] Speaker 04:
I believe that it was.

[00:13:25] Speaker 04:
I believe we talked about...

[00:13:27] Speaker 04:
I mean, Judge Arpin specifically asked and specifically talked about, I don't have a reference that shows the claimed eight to one.

[00:13:34] Speaker 04:
We wouldn't have had that discussion if it was at trial, if it wasn't part of what we were stating.

[00:13:40] Speaker 04:
So I don't see how we could have waived that.

[00:14:03] Speaker 03:
Good afternoon, your honors.

[00:14:05] Speaker 03:
May it please the court, Jared Bobrow for Micron.

[00:14:08] Speaker 03:
As your honors noted, the issues on appeal are quite narrow.

[00:14:12] Speaker 03:
There's really only one, whether the board's finding of reasonable expectation of success is based upon substantial evidence.

[00:14:22] Speaker 03:
There was some discussion about the teachings of voids.

[00:14:26] Speaker 03:
Certainly, there's no dispute that the prior teaches voids.

[00:14:29] Speaker 00:
Nor is there a dispute.

[00:14:31] Speaker 00:
that the dispute is that they say, yeah, the prayer has voids, but they didn't want to create those voids.

[00:14:37] Speaker 00:
They saw them as defects.

[00:14:39] Speaker 03:
So I don't think that that is the dispute.

[00:14:41] Speaker 03:
And certainly, Takeuchi shows how to and says to create the voids and has an embodiment in Figure 16 that does just that.

[00:14:50] Speaker 03:
Sato, in addition, is intentionally creating those voids because Sato is saying that

[00:14:57] Speaker 03:
Having a void between these two gates is a great way to reduce parasitic capacitance because, Sato says, that the dielectric constant of air, or of the void, is less than the dielectric constant of the dielectric itself.

[00:15:12] Speaker 03:
So as a result, you get a reduction.

[00:15:14] Speaker 03:
So Sato was going out of his way to create those voids, and that's shown in figure 9b of the patent, of the Sato patent.

[00:15:21] Speaker 03:
So the issue here, and there was just some discussion about aspect ratios, there's actually no dispute that the combination of Sato and Lee and the combination of Takeuchi and Lee teaches the 5 to 1 and 8 to 1 aspect ratios that are claimed.

[00:15:40] Speaker 03:
That's actually conceded in

[00:15:42] Speaker 03:
in IMS as a blue brief at page 38.

[00:15:44] Speaker 03:
There's no dispute that the combination does that.

[00:15:47] Speaker 03:
There's also no dispute about motivation to combine, another subject that came up in the first part of the argument.

[00:15:53] Speaker 01:
I think we've all agreed that the dispute is over whether or not there would have been an expectation, reasonable expectation of success.

[00:16:00] Speaker 01:
So why don't you focus it on why there would have been a reasonable expectation of success.

[00:16:05] Speaker 03:
Thank you, Your Honor.

[00:16:05] Speaker 03:
There certainly was a reasonable expectation of success here, and the board's findings are well supported.

[00:16:11] Speaker 02:
First of all... Point to the record and show us where the board found... Show us the substantial evidence.

[00:16:18] Speaker 03:
Yes.

[00:16:19] Speaker 03:
So, Your Honor, first of all, I would direct your attention to page 30, for example, where the board noted that Takeuchi and Sato both teach the formation of voids between electrodes.

[00:16:34] Speaker 03:
That's appendix pages 30 and appendix page 50.

[00:16:38] Speaker 03:
In both of those places, at oral argument, council conceded that both of those prior art references teach the formation of voids in between these gate structures.

[00:16:49] Speaker 03:
Second, the references themselves, as I alluded to earlier, and the board described these, show voids between these gate structures.

[00:17:00] Speaker 03:
I direct your honor to appendix pages 22 and 23 for the discussion of Takeuchi,

[00:17:06] Speaker 03:
and appendix pages 43 to 44 where the board discussed how Sato showed that there were voids present.

[00:17:15] Speaker 00:
Third, I direct your honor to pages... I'm just going back to page 22.

[00:17:19] Speaker 00:
Is there a particular language there that you want us to focus on?

[00:17:25] Speaker 00:
The key issue in this case is, is there substantial evidence?

[00:17:28] Speaker 00:
So it might be good to walk us through and show us exactly what parts, where that substantial evidence is.

[00:17:36] Speaker 00:
that you're relying on.

[00:17:39] Speaker 03:
Yes, Your Honor, and I think at pages 22 to 23, there was discussion that at the bottom, that is discussed further below it says, the very bottom of the page running over to 23, the challenged apparatus claims do not recite how the voids are formed, but only that they are present.

[00:17:58] Speaker 03:
So it's essentially saying the claims are limited to voids and that

[00:18:04] Speaker 03:
And then turning to page 27, there's a further discussion of voids where the board expressly credits Dr. Baker's testimony that a person of ordinary skill in the art would have found that voids are more easily provided when the aspect ratio is high.

[00:18:23] Speaker 03:
So we have a discussion at page 27 that expressly says and relies upon Takeuchi for the finding that

[00:18:31] Speaker 03:
voids are easier to form when the aspect ratio is high.

[00:18:35] Speaker 03:
Dr. Baker testified to that, and again at page 27 in the top half of the page, the board refers to Dr. Baker's testimony at paragraph 96.

[00:18:47] Speaker 03:
Then again at appendix page 27, the board refers to the Takeuchi, specifically at column 16, lines 21 to 27.

[00:18:56] Speaker 03:
And then further,

[00:18:57] Speaker 03:
that finding that it is easier to form voids when the aspect ratio is higher is also supported by the Fulford reference, which is the citation to exhibit 1018, also on appendix page 27.

[00:19:09] Speaker 03:
In each of those instances, there is evidence that says that, sure, we have in Takeuchi a showing of an aspect ratio of three to one, but if that's increased, it's actually easier to form the voids, and that's consistent with, of course, common sense.

[00:19:25] Speaker 03:
If I have a void that is skinny and tall and I have material coming from up top being deposited, it's going to be harder to essentially fill that structure than it is if it's short and wide.

[00:19:40] Speaker 03:
It's harder to form a void when the aspect ratio is low.

[00:19:44] Speaker 03:
And so Takeuchi says exactly that.

[00:19:47] Speaker 03:
He increased the aspect ratio and it says,

[00:19:49] Speaker 03:
voids are easily formed in the dielectric between the gate electrodes.

[00:19:54] Speaker 01:
So your answer to the question of whether or not there was a reasonable expectation of success seems to be that, yeah, because all these prior art references were already doing this.

[00:20:06] Speaker 01:
Exactly.

[00:20:07] Speaker 03:
They were doing it, and they said it's easier to do this, creating a void, at the aspect ratio when it's higher, which again is consistent with the expert testimony

[00:20:18] Speaker 03:
of Dr. Baker, it's consistent with the prior art that we cited ourselves.

[00:20:23] Speaker 03:
That's the basis for a reasonable expectation of success.

[00:20:27] Speaker 03:
I would add that if you flip the equation over after we presented our case,

[00:20:33] Speaker 03:
The rebuttal case that IMS put on simply failed to diminish that showing in any way.

[00:20:40] Speaker 03:
Number one, because the claims don't require any particular process.

[00:20:44] Speaker 03:
You can call it conformal.

[00:20:45] Speaker 03:
You can call it non-conformal.

[00:20:47] Speaker 03:
You can call it PVD or PECVD.

[00:20:50] Speaker 03:
Nothing in the claims limits them to a process.

[00:20:53] Speaker 03:
And so however you form the voids, whether the Takeuchi reference did it

[00:20:59] Speaker 03:
by waving a magic wand.

[00:21:00] Speaker 03:
I mean, it doesn't matter.

[00:21:01] Speaker 03:
The voids were there, and there was an explanation for how the voids got there.

[00:21:06] Speaker 03:
And then similarly, and number two, Dr. Ho, IMS's expert, didn't say that a conformal process was needed to form a void at these aspect ratios.

[00:21:17] Speaker 03:
That's not what he said.

[00:21:19] Speaker 03:
What he said was that you need that to form voids consistently and reproducibly.

[00:21:27] Speaker 03:
that there is some consistency notion because it was acknowledged that using these other processes and he had to acknowledge it because Takeuchi and Sato use low pressure CVD and I think what's called ordinary pressure CVD and they show voids.

[00:21:43] Speaker 00:
Do I understand correctly that the prior art or just generally it was a known to use both conformal and non-conformal processes?

[00:21:52] Speaker 03:
Yes, and I believe that that was admitted at the transcript.

[00:21:55] Speaker 03:
It's cited at appendix page 31, I believe.

[00:21:59] Speaker 03:
These processes were known.

[00:22:00] Speaker 03:
And again, whether you call them conformal or something else is, I think, a different issue.

[00:22:07] Speaker 03:
But it's clear that the processes that INS was calling

[00:22:12] Speaker 03:
nonconformal were known and there was testimony that plasma enhanced chemical vapor deposition was a known technique.

[00:22:20] Speaker 03:
These were not mysterious and the board made a particular finding that indeed these processes were known.

[00:22:26] Speaker 03:
They of course could be used to do this technique and the patent says that but the patent nowhere says that you absolutely have to use these.

[00:22:35] Speaker 03:
It says that voids can be formed in that way

[00:22:38] Speaker 03:
But saying that something can be done in a particular way doesn't mean that it has to always be done in that way in order for it to work.

[00:22:46] Speaker 03:
The specification doesn't say that plasma enhanced CVD or physical vapor deposition, sometimes called PVD, that those techniques are required or necessary or essential or anything like that.

[00:22:59] Speaker 03:
It says they can be used.

[00:23:01] Speaker 03:
It says by way of illustration, here's what we did.

[00:23:04] Speaker 03:
And that is not a statement that in any way narrows or requires that a particular process be used.

[00:23:12] Speaker 02:
Now, in the requirement... Does it matter whether or not using the non-conformal deposition process achieves a consistent result?

[00:23:22] Speaker 03:
Your Honor, I missed the very first part, but you said I apologize.

[00:23:25] Speaker 02:
Yeah, does it matter whether or not the non-conformal deposition process achieves a consistent result?

[00:23:31] Speaker 03:
No, it doesn't, Your Honor.

[00:23:32] Speaker 03:
As long as the prior demonstrates an expectation of success some of the time, it needn't show that you always succeed using, again, what IMS is calling a conformal process.

[00:23:45] Speaker 03:
There's nothing in the law that says that every time you do something, it has to occur in a particular way to have rendered something obvious or to show reasonable expectation.

[00:23:57] Speaker 03:
The board made its findings.

[00:24:00] Speaker 03:
The board rejected the argument that somehow a non-conformal process was needed for the various reasons that we've been discussing.

[00:24:08] Speaker 03:
But there certainly isn't a requirement of consistency or reproducibility.

[00:24:13] Speaker 00:
I was just going to ask.

[00:24:14] Speaker 00:
I looked at your expert's testimony, Dr. Baker, and I don't see where he expressly addressed reasonable expectation of success.

[00:24:23] Speaker 00:
Am I correct in understanding that?

[00:24:26] Speaker 03:
I think that he did address that in the context of discussing what I think earlier was described as a link between motivation and reasonable expectation.

[00:24:35] Speaker 03:
So when he was talking about the kinds of results that you would achieve and how it's easier to form the voids in high aspect ratio features, he was discussing that when he was talking about combining the references.

[00:24:48] Speaker 00:
So I can't say- What page would you identify for where you think that even though he's not using the words reasonable expectation of success, you think he is in fact addressing that?

[00:24:59] Speaker 03:
Your Honor, I would address your attention to Appendix Page 674, which is paragraph 71 of Dr. Baker's declaration, and also Appendix Page 689,

[00:25:16] Speaker 03:
which is where paragraph 96 begins.

[00:25:20] Speaker 03:
And in those paragraphs, in each of them, he is discussing the straightforward concept that it is easier to form a void in a material when you have a high aspect ratio as compared to a low aspect ratio.

[00:25:35] Speaker 03:
And so that is a discussion of expectation of success, even if that particular phrase wasn't used.

[00:25:41] Speaker 00:
And so you don't think it's required that an expert actually talk about

[00:25:46] Speaker 00:
the legal concepts of reasonable expectation of success in order to be able to show that these claims would have been obvious.

[00:25:55] Speaker 03:
I don't think that the expert needs to use the magic legal words.

[00:25:59] Speaker 03:
I think the expert needs to set forth the opinion with the underlying expertise and corroborating evidence in most cases to show that.

[00:26:08] Speaker 03:
That that's the case, that it is indeed easier to form a void, for example, than when it's at a high aspect ratio than not.

[00:26:16] Speaker 03:
I think that that's sufficient under the law.

[00:26:20] Speaker 03:
One issue came up in the reply brief, which I would like to address very briefly on this issue, because in the reply, and I believe it's at reply page seven,

[00:26:31] Speaker 03:
IMS took the position that Takeuchi only describes creating a void between what it calls, it says between the... Your side is bound and determined to get the last word right on the surreply.

[00:26:46] Speaker 01:
This is your surreply.

[00:26:48] Speaker 03:
Okay.

[00:26:48] Speaker 03:
So with apologies for the oral surreply, if I may, at reply page 7.

[00:26:55] Speaker 03:
There is an assertion by IMS that Takeuchi only describes a void between the gate electrode.

[00:27:01] Speaker 03:
This is, I believe, towards the top of the page.

[00:27:04] Speaker 03:
And then it says, in effect, i.e., the control gate and not the floating gate.

[00:27:11] Speaker 03:
And that is an issue that is simply incorrect.

[00:27:16] Speaker 03:
Takeuchi teaches the formation of voids between what it calls the gate electrodes

[00:27:24] Speaker 03:
But the gate electrode is not confined to the control gate.

[00:27:28] Speaker 03:
Takeuchi, and this is at appendix page 857, column 8, lines 22.

[00:27:32] Speaker 01:
Well, I know you're telling us this, but it's kind of hard to have a sir reply.

[00:27:36] Speaker 01:
And then did the board say anything about this issue?

[00:27:39] Speaker 01:
Can you point us something in the board decision to clarify this?

[00:27:43] Speaker 03:
I'm sorry to interrupt, Your Honor.

[00:27:45] Speaker 03:
I apologize.

[00:27:46] Speaker 03:
No, the board did not.

[00:27:47] Speaker 03:
This is an issue that came up only in reply about where the voids are positioned.

[00:27:52] Speaker 03:
And I simply wanted to address it because Takeuchi does teach the formation of the claimed void in the specific area that is being discussed.

[00:28:02] Speaker 03:
So the IMS was saying Takeuchi doesn't teach it because it's only between the control gate.

[00:28:08] Speaker 03:
But the gate electrode includes both the floating gate and the control gate.

[00:28:13] Speaker 03:
column 8, lines 22 to 34.

[00:28:16] Speaker 03:
So clearly, it creates it at that location.

[00:28:21] Speaker 03:
Unless your honors have any other questions, that's all I have.

[00:28:24] Speaker 03:
Thank you very much.

[00:28:42] Speaker 04:
Please.

[00:28:43] Speaker 04:
Your honors, one more time.

[00:28:44] Speaker 04:
Again, limited time.

[00:28:46] Speaker 04:
So one of the really important points that I want to make is that the board's decision is based on technology and analysis that they did completely and totally on their own, which is improper under Quozo, under like so many different cases.

[00:29:01] Speaker 04:
If you look at appendix 31, the board says, perhaps most importantly, patent owners' contentions regarding conformal and nonconformal processes

[00:29:11] Speaker 04:
are based on the flawed presumption, namely that the dielectric must be deposited on the side walls of the spaces between the adjacent layers.

[00:29:22] Speaker 04:
Micron never put that out.

[00:29:25] Speaker 04:
It's not in the petition.

[00:29:26] Speaker 04:
It wasn't in the argument.

[00:29:27] Speaker 04:
It's something that Judge Arpin kind of came up with on his own.

[00:29:31] Speaker 04:
And as he says, in the final written decision, that's perhaps most importantly in our decision.

[00:29:37] Speaker 04:
It's improper.

[00:29:39] Speaker 04:
For that reason alone, this has to be sent back to the board on remand, because it's just not acceptable.

[00:29:46] Speaker 04:
It's not acceptable under the law.

[00:29:48] Speaker 01:
Second, where did they go astray?

[00:29:53] Speaker 01:
Are they misstating what they call your flawed presumption, or was that your presumption, and they're making up why they say it's flawed?

[00:30:02] Speaker 04:
Every single embodiment in the 849 patent, every single embodiment

[00:30:07] Speaker 04:
in every single piece of prior art, they all have dielectric on the walls.

[00:30:11] Speaker 04:
There's nothing, not a single scintilla of evidence, not a single thing on the record that comes up with this idea that, you know what, you really don't have to deposit the dielectric on the walls.

[00:30:20] Speaker 00:
But it's not in the claim, right?

[00:30:21] Speaker 00:
Do I understand correctly that that's not specifically required by the claim?

[00:30:27] Speaker 04:
To deposit dielectric on the walls?

[00:30:28] Speaker 04:
No, that's not in the claim.

[00:30:31] Speaker 04:
On the other hand, you still have to read the specification

[00:30:35] Speaker 04:
or you have to read the claims in light of the specification.

[00:30:38] Speaker 04:
The concept that the board went off on its own and did some scientific analysis and based its determination of obviousness on a position that's not in the petition was never put forth by Micron is just flat out improper.

[00:30:52] Speaker 04:
They just can't do that.

[00:30:54] Speaker 01:
I know we've got a lot of cases here and the rest of this week.

[00:30:58] Speaker 01:
Did you ask for reconsideration on this basis before the board?

[00:31:02] Speaker 04:
No.

[00:31:04] Speaker 04:
No, we did not.

[00:31:07] Speaker 04:
With regard to reasonable expectation of success, Mr. Barbara just sat here and he discussed the fact that, well, if the primary art says you can do it every now and then, then that's good enough.

[00:31:18] Speaker 04:
And I don't understand how that's possible.

[00:31:20] Speaker 04:
If the whole purpose of a patent is to intentionally put voids, how could a person of ordinary skill in the art have a reasonable expectation of success

[00:31:30] Speaker 04:
if sometimes you do it and sometimes you don't.

[00:31:32] Speaker 04:
That means that we're going to be using products that sometimes work and sometimes don't, and that's ridiculous.

[00:31:37] Speaker 04:
That can't be the law.

[00:31:39] Speaker 04:
The law can't be a reasonable expectation of success is met as long as you do it once, as long as by accident the prior art says, you know what, sometimes I get it.

[00:31:49] Speaker 04:
And Takeuchi in specific doesn't want them.

[00:31:52] Speaker 04:
He doesn't want voids.

[00:31:53] Speaker 04:
When Chen came up with this invention,

[00:31:56] Speaker 04:
It was because nobody wanted voids at the time.

[00:31:59] Speaker 04:
And him and a couple of other people then started to figure out, you know what?

[00:32:04] Speaker 04:
The opposite might be true.

[00:32:05] Speaker 04:
If we start putting voids in there, we can get rid of the cross coupling between the memory cells.

[00:32:10] Speaker 04:
But Takeuchi wasn't one of those people.

[00:32:12] Speaker 04:
He came up with two different techniques to avoid voids.

[00:32:16] Speaker 04:
And how could that provide a reasonable expectation of success to put them in place in the technology?

[00:32:23] Speaker 00:
Before you sat down,

[00:32:25] Speaker 00:
Chief Judge Prost had asked you a question about claim five and whether that argument had been made before the board.

[00:32:31] Speaker 00:
Did you have anything that you wanted to add in response to that question?

[00:32:34] Speaker 04:
I didn't get a chance to get the pinpoint site, because I don't have all of the, I just didn't have every one of the briefs with me.

[00:32:39] Speaker 04:
But as I said, during oral argument, that claim limitation was discussed.

[00:32:44] Speaker 04:
It was brought up at the board.

[00:32:47] Speaker 04:
Doctor, if you look at appendix 464 to 466,

[00:32:55] Speaker 04:
There's a discussion, and Judge Arpin says, counselor, and he's talking to Mr. Bobrow.

[00:33:00] Speaker 04:
Following up on Judge Cherry's question, though, isn't it aspirational?

[00:33:04] Speaker 04:
And he's talking about Lee.

[00:33:05] Speaker 04:
Isn't that a pie in the sky dream?

[00:33:07] Speaker 04:
I'm left with no situation where I have, I'm left with a situation where I have no piece of prior art that describes five to one.

[00:33:16] Speaker 04:
I have no piece of prior art that describes eight to one specifically, and you're telling me that it's not a range issue, even though those are claim limitations.

[00:33:23] Speaker 04:
And it seems like you're arguing that this is just something you should do.

[00:33:27] Speaker 04:
And Bob Rao responds.

[00:33:28] Speaker 04:
And then Judge Cherry says, I believe those exact words, that it's aspirational.

[00:33:35] Speaker 04:
And he says, I think the question here, is there a reasonable expectation that you would succeed?

[00:33:40] Speaker 04:
Would a person of ordinary skill in the art be motivated such that they would think they have a reasonable expectation of success when none of the prior art tells you how to get there?

[00:33:49] Speaker 00:
I understand.

[00:33:50] Speaker 00:
Can I just direct your attention for a minute to page A38?

[00:33:54] Speaker 00:
That's the board's opinion and it says patent owner does not contend that dependent claim five is separately patentable but instead relies on its contentions with respect to its base claim, claim two.

[00:34:07] Speaker 00:
So it sounds as if the opinion is suggesting that claim five was not separately argued as being patentable.

[00:34:15] Speaker 04:
I'm not familiar with the exact page, so I just don't have a response for you.

[00:34:22] Speaker 04:
All I know is that the claims were talked about in that regard.

[00:34:25] Speaker 04:
And just my final point is, Mr. Bobber talked about Dr. Baker's testimony.

[00:34:31] Speaker 04:
Dr. Baker, sure enough, gave his declaration, and then I deposed him.

[00:34:35] Speaker 04:
And he melted like chocolate on a hot summer day, and he never came back.

[00:34:38] Speaker 04:
He never came back.

[00:34:40] Speaker 04:
And that's important.

[00:34:41] Speaker 04:
Because when you're looking at the substantial evidence, what do we have?

[00:34:44] Speaker 04:
And we have Dr. Ho's unrebutted testimony that in order to have a reasonable expectation of success at five to one and eight to one, you have to use nonconformal processes, even though that's not in the claim.

[00:34:57] Speaker 04:
Thank you, Your Honor.

[00:34:59] Speaker 01:
Thank both sides and the case is submitted.