[00:00:03] Speaker 04:
We have four argued cases this morning.

[00:00:05] Speaker 04:
The first of these is number 18, 2067, Chrome OS Technologies versus Samsung Electronics.

[00:00:13] Speaker 04:
Mr. Kaplan.

[00:00:23] Speaker 02:
Good morning, Your Honors.

[00:00:23] Speaker 02:
May it please the Court?

[00:00:27] Speaker 02:
This appeal presents the dispositive issue of claim construction and whether the board's construction of the term fanning the wafer properly gave weight to the amendments made during prosecution of the patent in order to overcome the cited prior argument.

[00:00:43] Speaker 04:
Would the board's construction be correct if we didn't have the prosecution history?

[00:00:51] Speaker 02:
the prosecution history is what I rest on so your honor there's no we haven't analyzed the question of whether it would be correct in the absence of the prosecution history because we are relying solely on the prosecution history so there's no argument whether we didn't argue whether it would be supported or not supported by the specification alone so what's the answer to the question would the construction be correct if we didn't have the prosecution history?

[00:01:22] Speaker 02:
Prosecution history is what limits it in our view to would be yes.

[00:01:26] Speaker 02:
Yes, your honor.

[00:01:27] Speaker 03:
There's nothing in the specification that says Fanning the wafer means cooling over the front of the wafer.

[00:01:34] Speaker 02:
The words in the front do not appear your honor.

[00:01:36] Speaker 02:
That's correct.

[00:01:36] Speaker 02:
It says fanning the wafer to cool it.

[00:01:38] Speaker 02:
It does not say the front.

[00:01:39] Speaker 03:
Did you when you were trying to distinguish the prior art tell the examiner that fanning the wafer meant cooling over the front?

[00:01:47] Speaker 02:
the the arguments that were submitted as part of the office.

[00:01:51] Speaker 03:
Let me be clear.

[00:01:51] Speaker 03:
What I'm asking is did you explicitly use the words over the front or some variation of it in using the word front in responding to the examiner's rejection?

[00:02:04] Speaker 03:
No.

[00:02:05] Speaker 03:
Okay, so we have to take an inference from everything else.

[00:02:07] Speaker 02:
That's correct.

[00:02:10] Speaker 03:
How does an inference ever rise to level of clear and unambiguous?

[00:02:15] Speaker 02:
Well, Your Honor, the examiner was clear and unambiguous when he stated that, in rejecting the original claims, the wafer was cooled in an argon atmosphere by blowing gas under the rear surface of the wafer.

[00:02:28] Speaker 02:
And indeed, that is exactly what Endo teaches.

[00:02:32] Speaker 02:
The amendment was made to include the fanning the wafer language.

[00:02:35] Speaker 03:
How does that tell us that the examiner allowed it because you cooled over the front when you didn't even tell him you cooled over the front?

[00:02:41] Speaker 02:
Because the only teaching of cooling in ENDO, Your Honor, is cooling under the rear.

[00:02:47] Speaker 02:
And so if that amendment is to be given meaning, that's the only reasonable inference that can be drawn from.

[00:02:54] Speaker 04:
Well, if you'd said that ENDO doesn't teach fanning the wafer, you might have a good argument, but that's not what was said during the process.

[00:03:08] Speaker 04:
It was qualified since it doesn't disclose fanning the wafer sufficiently to cool the thing within certain parameters, right?

[00:03:20] Speaker 02:
I believe the entire limitation and the statement is cooling it to a degree sufficient to eliminate the stress or reduce the stress between the aluminum copper layer and the titanium nitride layer.

[00:03:37] Speaker 01:
I'd like to go back to my colleague Judge Hughes, his question.

[00:03:42] Speaker 01:
How can we find clear and unmistakable disclaimer by an inference?

[00:03:47] Speaker 01:
Isn't that in opposite terms?

[00:03:52] Speaker 02:
I don't believe that's correct, Your Honor.

[00:03:54] Speaker 02:
Your Honor, this court has said that there's no sort of magic formula for finding a clear and unmistakable disclaimer.

[00:04:00] Speaker 02:
It doesn't require me, or it does not require a prosecutor.

[00:04:04] Speaker 01:
But it's got to be clear.

[00:04:06] Speaker 01:
And it's got to be unmistakable, meaning there is no other, or it's difficult to find another type of interpretation to that.

[00:04:15] Speaker 01:
But here you're asking us to infer.

[00:04:18] Speaker 02:
uh... you know i would submit that the inference is clear and unmistakable because the examiner said it is cooled by blowing under the way for the only amendment that was made was to include the fanning the wafer to further refine the cooling step to include the fanning the wafer limitation to a temperature sufficient to

[00:04:37] Speaker 02:
alleviate the stress and the claim was then allowed and so the only reasonable inference that can be drawn from that your honor is that the the amendment was deemed sufficient by the examiner to distinguish between the prior art endo and the claims that were ultimately allowed this isn't a case where there were a series of amendments made to the claims another inference is that it does does not include fanning the front of the wafer

[00:05:11] Speaker 02:
I don't see how that could be an inference when the prior art discloses fanning the rear of the wafer and the amendment was made to overcome the prior art.

[00:05:25] Speaker 02:
So perhaps I'm not understanding your question.

[00:05:28] Speaker 03:
Well, the board found that the prior art might have been overcome for several reasons, not just the front, which is particularly true since you never used the word the front as a reason to distinguish.

[00:05:42] Speaker 02:
The board identified three potential ambiguities.

[00:05:45] Speaker 03:
I mean, if you were the patentee and somebody was trying to show that they didn't infringe because you had given this up as prosecution history of Staple, I have no doubt you'd be in here saying, we never used the word front.

[00:05:58] Speaker 03:
That's not clear and unambiguous.

[00:06:00] Speaker 03:
You have to get to an inference to do that.

[00:06:03] Speaker 03:
I mean, it just doesn't seem to come close to our standard for prosecution history of Staple.

[00:06:09] Speaker 03:
When you didn't tell the examiner the reason, you thought it distinguished that you're now telling us.

[00:06:15] Speaker 03:
The examiner never said it specifically and the board posited several other reasons that it could have distinguished the prior art.

[00:06:22] Speaker 03:
I don't see how you come close to prevailing here.

[00:06:27] Speaker 02:
Your Honor, I can address the specific ambiguities identified by the board.

[00:06:33] Speaker 02:
The first, the slow cooling point, Your Honor, we submit is inextricably linked to how the prior art teaches the cooling, which is blowing on the rear of the wafer.

[00:06:43] Speaker 02:
And so that purported ambiguity is not an ambiguity at all.

[00:06:48] Speaker 02:
It simply reflects what is taught by the prior art.

[00:06:53] Speaker 02:
what is being disclaimed.

[00:06:55] Speaker 04:
The second- I'm not sure that I understand why you're conceding that there has to be a clear and unmistakable disclaimer here.

[00:07:02] Speaker 04:
The fanning wafer is not a term that has a meaning that's well known.

[00:07:13] Speaker 04:
And the prosecution history can bear on the construction of the term fanning the wafer without having to find a third on the state of the disclaimer.

[00:07:24] Speaker 04:
It's just a question of claim construction and the prosecution history sheds light on the correct claim construction.

[00:07:34] Speaker 04:
There's no plain and ordinary meaning to fanning.

[00:07:38] Speaker 04:
That's correct, Your Honor.

[00:07:40] Speaker 04:
We don't need a disclaimer.

[00:07:41] Speaker 04:
We just need to figure out what fanning the wafer means based on all the available intrinsic evidence, the language itself, the specification, and the prosecution history.

[00:07:53] Speaker 04:
You don't have to have a disclaimer to use the process to make the prosecution history relevant to interpretation.

[00:08:01] Speaker 02:
But you haven't made that a

[00:08:05] Speaker 02:
it's always been phrased as this claim, Your Honor, and so I accept and agree with your point.

[00:08:11] Speaker 02:
The way the Clay case was briefed is slightly different.

[00:08:15] Speaker 02:
Returning again to Judge Hughes and the ambiguities, the second alleged ambiguity was the timing ambiguity, and there's simply no basis in the record or the claims for the timing ambiguity as to when the

[00:08:31] Speaker 02:
the cooling occurs, it clearly and unambiguously occurs between the first and second, between the deposition of the aluminum-copper film and the deposition of the titanium-nitride film, and there is no suggestion anywhere in the intrinsic record that... Is there any discussion in the specification at all of what fanning the wafer means?

[00:08:50] Speaker 02:
It's discussed in passing as fanning the wafer in the chamber, but that's the extent of it.

[00:08:56] Speaker 03:
Is the prior art system of cooling

[00:09:01] Speaker 03:
to the rear of the wafer, also fanning the wafer?

[00:09:03] Speaker 02:
I would say no, not in this context, because it was distinguished during prosecution.

[00:09:08] Speaker 03:
Besides the prosecution, I mean, you made up a term that you then didn't define.

[00:09:14] Speaker 03:
It doesn't appear to be a term of art.

[00:09:17] Speaker 03:
And I just don't know how specific it is, because it sounds pretty general to me.

[00:09:21] Speaker 03:
It sounds like using some kind of inert gas to cool the chip after it went through the super hot chamber.

[00:09:30] Speaker 03:
I don't see why using the inert gas to the rear is not very similar to going over the top.

[00:09:39] Speaker 03:
I know you say it has different, it may have a different speed, it may do all these kinds of things, but you didn't define the term in any way except banning the wafer.

[00:09:51] Speaker 02:
The term fanning is not defined.

[00:09:52] Speaker 02:
It is used in the specification, but is not defined specifically in the specification.

[00:09:56] Speaker 03:
And when it's used, in what context is it used?

[00:09:59] Speaker 03:
In the discussion of putting inert gas into a chamber to cool the chip?

[00:10:04] Speaker 03:
Yes.

[00:10:04] Speaker 03:
Which is exactly what Indo does, just on a different side of the chip.

[00:10:09] Speaker 02:
Well, ENDO puts the gas into a different chamber that is located as part of the electrode that the wafer is sitting on and it blows gas on the rear of the substrate.

[00:10:18] Speaker 02:
So it's not blowing gas into the chamber per se, it's blowing gas into a chamber that is located on the rear as shown in Figure 2.

[00:10:28] Speaker 02:
So there is a distinction in our mind, Your Honor, between

[00:10:33] Speaker 02:
blowing it into the chamber per se, and simply blowing it onto the rear, which is distinguished.

[00:10:46] Speaker 04:
Do you want to save the rest of your time?

[00:10:48] Speaker 04:
I will save the rest of my time.

[00:11:00] Speaker 04:
Mr. Moody?

[00:11:06] Speaker 00:
Good morning, Your Honor.

[00:11:07] Speaker 00:
May it please the Court?

[00:11:09] Speaker 04:
This doesn't have to be a disclaimer, right?

[00:11:11] Speaker 04:
It doesn't have to be a clear and unmistakable disclaimer.

[00:11:13] Speaker 04:
We can look to the prosecution history to determine the meaning of fanning the wafer, which is not a term that has a plain and ordinary meaning, does it?

[00:11:21] Speaker 00:
So Your Honor, I agree that the prosecution history does shed light as to the meaning of fanning the wafer.

[00:11:28] Speaker 00:
With respect to the plain and ordinary meaning, if you look at A1300,

[00:11:33] Speaker 00:
The patent owner here actually pointed to a dictionary to define fanning and they said fanning meant to cause air to blow upon based on that dictionary.

[00:11:43] Speaker 00:
So what we submit is that here what PROMAS has to do it actually obviously during the prosecution it amended the claims to include certain language.

[00:11:52] Speaker 00:
It had the ability to describe that amendment and the prior art.

[00:11:56] Speaker 00:
It should not now use the prosecution history to

[00:12:00] Speaker 00:
propose a claim construction, and rewrite its claims based on what we suggest does not meet this court's exacting standard of clear and unmistakable disclaimer.

[00:12:12] Speaker 04:
Wait, why does it have to be a clear and unmistakable disclaimer?

[00:12:18] Speaker 04:
Is fanning the wafer have a plain and ordinary meaning?

[00:12:21] Speaker 00:
Your Honor, we submit, if you look at the evidence that's in the record, again, if you look at 81300.

[00:12:27] Speaker 00:
81300?

[00:12:29] Speaker 00:
Yes, Your Honor.

[00:12:41] Speaker 04:
Okay.

[00:12:42] Speaker 00:
So this is their patent owner response that they submitted to the Patent Office in response to the institution decision.

[00:12:48] Speaker 00:
And you can see in the middle paragraph, they say the word fanning in the context of semiconductor manufacturing would be understood by a person of ordinary skill in the art to mean directing a gas or gases at a target in a controlled manner.

[00:13:02] Speaker 00:
Then they go on.

[00:13:03] Speaker 04:
Except the dictionary definition is fanning is to cause air to blow up on heads from a fan.

[00:13:11] Speaker 04:
here doesn't involve a fan.

[00:13:14] Speaker 00:
The patent certainly only has one statement, as Mr. Kaufman pointed out, that talks about fanning.

[00:13:20] Speaker 00:
And what we suggest is this whole distinction about what's in ENDO and what's in Yamada, the prior reference we relied upon, what we submit is all ENDO discloses is that you have a chamber that's filled with gas.

[00:13:34] Speaker 00:
And it's slow cooling.

[00:13:35] Speaker 00:
Yamada or ENDO talks about slow cooling and gradual cooling.

[00:13:39] Speaker 00:
When we talk about fanning, it's a very active step.

[00:13:42] Speaker 00:
You're fanning the wafer.

[00:13:44] Speaker 00:
And that's very consistent.

[00:13:45] Speaker 04:
Not using a fan.

[00:13:48] Speaker 00:
Sure, Your Honor.

[00:13:48] Speaker 00:
I'll give you that.

[00:13:49] Speaker 00:
All I'm suggesting is, for example, if you look at Yamada, and this is at A393, paragraph 35, what Yamada tells us when it talks about cooling the substrate, it says, proactively cooling the substrate by blowing a low temperature gas against it.

[00:14:06] Speaker 00:
It's very different from ENDO.

[00:14:08] Speaker 00:
And I think at the end of the day, if you look at the way this case has been set up, their argument is they're entitled to a clear and unmistakable prosecution history disclaimer.

[00:14:20] Speaker 00:
They have the burden to prove that.

[00:14:22] Speaker 00:
They simply haven't met that burden.

[00:14:24] Speaker 04:
If you look... Suppose we were to hold that the standard is not clear and unmistakable disclaimer, but just claim interpretation.

[00:14:32] Speaker 04:
Does it come out differently?

[00:14:34] Speaker 00:
I don't believe so, Your Honor.

[00:14:35] Speaker 00:
I believe even if you look at the prosecution history, the prosecution history simply does not add to what's already in the specification.

[00:14:45] Speaker 00:
It does not give any guidance as to what the term fanning means, other than distinguishing it from ENDO, which again is gradual cooling, it's slow cooling.

[00:14:54] Speaker 00:
And here, if you look at the prosecution history, this case would be different, Judge Dyke, if they had come in and said,

[00:15:00] Speaker 00:
Fanning the wafer means fanning the front surface of the wafer.

[00:15:04] Speaker 00:
It would have been different if they said fanning the wafer does not include rear side cooling.

[00:15:09] Speaker 04:
It would have been different.

[00:15:16] Speaker 00:
Yes, Your Honor.

[00:15:16] Speaker 00:
If they had said that just by itself, I think, again, this case would be different.

[00:15:21] Speaker 00:
But as Your Honor pointed out, they said more than that.

[00:15:24] Speaker 00:
They pointed to that thermal stress limitation that Judge Dyke you asked about at least 10 times during the prosecution.

[00:15:32] Speaker 00:
At least 10 times.

[00:15:33] Speaker 00:
I counted it.

[00:15:34] Speaker 00:
So what they did during prosecution was they repeated the claim language, which this court has said time and again is not enough for disclaimer.

[00:15:42] Speaker 00:
And then the other statements that they pointed to simply distinguished Ando.

[00:15:46] Speaker 00:
And as the board correctly pointed out, the prosecution history is amenable to multiple interpretations.

[00:15:53] Speaker 00:
And we think that is fatal to their prosecution history disclaimer argument.

[00:15:58] Speaker 00:
And at the end of the day, what is the purpose of the prosecution history?

[00:16:01] Speaker 00:
Just by going back to the points you were making.

[00:16:03] Speaker 00:
The prosecution history is supposed to give notice to a competitor.

[00:16:08] Speaker 00:
This prosecution history did not give any sort of notice with respect to fanning the wafer and that they meant that it had to be topside cooling.

[00:16:17] Speaker 00:
And there's more here.

[00:16:18] Speaker 00:
With respect to the specification, if we look at the specification, nowhere does the specification tell us that fanning the wafer means topside cooling.

[00:16:28] Speaker 00:
And in fact, what could they have done in this case, in the IPR?

[00:16:31] Speaker 00:
They actually tried to amend their claims.

[00:16:33] Speaker 00:
to include topside cooling, essentially topside cooling.

[00:16:37] Speaker 00:
And that's at A43.

[00:16:37] Speaker 00:
The board denied that amendment.

[00:16:40] Speaker 00:
The board found there was no written description support for that amendment.

[00:16:45] Speaker 00:
So they cannot now be allowed to come to this court.

[00:16:50] Speaker 00:
When they try to amend the claims, during the IPR below, in finding that they don't appeal, the board found that there was no support for that amendment.

[00:16:58] Speaker 00:
During prosecution, they never said fanning the wafer means fanning the top side of the wafer or anything close to it.

[00:17:05] Speaker 00:
So when you have facts like this, no matter how you look at the prosecution history, it simply does not support the construction they're asking this court for.

[00:17:14] Speaker 00:
Unless your honors have any other questions, I'll give the rest of the time back to the court.

[00:17:18] Speaker 04:
Okay.

[00:17:19] Speaker 04:
Thank you.

[00:17:20] Speaker 04:
Thank you.

[00:17:24] Speaker 04:
Okay.

[00:17:25] Speaker 04:
Mr. Kauffman, you've got a few minutes.

[00:17:44] Speaker 02:
Briefly, Your Honors, in response to counsel's statement that Yamada was different from ENDO, with respect, the record does not establish that.

[00:17:56] Speaker 02:
Yamada and ENDO are effectively the same.

[00:17:59] Speaker 02:
Both of them disclose blowing gas on the rear of the substrate.

[00:18:06] Speaker 02:
ENDO uses the term flown or applying.

[00:18:11] Speaker 02:
Yamada used the term blow, but it's the same type of process where the same process is being performed in each case.

[00:18:19] Speaker 02:
And if the prosecution history is to be given any meaning in the interpretation of this claim, Your Honor, it must exclude what's shown in Yamada, which is the same as what's shown in Ando.

[00:18:32] Speaker 02:
If the court has no further questions.

[00:18:35] Speaker 04:
OK.

[00:18:35] Speaker 04:
Thank you, Mr. Counsel.

[00:18:38] Speaker 02:
I thank both counsels for the specific meeting.