[00:00:00] Speaker 02:
We will hear argument in number 222048, Bell Semiconductor against Advanced Semiconductor Engineering.

[00:00:10] Speaker 02:
Mr. Wright.

[00:00:12] Speaker 03:
Thank you, Your Honor.

[00:00:14] Speaker 02:
Can we begin with the set of questions?

[00:00:18] Speaker 02:
Absolutely.

[00:00:18] Speaker 02:
Questions, certainly.

[00:00:19] Speaker 02:
We asked you to be prepared to discuss the status of Bell and Rome.

[00:00:26] Speaker 03:
Yes, absolutely.

[00:00:27] Speaker 02:
And how that relates to whether we

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Can you decide anything here?

[00:00:33] Speaker 03:
Certainly.

[00:00:34] Speaker 03:
So we initiated an investigation when the order issued on the 24th.

[00:00:41] Speaker 03:
Excuse me, we looked at the dockets that you had listed in the in the order regarding the Bell versus microchip Bell versus NXP district court cases that had been pending in the Western District, Texas.

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We checked our own correspondence with Rome at the time.

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Some of that correspondence was actually listed in a motion in the Bell versus NXP case.

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That was under seal.

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We obtained unsealed copies.

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I shared it with opposing counsel.

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We discussed it.

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In essence, and I have copies if the court wants to see those, in essence, there was an issue that was raised in the microchip case regarding joining Rome, who was the assigner of this patent.

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It was not challenged it was an unopposed motion.

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Rome was joined because Judge Albright felt that there was it was unopposed and that there was a potential interest there.

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Shortly after that that case settled.

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So there was an order joining Rome, but there was nothing regarding ownership or anything along those lines that had changed that position.

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In the NXP case, there was the motion to continue without Rome as a non-indispensable party.

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And during that, we submitted a number of exhibits, and those exhibits essentially were

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Correspondences between former counsel for Bell and Rome making them aware of the Joinder issue in the district court microchip case Rome got back to Bell and basically said we don't believe we're subject to jurisdiction We do want we don't want to join voluntarily, and we're not waving our Hague

[00:02:33] Speaker 03:
service rights.

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It just seemed as if they were not.

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And that correspondence was in the microchip case, not the NXP case?

[00:02:40] Speaker 03:
It was in the microchip case.

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It was attached to the NXP case as part of the motion to continue without Rome in that case.

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And was that correspondence after the order in the microchip case joining Rome?

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Yes.

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So the timeline was the jointer in the microchip case.

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That case settled.

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Then there was the NXP case, where there was the motion to continue without Rome, because they weren't an indispensable party.

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And that's where the correspondence from the microchip case was introduced in sealed exhibits.

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And what about the question whether Rome

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is now or has been aware of this IPR proceeding.

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So we determined that Rome was not informed of the IPR at the time that the IPR was filed, the petition was filed in 2020.

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All the things that happened in the district court case had not happened.

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Bell believed that they were 100% owner of the patent that was a full assignment of all right title and interests.

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There was a license back provision to Rome so that they could continue to operate, you know, a royalty free license.

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There were encumbrances on the patent based on previous licenses that the patent license agreement requested that Bell accept as part of the deal, which they did.

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And then there is a white list provision in the patent assignment.

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the whitelist provision unlike the Lone Star case where it was a where there was a veto issue it was these entities are already licensed these entities are the whitelist entities that you agree are your targets and there was no other listing of any

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any companies that would perhaps be a target that Bell would go after and that Rome would have any type of a veto over.

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There was no control over the litigations.

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And then as a final point, we actually... Sure.

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I think I'm remembering this right, but just correct me, that the assignment that's on file with the PTO

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is just the one page assignment without any of the whitelist and other provisions that you mentioned.

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I guess I was inferring from the order in the microchip case that, microchip, is that what it was?

[00:05:18] Speaker 02:
Yes.

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that some of these other provisions, the whiteness and so on, were what led the district court to order Joinder of Rome.

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Why wouldn't that order carry over to require

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a patterned motor.

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I believe the judge's order said that the jointer was being ordered partially because it was unopposed, but also because there was an interest.

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It didn't say an ownership interest, but it said they believed that there was an interest in the patent.

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And it did not really elaborate beyond that.

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I think the district court order invoked rule 19A1B, which said that the person claimed an interest.

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What was the basis for saying that Rome claimed an interest if later it said

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we're not interested.

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Yeah, I saw that as well and I'm not sure where that term claim came from.

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We tried to get the actual unopposed motion.

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That was previous counsel.

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We did not have access to that.

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We contacted them and we could not receive a copy of it.

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So I don't know exactly what that claim was, but Rome certainly never made any claim of having any interest in this time, other than the license fact.

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I do want to, I guess,

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So don't worry about the time.

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Absolutely.

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So so.

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So what is your understanding.

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So my understanding is that Bell has always believed that they are 100 100 percent owner of this patent despite.

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The joiner and the statement that Rome had an interest based on the correspondence with Rome, they certainly didn't seem to have an interest.

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And we've spoken to them whether or not they were aware of the IPR.

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And their statement was they were not made aware of it by the petitioner at the time, you know, 2020 at the time of the filing of the IPR.

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and they said that they may have been aware of it because they monitor US litigation and IPR filings, but they may not have appreciated that it was a patent that they previously owned.

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So it sounds like at a minimum, Rome is aware of it now.

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They are aware of it now.

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We believe that we made them aware of it anecdotally, not through a formal notice, but

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Personnel from Bell Semiconductor had met with personnel from Rome not long after the final written decision came out prior to this appeal.

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And is your understanding of law and rules such that if Rome is aware of the proceeding now and is concerned that a patent in which it has what it might think is an ownership

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somehow or other seek to intervene in or otherwise make an effective legal filing with the board to say, don't take away our patent because without us knowing it?

[00:08:44] Speaker 03:
After the fact, I am not sure exactly what that situation is.

[00:08:49] Speaker 03:
There is a order out there saying,

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join Rome because they may have an interest or they have an interest, but we don't see that interest and we don't understand why the court necessarily saw that interest because we don't see it.

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There doesn't seem to be any reservation of any exclusivity rights to Rome.

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And when Rome was notified of that joiner, they did not seem particularly interested in joining in the microchip case.

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They were also informed that there would be issues.

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One of the ways that I'm thinking

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that nobody has raised this issue here.

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So there's a question, are we in some way obligated to do something about or attend to a possibility that Rome has an interest.

[00:09:39] Speaker 02:
If I now understand things, Rome is aware of the proceeding now and it could seek

[00:09:47] Speaker 02:
to somehow become a participant in the proceeding if it had such an interest.

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And that maybe is some good reason that we don't have to pay attention to this issue.

[00:10:03] Speaker 03:
I don't think there's been any interest on their part to get involved with this case.

[00:10:08] Speaker 03:
As I mentioned, they got back to us last night saying they may have been aware of the IPR, but they may not have appreciated it because it was a patent that they used to own.

[00:10:17] Speaker 03:
They certainly don't seem to believe that they have an ownership interest in it now.

[00:10:21] Speaker 03:
They didn't seem to be interested in being involved in the microchip case.

[00:10:26] Speaker 03:
I know that there are PTO decisions that say that, you know, you don't need to unwind cases in a situation, for example, where a petitioner's RPI was not listed until after the proceeding, and they can be added as a potential interested party without unwinding all the procedures.

[00:10:47] Speaker 03:
I know that if ASE or we had informed Rome that perhaps they should consider whether they want to be part of the IPR and then went to the patent office, I'm not sure how that would be effective because Bell is still the 100% owner of that patent through the recordation.

[00:11:10] Speaker 03:
And so and I don't believe there's even a mechanism for the patent office to determine ownership during an IPR whether or not there's a handful of board decisions that I've seen in which

[00:11:25] Speaker 02:
roughly in this ballpark have been discussed.

[00:11:29] Speaker 02:
And it has mattered to some extent whether the missing potential owner has come in to say we have an interest.

[00:11:37] Speaker 02:
I think some of them say that the recordation is presumptively a proof of ownership, but it's only a presumption.

[00:11:49] Speaker 02:
And I'm trying to understand

[00:11:53] Speaker 02:
this case fits in that half a dozen or so board proceedings and where the matter is not raised it seems to me important, potentially important that Rome is aware of the proceeding and if it had a concern

[00:12:14] Speaker 02:
it might somehow express that concern, and it hasn't.

[00:12:18] Speaker 03:
It hasn't.

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It is aware of it.

[00:12:20] Speaker 03:
At least as of 2022, this anecdotal discussion between personnel for Bell Semiconductor and personnel for Rome at a Chicago industry meeting.

[00:12:33] Speaker 03:
The final written decision from the PTAB had come out just a couple weeks before in June of 2022.

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They had this meeting, and they mentioned that there was an IPR, and it was likely going to be appealed.

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And there didn't seem to be any interest on the part of Rome.

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My understanding, I wasn't in the conversation, but as it was related to me, it wasn't as if Rome said, wait, how did this go on without us?

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And they've been told about this appeal, and we asked them specifically when they became aware of it.

[00:13:02] Speaker 03:
They said they were not aware of it at the time of filing, but they may have become aware of it because they monitor things, but they may not have appreciated that it was a patent that they used to own.

[00:13:12] Speaker 03:
Not that it was a patent that, boy, I wish we had known about that.

[00:13:14] Speaker 03:
We would have jumped in there.

[00:13:16] Speaker 03:
We probably didn't appreciate it because we didn't own it.

[00:13:20] Speaker 03:
And it seems to me that that's a...

[00:13:23] Speaker 03:
It seems to me that they just don't have an interest in it.

[00:13:25] Speaker 03:
Certainly, they could be contacted to ask if they believe they have an interest in it.

[00:13:30] Speaker 03:
But everything that they've told us suggests, and based on our own review of the patent license agreement and Bell's belief that they have 100% owner, it just doesn't seem that it's ever come off.

[00:13:43] Speaker 02:
Well, unless you have something to add, why don't you talk about what you've planned?

[00:13:48] Speaker 03:
Sure.

[00:13:48] Speaker 03:
Thank you, Your Honor.

[00:13:50] Speaker 03:
Yes, so our appeal is essentially, there are a number of things in the briefs that we discussed, but it's essentially a two-part argument that we believe the board erred in its claim construction.

[00:14:01] Speaker 03:
Essentially the biggest issue that we see is that the court, or excuse me, the PTAB found a

[00:14:10] Speaker 03:
single chip embodiment for the claimed method that we just do not believe is disclosed and we don't believe it was ever intended because the entirety of this patent is really directed to the efficiencies

[00:14:24] Speaker 03:
that are found in using a multi-chip method of manufacturing.

[00:14:29] Speaker 03:
And I want to just bring up, just quickly, what I'm talking about when I say single-chip and multi-chip, because there is some confusion to the extent that final products that come out of the final cutting process.

[00:14:42] Speaker 02:
And just so I understand, do I understand, putting aside the cutting issue, your first two issues come down to whether there

[00:14:56] Speaker 03:
And when I say single chip embodiment, I don't mean the final product.

[00:15:02] Speaker 03:
I mean the method of producing it.

[00:15:05] Speaker 03:
So is it a lead frame that holds one chip?

[00:15:09] Speaker 03:
And then you put on a layer of passivation and then you cut it.

[00:15:15] Speaker 03:
Or is it a situation where you have a lead frame that is designed to hold multiple chips?

[00:15:20] Speaker 03:
Those multiple chips are put down.

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A resin layer is put across all the chips in between them.

[00:15:27] Speaker 03:
And then that particular multi-chip lead frame intermediate product is then diced, cut into the individual

[00:15:35] Speaker 03:
semiconductor products that are the final product.

[00:15:39] Speaker 00:
I would like to rephrase that.

[00:15:40] Speaker 00:
I don't see it as an either or in terms of the options.

[00:15:44] Speaker 00:
It would be either it covers both a single chip.

[00:15:48] Speaker 00:
and multiple chips, or is it limited to multiple chips?

[00:15:53] Speaker 03:
We believe it's limited to multiple chips.

[00:15:54] Speaker 00:
I understand.

[00:15:55] Speaker 03:
You said is it either or, and I think it's more... I'm just saying from the standpoint of distinguishing between, when I say a single chip processing, I'm not talking about the final product.

[00:16:04] Speaker 00:
I'm talking about the process.

[00:16:05] Speaker 00:
I understand.

[00:16:06] Speaker 00:
One of the problems I have with your claim construction argument is

[00:16:10] Speaker 00:
The word the use of the word a for example mounting a semiconductor chip on a lead frame Producing an intermediate product.

[00:16:19] Speaker 00:
There's nothing here that would In the express language of the claim that would make it so that you could expect the claim excludes a single chip environment two points to that you're on one the the language about putting a chip on the lead frame is not it's not a closed

[00:16:38] Speaker 03:
only including these materials.

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It could be additional chips that are put on that.

[00:16:43] Speaker 03:
And when you look at the term intermediate product, that's the hook that really brings the multi-chip into the claim.

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And it was kind of overlooked by the board because they were treating

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Much of the disclosure, much of the intrinsic evidence on the multi-chip method, which is what we say the entire thrust of this patent is to multi-chip processing.

[00:17:08] Speaker 00:
By taking out that intermediate product and treating it as a... How is it that I should understand and the board should have understood that an intermediate product must be more than one chip?

[00:17:19] Speaker 03:
So it's specifically defined in the patent that the intermediate product that results from the molding process.

[00:17:26] Speaker 03:
And it's important to note that if you look through the patent, there really is one process that's mentioned in this patent.

[00:17:32] Speaker 03:
It's the creation of a multi-chip stamped lead frame, the attachment of multiple chips to that lead frame, the placement of a continuous layer over those chips, and the cutting of it.

[00:17:44] Speaker 03:
And the patent specifically says that the resultant

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molded intermediate product generally has the cross-sectional profile of figure 16.

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And so that is the key difference between prior art and this invention.

[00:18:00] Speaker 03:
And it's not only in the patent, but Appellee admits it.

[00:18:04] Speaker 03:
If you look at Appellee's brief, Appellee's brief says that the claim language of claim one tracks the prior art, and it points specifically to column one of the patent.

[00:18:19] Speaker 03:
And in column one of the patent, it says, very similar to the claim language, the semiconductor chip 92 is mounted on the frame, and then the bonding of the wire 93 is performed.

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The mounted chip 92 and the wire 93 are enclosed in the resin material.

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And then the next sentence says, finally, the thus obtained intermediate product of the prior

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is diced into smaller pieces, one of which provides the semiconductor device shown in figure 19A, which is the prior height device.

[00:18:49] Speaker 03:
So we agree with Appellee that the language of our claim similarly uses this shortcut to discuss the multi-chip intermediate product, but from this perspective of the single chip, because that's ultimately going to be in the final product.

[00:19:08] Speaker 03:
it's a shorthand.

[00:19:09] Speaker 03:
And when the board looked at column two, the summary of the invention, it has very similar language.

[00:19:15] Speaker 03:
It talks about it from a single chip perspective.

[00:19:19] Speaker 03:
But this, again, this language is not designed to be limited.

[00:19:23] Speaker 03:
This is a summary that tells, from the perspective of the single chip, how it's going to be produced.

[00:19:29] Speaker 03:
But it still requires the process as laid out in the patent

[00:19:37] Speaker 03:
remainder of the detailed description of how that process is done and that process is to create the specific intermediate product from a multi-chip lead frame shown in figure 8 and appellee also admits that that the lead frame that goes into the molding process is the lead frame from figure 8 which has multiple chips on it

[00:20:02] Speaker 03:
And when you go into the molding process and you create the molded intermediate product, it tells you that that molded intermediate product has to be diced into individual semiconductor devices.

[00:20:14] Speaker 03:
That's at Column 6, Appendix 118, Column 6, Lines 43 through about 47.

[00:20:25] Speaker 03:
Even though it was a shorthand in the summer of the invention talking about it from the perspective of the single chip, as you read through this specification, you realize that the method includes making, and this is for purposes of trying to improve the efficiency of the overall process.

[00:20:43] Speaker 03:
Rather than focus on one chip on a lead frame,

[00:20:46] Speaker 03:
You can put multiple chips on a lead frame.

[00:20:49] Speaker 03:
They can be processed at the same time.

[00:20:51] Speaker 03:
You can place this layer, which is shown in figure 16, as 5 prime, which is a claim limitation.

[00:20:58] Speaker 03:
The layer is in the claim, and it has a meaning.

[00:21:02] Speaker 03:
And there's a distinction in the patent between the layer that's placed during the intermediate product, 5 prime,

[00:21:10] Speaker 03:
And the package material, the resin that's left on each individual chip after the dicing, after the separation of the individual products has been made.

[00:21:20] Speaker 03:
And so there was some confusion at the board between there's not enough distinction between these two packages, the package material and the package layer.

[00:21:30] Speaker 03:
And we maintain that that's very clear.

[00:21:32] Speaker 03:
The package material is noted as five in the final products, but the packaging layer, which is part of the actual process of making the multi-chip intermediate product, that's continuous and shown as five prime in figure 16.

[00:21:49] Speaker 03:
I just bring us a good place to bring up our second concern.

[00:21:52] Speaker 03:
is that part of the board's reasoning was based on Dr. Seuling, petitioner's expert, who proffered a figure 16 prime.

[00:22:04] Speaker 03:
And in figure 16 prime, that continuous layer, 5 prime from figure 16, was excised.

[00:22:11] Speaker 03:
It was absolutely removed.

[00:22:13] Speaker 03:
It's hard to imagine a more contrary figure

[00:22:17] Speaker 03:
then taking figure 16, which the patent says is the intermediate product cross-section and removing one of the key elements, which is the claim limitation of the resin layer, the packaging layer.

[00:22:32] Speaker 03:
Well, I think the board did rely on it.

[00:22:35] Speaker 03:
First of all, where would the board get this idea that there was a secondary molding from Figure 16 Prime, which is part of the final written decision.

[00:22:45] Speaker 05:
But if you take a look, and I pointed out when it came up, the board was relying on the statement and sign of the invention.

[00:22:55] Speaker 03:
Well, they say specifically, and I can point out where this is, that

[00:23:06] Speaker 03:
So if you look at, if you take a look at, it's probably best to look at the reply brief, our reply brief at pages 24 through 25.

[00:23:16] Speaker 02:
I thought you were going to tell us where, something about the board decision.

[00:23:22] Speaker 03:
Yes, the board relied on, at appendix 23, you will see that the final written decision discusses petitioner's IPR reply at page 8.

[00:23:32] Speaker 03:
And that's Appendix Page 0435.

[00:23:35] Speaker 02:
Page 8 of the Reply.

[00:23:38] Speaker 03:
That's right.

[00:23:39] Speaker 03:
And then page 8 of the Reply relies on Dr. Sewing's declaration at paragraphs 18 through 20.

[00:23:48] Speaker 03:
And paragraph 20 is where Figure 16 Prime is actually found.

[00:23:53] Speaker 03:
And that's found at Appendix 1845 through 47.

[00:23:58] Speaker 03:
And I just know that, you know, Appellee said that the board did not rely on figure 16, but at page 15 of Appellee's brief, they tout the fact that the board relied on ASC's argument about the multi-chip embodiment that does not have resin between chips, which is figure 16 prime from Dr. Sewing.

[00:24:15] Speaker 03:
So they did rely on it.

[00:24:17] Speaker 03:
It doesn't appear in the final written decision as Figure 16 Prime, but the fact that the board relied on paragraphs 18 through 20 of Dr. Seuling's declaration is indicative that they did rely on it.

[00:24:30] Speaker 03:
And as I said, we certainly didn't proffer this construction.

[00:24:34] Speaker 03:
This was something that Appellee and Dr. Seuling provided.

[00:24:37] Speaker 03:
And it's contrary to what actual figure 16 says, which is regardless of the molding method you use, whether it's a single cavity mold, a multi-cavity mold, you conduct this resin molding operation on the multi-chip figure 8 lead frame.

[00:24:55] Speaker 03:
And the resultant product is what you see.

[00:24:57] Speaker 05:
What if you make up a statement at the top of column three in the summary of the invention?

[00:25:02] Speaker 05:
Where it says, preferably, the packaging layer may be formed in a manner that's better covered to stand forth in the entire life, but allows part of the leaf frame to be exposed?

[00:25:15] Speaker 03:
I see that part, Your Honor.

[00:25:17] Speaker 03:
Our first response is that it's really referring to the bottom of the leaf frame, which is the portion of the electrodes that will actually be surface mounted once the final products are diced.

[00:25:29] Speaker 05:
How do we know it's referring exclusively to the bottom surface of the leaf frame when it says allow part of the leaf frame to be exposed?

[00:25:37] Speaker 03:
They explain it in the detailed description at column four.

[00:25:42] Speaker 03:
If you look at column four starting at about line 54,

[00:25:46] Speaker 03:
you'll see that there's a discussion there about how the exposed portion is the bottom that allows the final semiconductor products to be surface mounted on a printed circuit board or some other circuitry after it's finalized.

[00:26:00] Speaker 05:
So it's necessary for the bottom surface to be exposed, right?

[00:26:03] Speaker 03:
To make electrical connection, that's correct.

[00:26:05] Speaker 05:
Right.

[00:26:05] Speaker 05:
So then why would the top of concrete sink preferably?

[00:26:09] Speaker 03:
Well, I think that's... It would say necessarily.

[00:26:13] Speaker 05:
What it's really looking for is whether or not there are two stamped portions and whether or not those stamped portions... Do you understand though why the fact that it says preferably, it seems like in a preferred embodiment, we're going to have part of the lead frame be exposed.

[00:26:30] Speaker 05:
But really for this semiconductor device to function,

[00:26:35] Speaker 05:
It's not just in a preferred environment.

[00:26:37] Speaker 05:
It's in every environment.

[00:26:38] Speaker 05:
You have to have the bottom surface of everything.

[00:26:42] Speaker 05:
So I guess my point is that the usage of the term preferably really seems to be

[00:26:48] Speaker 05:
not talking about the bottom surface.

[00:26:52] Speaker 03:
I agree with you that it does seem to have that implication, but I don't believe that there was any desire based on anything else in this patent to not have a continuous resin layer over all the chips in the multi-chip intermediate product.

[00:27:07] Speaker 05:
What are we to make of figure 14 in all of these figures that show exposure of the leaf frame on the ends of these various

[00:27:15] Speaker 03:
Again, Your Honor, I believe that's focusing on the final product, and it's very difficult to make determinations about the method of production just from the final product alone, because there could be additional... So the final product alone would be what?

[00:27:31] Speaker 05:
somehow have etched away some of the resin layer?

[00:27:35] Speaker 03:
It's actually part of the cutting operation.

[00:27:37] Speaker 03:
If you look at the cutting operation and the explanation of how that happens, what essentially happens is there's a wider cut that comes down and cuts through the

[00:27:49] Speaker 03:
resin layer, and then the thinner portion comes down and cuts through the remainder and the lead frame, and what you get is this cut that looks like an etching, but it's not an etching, it's a mechanical cutting.

[00:28:00] Speaker 05:
Does the pattern somewhere explain that?

[00:28:02] Speaker 03:
Yes, it does.

[00:28:03] Speaker 05:
The second cut somehow creates the appearance of an etch?

[00:28:07] Speaker 03:
Yes, it does.

[00:28:08] Speaker 03:
I'll see if I can find that.

[00:28:21] Speaker 03:
So if you look, I believe, at figure 17B, you'll see that the cut is being made, and you'll see that there's a cut in the lead frame, and that's the second cut.

[00:28:33] Speaker 03:
There's already been a cut through the resin material, and so you're using the wider diamond cutter to that, I think you call it an etching.

[00:28:45] Speaker 03:
I don't believe it's an etching.

[00:28:46] Speaker 03:
I believe it's a cutting to give you that step in figure 14's lead frame.

[00:28:51] Speaker 03:
And I believe that 17B is actually discussed with respect to that.

[00:28:58] Speaker 03:
The figure 15 is the final product that results from cutting figure 16's intermediate product using the cutting of figure 17B.

[00:29:16] Speaker 03:
And if you take a look at

[00:29:21] Speaker 03:
It's column 7, lines, looks like about 48.

[00:29:27] Speaker 03:
It says, as illustrated, the protrusions 13, this is the protrusions on figure 15.

[00:29:32] Speaker 03:
The protrusions 13 are exposed at the bottom surface 50 of the resin package 5 for electrical connection.

[00:29:39] Speaker 03:
The printed circuit board, outer projections 15A, see figure 17B, for example, exposed the first surface of the package 5.

[00:29:51] Speaker 03:
So again, it's a final product.

[00:29:57] Speaker 03:
And if you look at the final product to a certain extent, you can determine some of the processing that goes on it.

[00:30:02] Speaker 03:
In this case, you can't always determine whether or not that's what the final product is going to look like.

[00:30:07] Speaker 03:
There can be some additional processing that can be done after the dicing step.

[00:30:14] Speaker 03:
But the dicing step, and really,

[00:30:18] Speaker 03:
Intermediate product of figure 16 is really what separates this invention from prior art if you go back to Column one that talks about a prior art system in that system in that prior system They can talk about it from putting on a single chip, but here they don't talk about a resin layer They say there's a resin material, but they don't say there's a resin layer if you look at the

[00:30:43] Speaker 03:
Claimed invention the difference is is you're applying a resin layer across all the chips in between them And part of that is for purposes of efficiency you can you can you have Thank you Yeah, sorry your honor I will Very good.

[00:31:05] Speaker 03:
Thank you your honor

[00:31:16] Speaker 02:
contribute on the question of ownership.

[00:31:19] Speaker 04:
Thank you, Your Honor.

[00:31:20] Speaker 04:
And yes, may I please support Stephen Rizzi for appelling the advanced semiconductor engineering.

[00:31:26] Speaker 04:
So just to be clear, my client was not involved in any of the district court proceedings.

[00:31:32] Speaker 04:
where the patent was asserted.

[00:31:34] Speaker 04:
So we're a little bit in the dark.

[00:31:36] Speaker 04:
But Mr. Wright did agree to share some of the relevant documentation, including the full form of the assignment agreement and some of the correspondence.

[00:31:45] Speaker 04:
And based on that, I'm in full agreement with Mr. Wright that I don't see any real concern as to any jurisdictional or other impediment, either with regard to proceeding

[00:32:01] Speaker 04:
before the board without Rome or at this court.

[00:32:05] Speaker 04:
So I certainly haven't had any direct correspondence with Rome myself nor has my client.

[00:32:11] Speaker 04:
I did confirm, though, that Rome was provided with at least instructive notice of the IPR through the filing in the official gazette, which did take place in January 5, 2021, volume 1482, number one.

[00:32:27] Speaker 04:
So that does provide constructive notice.

[00:32:29] Speaker 04:
And although there is no provision in the rules for constructive notice of an IPR per se, there is a provision for constructive notice of ex parte re-exam, which is MPEP 2230.

[00:32:45] Speaker 04:
And that explicitly provides that in instances where it's not possible to deliver

[00:32:52] Speaker 04:
to the patent owner notice for whatever reason, publishing in the official gazette is considered destructive notice.

[00:32:59] Speaker 04:
So I offer that because it reflects the PTO's longstanding view that while it is, of course, preferable for all interested parties to be part of an IPR, the PTO has always taken the position that it may proceed even without the patent owner, certainly in the next part of the exam.

[00:33:21] Speaker 02:
And has the board said that in an IPR?

[00:33:25] Speaker 04:
So yes, and these may be some of the decisions you alluded to.

[00:33:28] Speaker 02:
Well, I guess I'm thinking of one.

[00:33:39] Speaker 02:
patent owner in front of it to dismiss the petition, which I don't think would make you happy.

[00:33:45] Speaker 04:
No, I'm not aware of that case.

[00:33:48] Speaker 04:
So just to take a step back, and I will address a couple of the IPR, the PTAB decision we found.

[00:33:58] Speaker 04:
And this court, of course, never directly addressed the issue, any kind of issue concerning necessary or required parties in the PTAB from a patent owner perspective.

[00:34:07] Speaker 04:
Of course, it comes up a lot.

[00:34:09] Speaker 04:
But I will submit that there are some relevant decisions from the Supreme Court and this Court that do bear on the issue, starting with the oil state case, which recognized that a patent is a public

[00:34:25] Speaker 04:
franchise and the nature of an IPR is an administrative agency reconsidering its decision to grant that public franchise in the first instance.

[00:34:35] Speaker 02:
So clearly implicating the public interest in IPR as opposed to... Would I be right in assuming that you do not have a Supreme Court or other case that says property right can be taken away by the agency without giving notice to the owner of the property?

[00:34:54] Speaker 04:
I do not have a case that stands for that.

[00:34:56] Speaker 04:
That's the issue.

[00:34:57] Speaker 04:
Yes.

[00:34:58] Speaker 04:
Yes.

[00:34:58] Speaker 04:
And I guess the question is, what is notice?

[00:35:01] Speaker 04:
Is constructive notice sufficient?

[00:35:04] Speaker 04:
Is actual notice required?

[00:35:06] Speaker 04:
But again, your question does presume that there was a property right there.

[00:35:10] Speaker 04:
Everything we've seen indicates that there was no property right remaining in which Rome had an interest.

[00:35:18] Speaker 04:
beyond retention of non-exclusive rights in the patent, which, of course, don't rise to the level of the ability to assert the patent.

[00:35:28] Speaker 04:
And I will say also that the fact that they explicitly opted not to participate in the Bell Semiconductor, I'm telling you, in the microchip case, where, of course, validity, among other issues, was also before the court.

[00:35:47] Speaker 04:
It does certainly indicate strongly that there was no reason for them to reach a different decision for purposes of the IPR.

[00:35:57] Speaker 04:
Everything I've seen certainly confirms that they never believed they had any remaining interest that rose to the level of something that would require them to be a party, even to a district court litigation under a Rule 19B analysis.

[00:36:13] Speaker 04:
or certainly in an IPR where I would submit the standard is lower because of the public interest

[00:36:23] Speaker 04:
the significance of the public interest in IPR and the fact that the rights that are impacted are more limited as opposed to in a district court case where there is no Article III, there is no Section 281 that governs who has the right to actually enforce the patent in the IPR.

[00:36:44] Speaker 04:
It's just a question of

[00:36:46] Speaker 04:
revisiting the original grant and to your point of Toronto, you know, was there an issue because, you know, sufficient notice wasn't provided to all potential stakeholders?

[00:36:58] Speaker 02:
And just to repeat something, I think at least the vertitude before us, it is clear, I take it, from what I think Mr. Wright said, that Rome knows about this now,

[00:37:28] Speaker 02:
declared right for canceling.

[00:37:33] Speaker 02:
And I want to be a partner of that to try to prevent it.

[00:37:37] Speaker 04:
Well, I have had no direct contact with them.

[00:37:39] Speaker 04:
But I certainly have no reason to question what we heard from Mr. Wright that they have been explicitly put on actual notice of the status of both the IPR and the current appeal.

[00:37:57] Speaker 01:
Turn to the merits.

[00:37:58] Speaker 04:
OK, thank you.

[00:38:00] Speaker 04:
So on the merits here, the board properly construed the language of claim one to the extent necessary to determine that the Matsuo prior art reference teaches each of the steps of the claim method, which is a finding of fact that patent owner does not dispute based on the plain meaning of the claim language.

[00:38:21] Speaker 04:
Matsuo is really spot on with respect to claim one.

[00:38:25] Speaker 04:
It not only discloses the same.

[00:38:27] Speaker 00:
Do you have a view on the claim construction disputes raised on appeal?

[00:38:31] Speaker 04:
I'm sorry?

[00:38:32] Speaker 04:
Do you have a view on the claim construction disputes?

[00:38:34] Speaker 00:
You were talking about substantial evidence, I think.

[00:38:37] Speaker 04:
Yes.

[00:38:37] Speaker 04:
Yes.

[00:38:37] Speaker 04:
So certainly on claim construction, there really was no reason to deviate from the plain meaning of the language of the claim.

[00:38:45] Speaker 04:
This is a clear, well-drafted claim that was intentionally drafted.

[00:38:50] Speaker 04:
to not be limited to processing of intermediate products that had multiple chips, because there was simply no reason to.

[00:38:58] Speaker 04:
It has no bearing on what the novelty of the claim method is, which is solely about making two cuts in the lead frame to separate the product from the lead frame.

[00:39:12] Speaker 04:
So whether there is one or more products within that intermediate product has no bearing whatsoever

[00:39:19] Speaker 04:
on the utility or the application of the claim method.

[00:39:25] Speaker 04:
There's also no dispute that whether or not there's one product, one chip in the intermediate product or more, in order to create

[00:39:35] Speaker 04:
final product or more than one final product if there's multiple those cuts have to be made because you know the nature of a lead frame semiconductor product is that the lead frame itself acts as a support structure during the assembly process so it's not until you actually make those cuts that you actually create the leads because they're all connected together all shorted as part of the metallic lead frame so

[00:40:02] Speaker 04:
Again, whether you're making one product, one-to-one product, there has to be a step of cutting the lead frame to remove that one or more products from the lead frame.

[00:40:14] Speaker 04:
The notion that clear, unambiguous plain language of a semiconductor chip should be construed to exclude a single chip, I would submit is unprecedented and not supported by anything in the intrinsic record

[00:40:30] Speaker 04:
that even come close to a disclaimer or lexicon.

[00:40:35] Speaker 00:
I think their argument is that the term intermediate product should be understood to be more than one chip.

[00:40:42] Speaker 00:
How do you respond to that?

[00:40:44] Speaker 04:
The claim language is tracked in the summary of the invention, which consistently describes, and again, it's an intermediate product.

[00:40:53] Speaker 04:
It's not a term of art.

[00:40:56] Speaker 04:
It's essentially, I would submit, it's defined in the claim itself to include only what's specified in the claim, which is a chip.

[00:41:03] Speaker 04:
the lead frame and the molding compound, or the packaging layer.

[00:41:09] Speaker 04:
So the claim itself clearly specifies what is meant by an intermediate product.

[00:41:14] Speaker 04:
That language is mirrored in the summary of the invention, which

[00:41:20] Speaker 04:
characterizes pretty much the same description in the claim of those steps as the present invention, again, with deliberately excluding any requirement for there to be multiple chips in the intermediate product.

[00:41:35] Speaker 04:
The fact that the specific examples in the patent include multiple chips doesn't rise to the level of reading that limitation into the claim.

[00:41:49] Speaker 04:
for the reasons I mentioned.

[00:41:51] Speaker 04:
I would also submit that there really even were the court to conclude that intermediate product required multiple chips.

[00:42:00] Speaker 04:
There's no serious dispute that the Matsuo reference discloses an intermediate product with multiple chips.

[00:42:11] Speaker 04:
That is true.

[00:42:12] Speaker 04:
The board did not make the finding.

[00:42:14] Speaker 04:
We certainly raised it.

[00:42:16] Speaker 04:
It was not refuted in their briefing on appeal.

[00:42:19] Speaker 04:
They really don't even address it.

[00:42:23] Speaker 04:
But we don't think that the absence of a specific finding on that would preclude the court from

[00:42:29] Speaker 04:
determining that essential evidence.

[00:42:32] Speaker 02:
I think my takeaway from Mr. Wright's presentation, and you'll have a chance to correct me, is something like this.

[00:42:42] Speaker 02:
When you read the specification, overwhelmingly it indicates that what this patent is about is a process of forming a

[00:42:57] Speaker 02:
an intermediate product in which there are multiple chips.

[00:43:01] Speaker 02:
And at the end of the day, you cut them into individualized pieces.

[00:43:07] Speaker 02:
But the intermediate stage has always more than one chip in this resin.

[00:43:18] Speaker 02:
And the cutting into individualized ones is the last stage, and there's nothing

[00:43:29] Speaker 02:
being identified for solution and solved about an intermediate product that is individualized.

[00:43:39] Speaker 02:
I think he can see there's language, summary of the invention, which is a problem for him.

[00:43:44] Speaker 02:
But in one way or another, if you think about what the patent as a whole is about, it's about this

[00:43:53] Speaker 02:
intermediate stage of multiple chips.

[00:43:56] Speaker 02:
Can you address that?

[00:43:57] Speaker 04:
Absolutely.

[00:43:58] Speaker 04:
So I would take issue with that characterization, what the patent's about.

[00:44:02] Speaker 04:
There's actually two different aspects to the patent.

[00:44:04] Speaker 04:
One,

[00:44:05] Speaker 04:
is the subject matter of claim one.

[00:44:07] Speaker 04:
And the point of novelty there is clearly the use of two cutting steps to cut the lead frame.

[00:44:13] Speaker 04:
And I will also note that claim one doesn't actually say that the step requires separating a product or creating an individual product.

[00:44:22] Speaker 04:
All it says is cutting a lead frame.

[00:44:25] Speaker 04:
And in terms of the

[00:44:29] Speaker 04:
the role that intermediate product plays in this method claim, it's really environment, it's the work piece upon which the method acts.

[00:44:39] Speaker 04:
Everything in the record, every piece of testimony from both experts is consistent.

[00:44:46] Speaker 04:
The method is agnostic as to whether or not you're cutting one product or multiple products, whether there's more than one product in the lead frame.

[00:44:56] Speaker 04:
It's all about the benefits of making the

[00:44:59] Speaker 04:
two cuts in the lead frame, which are described as reducing the problem of burrs that can impact surface matter.

[00:45:08] Speaker 04:
It also has nothing to do with efficiency, and that's where there's some confusion, because the second aspect of the patent, which really is not an issue on this appeal, is how you make the lead frame itself.

[00:45:17] Speaker 04:
And that's where the patent is clear in terms of talking about the reported benefits and efficiency and cost reduction by eliminating a chemical etching step as part of the method of making the lead frame using solely mechanical means to do the metal forming of the lead frame itself.

[00:45:35] Speaker 04:
That's what the patent points to, if you look at the disclosure, as resulting in improved efficiency.

[00:45:41] Speaker 04:
There's no dispute that manufacturing lead frames in these array or batches was well known.

[00:45:49] Speaker 04:
I mean, that's been commercially known forever.

[00:45:52] Speaker 04:
The patent acknowledges that.

[00:45:54] Speaker 04:
So claiming that certainly was not anything new.

[00:45:58] Speaker 04:
That's not the source of any additional efficiencies to be gained.

[00:46:02] Speaker 04:
That's all associated

[00:46:03] Speaker 04:
with how the lead frame is made, which is not at all the subject of claim one.

[00:46:09] Speaker 04:
And the fact that manufacturing lead frame products in bulk or mass producing using a multi-chip intermediate product was well known and commercially performed for many years, that's not a reason to sort of read that into the claim.

[00:46:30] Speaker 04:
and somehow incorporate commercial practicalities into the claimed method.

[00:46:37] Speaker 04:
The method has application regardless of whether you're using it for commercial production.

[00:46:44] Speaker 04:
And I think that is clearly reflected in the intentional language that was chosen not to limit intermediate product to multiple chips.

[00:46:53] Speaker 04:
But again, even if

[00:46:55] Speaker 04:
If the court were to do that, I do just want to highlight there was a question asked about figure 14 and the example chips that show the lead frame protruding from the sides of the packaging material.

[00:47:10] Speaker 04:
That is not anything that's described as the result of the cutting process, as Mr. Wright indicated.

[00:47:16] Speaker 04:
I just want to clear that up.

[00:47:19] Speaker 04:
The only way that the patent teaches that

[00:47:21] Speaker 04:
that particular type of product can be formed is in the example where what's done is what's called individually molding of multiple packages on the lead frame.

[00:47:33] Speaker 04:
So there's two ways to do it.

[00:47:34] Speaker 04:
This is described in column six, starting at line 27.

[00:47:38] Speaker 04:
You either have a single mold cavity where everything goes in to the same cavity, and when you put the mold in, you get one big blob layer.

[00:47:47] Speaker 04:
That's what's shown in figure 16.

[00:47:50] Speaker 04:
very clearly the patent describes, there's no dispute about this, individual molding cabinets.

[00:47:55] Speaker 04:
So a little, basically a little cover for each chip so that the result is not this continuous layer, but separate, even in a multi-chip embodiment, individual, what's called mold caps on each of the separate chips.

[00:48:09] Speaker 01:
Like a muffin pan.

[00:48:11] Speaker 04:
Muffin pan, that's a good analogy.

[00:48:13] Speaker 04:
And the patent clearly says both of those are intermediate products.

[00:48:17] Speaker 04:
which necessarily means both of those have packaging layers.

[00:48:21] Speaker 04:
So the patent itself teaches very clearly that packaging layer is not, even in the context of a multi-chip intermediate product, packaging layer need not be between chips, it need not be continuous.

[00:48:33] Speaker 04:
It's still a packaging layer, even if it's a muffin pan type of, and that's all, just to be clear.

[00:48:39] Speaker 04:
Page 23 of the final written decision, which Mr. Wright asserts was the board improperly relying on

[00:48:47] Speaker 04:
this mock-up of figure 16.

[00:48:49] Speaker 04:
I disagree that the board relied on that, but in any event, I wouldn't acknowledge that it was anyway improper, because all that figure did was provide a visual aid for what is described, the muffin pan version of the intermediate product.

[00:49:06] Speaker 04:
And all it did was show that when you take a cross-section of that, of course you're going to see gaps in the layer between the chips.

[00:49:12] Speaker 04:
There's no dispute about that.

[00:49:14] Speaker 04:
And both experts acknowledged that.

[00:49:17] Speaker 04:
That is the version that will result in the end product shown in Figure 14, because you're not having to cut through the resin.

[00:49:26] Speaker 04:
You're only having to cut through the leach wrap.

[00:49:29] Speaker 01:
Do you have anything else?

[00:49:33] Speaker 01:
If not, I think we have room.

[00:49:35] Speaker 04:
Thank you.

[00:49:35] Speaker 04:
And we would urge the court to affirm the board's decision.

[00:49:41] Speaker 01:
Thank you.

[00:49:41] Speaker 01:
Mr. Ray.

[00:49:42] Speaker 03:
Thank you, Your Honor.

[00:49:44] Speaker 03:
A couple of points that I think are just not correct in what you just heard.

[00:49:49] Speaker 03:
First off, this idea that there is a figure 16 prime intermediate product that has spaces between the chips is contrary to what the patent says.

[00:50:02] Speaker 03:
The patent specifically says that this is column 8, line 6.

[00:50:06] Speaker 03:
The thus obtained intermediate product generally gives a sectional view as shown in figure 16.

[00:50:12] Speaker 03:
In this figure, reference number, reference number five prime refers to the resin layer formed in the package forming operation.

[00:50:19] Speaker 03:
If you go back to column six, this is where the actual discussion of the molding occurs, column six starting at about line 28.

[00:50:27] Speaker 03:
It says in the resin packaging step, subsequent to the lead frame cutting step, you have either a single molding cavity or multiple molding cavities.

[00:50:38] Speaker 03:
You put in the thermo setting resin,

[00:50:40] Speaker 03:
and you'll see down at the bottom you get a molded intermediate product.

[00:50:45] Speaker 03:
It doesn't say you get a different molded intermediate product than figure 16 in column 8.

[00:50:52] Speaker 03:
It says that you get a cross-sectional view of figure 16 regardless of which type of mold.

[00:51:00] Speaker 03:
It may be a muffin tin, but if you fill each one of those muffin tins too much, you're going to have muffin on top of those individually molded parts, and you're still going to have a continuous layer of resin, regardless of the type of molding.

[00:51:13] Speaker 03:
The patent tells us that.

[00:51:14] Speaker 03:
Another point is

[00:51:16] Speaker 03:
Mr.. Rizzi says that you know you're looking at the summary of the invention in the summary of the invention the only difference over the prior is the two-step cutting process That's not true.

[00:51:26] Speaker 03:
That's the two-step cutting process and the use of the multi-chip lead frame or in the intermediate product of figure 16 and the key to that is if you look at claim one of

[00:51:39] Speaker 03:
It doesn't talk about just putting a chip on a lead frame.

[00:51:43] Speaker 03:
It talks specifically about forming a packaging layer.

[00:51:46] Speaker 03:
And it specifically talks about cutting the intermediate product, not just the lead frame.

[00:51:52] Speaker 03:
So two key differences in the claim are not in the summary of the invention.

[00:51:56] Speaker 03:
What do we make of that?

[00:51:57] Speaker 03:
Those terms have meaning.

[00:51:59] Speaker 03:
Why does intermediate product have to be cut rather than just the lead frame?

[00:52:03] Speaker 03:
And the reason is, is because the intermediate product matters.

[00:52:06] Speaker 03:
And why do you have to have a layer of the packaging resin put on top?

[00:52:12] Speaker 03:
Why don't you just say package, as it does in the Summer of the Invention?

[00:52:16] Speaker 03:
And the reason is because the packaging layer is defined in figure 16 as continuous, and that's 5.1.

[00:52:24] Speaker 03:
So it's very important because it's not just cutting a lead frame to separate a single chip from a single, excuse me, cutting a lead frame to separate just a single chip from the lead frame, as Mr. Rizzi said.

[00:52:36] Speaker 03:
Everything in the patent points to multi-chip technology, multi-chip processing, and creating this 16 intermediate product, which is distinguishable over anything in the prior art.

[00:52:51] Speaker 03:
That's the key to the invention.

[00:52:53] Speaker 03:
And for whatever reason, this notion of a single chip process is just not, it's clearly erroneous.

[00:53:00] Speaker 03:
It's not supported factually in the specification.

[00:53:03] Speaker 03:
And figure 16 prime is contrary to what the patent teaches.

[00:53:08] Speaker 03:
That cannot be correct.

[00:53:10] Speaker 03:
It can't be substantial evidence of on which the board's final written decision can rest.