SAMSUNG ELECTRONICS CO., LTD., MICRON TECHNOLOGY, INC., SK HYNIX INC., Appellants
ELM 3DS INNOVATIONS, LLC, Appellee
Appeals from the United States Patent and Trademark Office,
Patent Trial and Appeal Board in Nos. IPR2016-00386,
IPR2016-00387, IPR2016-00388, IPR2016-00390, IPR2016-00391,
IPR2016-00393, IPR2016-00394, IPR2016-00395, IPR2016-00687,
IPR2016-00691, IPR2016-00708, IPR2016-00770, IPR2016-00786.
B. Cordell, Fish & Richardson PC, Washington, DC, argued
for all appellants. Appellants Micron Technology, Inc., SK
Hynix Inc. also represented by Christopher Dryer, Timothy W.
Riffe, Robert Andrew Schwentker, Adam Shartzer; Craig E.
Countryman, Ryan Lynn Frei, Oliver Richards, San Diego, CA.
Modi, Paul Hastings LLP, Washington, DC, for appellant
Samsung Electronics Co., Ltd. Also represented by Phillip W.
Citroen, Allan Soobert.
William Meunier, Mintz, Levin, Cohn, Ferris, Glovsky and
Popeo, P.C., Boston, MA, argued for appellee. Also
represented by Kevin Amendt, Sandra Badin, Matthew Stephen
Galica, Michael Newman, Michael Timothy Renaud, James M.
Moore, Reyna, and Chen, Circuit Judges.
Electronics Co., Ltd., Micron Technology, Inc., and SK Hynix
Inc. (collectively, "Petitioners") appeal from the
final written decisions of the Patent Trial and Appeal Board
in thirteen inter partes reviews holding that they did not
establish the unpatentability of 105 claims across eleven
patents ("Challenged Patents"). Given that each
challenged claim requires a low-tensile-stress dielectric,
and substantial evidence supports the Board's finding
that a person of ordinary skill in the art would not have
reasonably expected success in combining the prior art to
meet this limitation, we affirm.
Elm 3DS Innovations LLC ("Elm") is the owner of the
Challenged Patents,  which share a specification and all relate
to "stacked integrated circuit
memory."'672 patent at 1:7-8. The Challenged
Patents are the subject of co-pending litigation between Elm
Board instituted inter partes review based on thirteen
petitions filed by Petitioners. Among others not at issue on
appeal, the petitions challenged the following claims: claims
17-18, 22, 84, 95, 129-32, 145-46, and 152 of the '672
patent (IPR2016-00386); claims 1-2, 8, 14, 31- 32, 44, 46,
and 52-54 of the '778 patent (IPR2016-00387); claims
10-12, 18-20, 60-63, 67, 70-73, and 77 of the '239 patent
(IPR2016-00388 and IPR2016-00393); claims 1-3, 30-31, 33,
40-41, and 44 of the '542 patent (IPR2016-00390); claims
30, 34, 36, 135-138, and 147 of the '862 patent
(IPR2016-00391); claims 36 and 51 of the '617 patent
(IPR2016-00394); claims 1, 10-11, and 13-14 of the '732
patent (IPR2016-00395); claims 1, 7, 17-18, and 33 of the
'119 patent (IPR2016-00687); claims 1 and 20-23 of the
'004 patent (IPR2016-00691); claims 1, 12-13, 24, 36-38,
53, 83, 86-87, and 132 of the '499 patent (IPR2016-00708
and IPR2016-00770); and claims 58, 60-61, and 67 of the
'570 patent (IPR2016-00786). Each ground challenging the
claims was based on obviousness and asserted either U.S.
Patent No. 5, 202, 754 ("Bertin") or a 1996 article
by Kee-Ho Yu, et. al., titled "Real-Time Microvision
System with Three-Dimensional Integration Structure"
("Yu") as the primary reference in combination
with, relevant here, U.S. Patent No. 5, 354, 695
Board held that Petitioners had not met their burden of
demonstrating that the claims were unpatentable.
Specifically, it found that the prior art did not disclose
the "substantially flexible" limitation. It also
found that Petitioners did not demonstrate a motivation to
combine Bertin or Yu with Leedy or a reasonable expectation
of success in doing so. Petitioners timely filed notices of
appeal, and the appeals were consolidated. We have
jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).
review the Board's constructions based on intrinsic
evidence de novo and its factual findings based on extrinsic
evidence for substantial evidence." HTC Corp. v.
Cellular Commc'ns Equip., LLC, 877 F.3d 1361, 1367
(Fed. Cir. 2017). The Board construes claims in an unexpired
patent according to their broadest reasonable interpretation
in light of the specification. 37 C.F.R. § 42.100(b)
(2017). Claims of an expired patent are construed
according to the standard applied by district courts. See
In re CSB-Sys. Int'l, Inc., 832 F.3d 1335, 1341
(Fed. Cir. 2016) (referencing Phillips v. AWH Corp.,
415 F.3d 1303 (Fed. Cir. 2005) (en banc)). While some patents
were expired at the time of the Board's final written
decision and others were not, the parties agree that the
different claim construction standards do not impact the
outcome. Appellants' Br. 44; Appellee's Br. 41. The
parties have not contested the Board's application of the
Phillips claim construction standard.
challenged claims except for claims 1 and 14 of the '778
patent use "substantially flexible" in at least one
of two ways. The first is to modify the term
"semiconductor substrate." Claim 129 of the
'672 patent illustrates the use in this context (emphasis
integrated circuit structure comprising:
a first substrate comprising a first surface supporting
a substantially flexible semiconductor second
substrate comprising a first surface and a second
surface at least one of which supports interconnect contacts,
wherein the second surface is opposite the first surface and
wherein the second surface of the second substrate is formed
by removal of semiconductor material from the second
substrate and is smoothed or polished after removal of the
semiconductor material; and
conductive paths between the interconnect contacts supported
by the first surface of the first substrate and of the
interconnect contacts ...