Institute of Microelectronics, Chinese Academy of Sciences

Patent Trials and Appeals Board

Jun 19, 2020

IPR2019-00834 (P.T.A.B. Jun. 19, 2020)

Trials@uspto.gov Paper 14
Tel: 571-272-7822 Date: June 19, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

INTEL CORPORATION,
Petitioner,

v.

INSTITUTE OF MICROELECTRONICS,
CHINESE ACADEMY OF SCIENCES,
Patent Owner.

IPR2019-00834
Patent 9,070,719 B2

Before DONNA M. PRAISS, JO-ANNE M. KOKOSKI, and
CHRISTOPHER M. KAISER, Administrative Patent Judges.

KAISER, Administrative Patent Judge.

DECISION
Denying Petitioner’s Request on Rehearing of
Decision Denying Institution of Inter Partes Review
37 C.F.R. § 42.71(d)

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INTRODUCTION
Intel Corporation (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
requesting an inter partes review of claims 1–3, 6, and 7 of U.S. Patent
No. 9,070,719 B2 (Ex. 1001, “the ’719 patent”) on four asserted grounds:
Claims 35 U.S.C. § Reference(s)/Basis
1–3, 6 103(a) Okuno PCT,1 Liaw2
7 103(a) Okuno PCT, Liaw, Kim3
1–3, 6 103(a) Okuno PCT, Chang4
7 103(a) Okuno PCT, Chang, Kim

Petitioner supported its challenges with the Declaration of Dr. Scott
Thompson, dated March 19, 2019 (Ex. 1045).
Institute of Microelectronics, Chinese Academy of Sciences (“Patent
Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”).
In the Decision on Institution (Paper 11, “Decision” or “Inst. Dec.”),
we exercised our discretion under 35 U.S.C. §§ 314(a) and 325(d) to deny
institution of inter partes review. Inst. Dec. 7–21.
Petitioner filed a Request for Rehearing (Paper 12, “Req. Reh’g”)
seeking rehearing of our Decision. We have considered Petitioner’s Request

1 WO 2008/114341 A1, published Sept. 25, 2008 (Ex. 1040, English
translation provided as Ex. 1041).
2 US 9,362,290 B2, issued June 7, 2016 (Ex. 1003).
3 US 2006/0175669 A1, published Aug. 10, 2006 (Ex. 1010).
4 US 7,335,583 B2, issued Feb. 26, 2008 (Ex. 1004).
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for Rehearing and, for the reasons set forth below, we deny the requested
relief.
STANDARD OF REVIEW
A party requesting rehearing bears the burden of showing that a
decision should be modified. 37 C.F.R. § 42.71(d) (2018). The party must
identify all matters it believes the Board misapprehended or overlooked, and
the place where each matter was addressed previously in a motion, an
opposition, or a reply. Id. When rehearing a decision on petition, we review
the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of
discretion occurs when a “decision was based on an erroneous conclusion of
law or clearly erroneous factual findings, or . . . a clear error of judgment.”
PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567
(Fed. Cir. 1988) (citations omitted).
DISCUSSION
Petitioner first filed a petition challenging the ’719 patent in
IPR2018-01574 (“the first petition”) on September 18, 2018. IPR2018-
01574, Paper 2. We denied institution in that proceeding on March 29,
2019.5 IPR2018-01574, Paper 18. Before we denied institution on the first
petition, Petitioner filed the Petition in this proceeding, also challenging the
’719 patent. Pet. 61 (showing filing date of March 19, 2019). We denied
institution in this proceeding, concluding that the overlap between the first
petition and this Petition warranted exercising our discretion to deny

5 Petitioner requested rehearing of our denial of institution on the first
petition. IPR2018-01574, Paper 19 (requesting rehearing generally),
Paper 20 (requesting rehearing by Precedential Opinion Panel).
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institution under both 35 U.S.C. §§ 314(a) and 325(d). Inst. Dec. 2–27.
Petitioner now requests rehearing of our Decision here, arguing that we
abused our discretion in four respects. Req. Reh’g 3–14. We consider each
of Petitioner’s arguments below.
A. Alleged Error by Perpetuating Alleged Errors in IPR2018-01574
Petitioner first argues that, “[b]y overlooking the merits of
[Petitioner]’s second (-834) petition addressing Patent Owner’s
mischaracterizations, the Board perpetuated its earlier error [in denying
institution in IPR2018-01574].” Req. Reh’g 3–5. As explained in our
decision on Petitioner’s Request for Rehearing in IPR2018-01574, we are
not persuaded that we abused our discretion in any respect in denying
institution on the first petition. IPR2018-01574, Paper 23. Accordingly, we
do not find this argument persuasive of any abuse of discretion here.
B. Alleged Error in Analysis Under 35 U.S.C. § 325(d)
In part, we based our Decision in this proceeding on 35 U.S.C.
§ 325(d). Inst. Dec. 7–16. We evaluated each of the factors presented in
Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586,
Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first
paragraph) (“the Becton, Dickinson factors”). Id. We concluded that, “[o]f
the six Becton, Dickinson factors, the first factor weighs strongly in favor of
denying institution, the third and fifth factors weigh somewhat in favor of
denying institution, the second and fourth factors are neutral, and the sixth
factor weighs somewhat against denying institution.” Id. at 15–16.
Petitioner now argues that this analysis was flawed, with the fourth, fifth,
and sixth Becton, Dickinson factors all “strongly favor[ing] reaching the
merits and instituting” inter partes review. Req. Reh’g 5–11.
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1. Fourth Becton, Dickinson Factor: The extent of the overlap
between the arguments made during the earlier proceeding
and the manner in which Petitioner relies on the prior art or
Patent Owner distinguishes the prior art
On the fourth Becton, Dickinson factor, Petitioner focuses on the
presence in this proceeding of an argument not present in IPR2018-01574.
Req. Reh’g 7. Specifically, in the first petition, Petitioner argued that the
result recited in the challenged claims—the formation of a spacer
surrounding the gate line—would have been produced inherently by the
prior-art process of blanket deposition followed by anisotropic etching.
IPR2018-01574, Paper 2, 33–34, 49–52, 62–64. In this proceeding, in
addition to repeating the inherency argument, Petitioner argued that it would
have been obvious to use the prior-art process in such a way as to produce
spacers surrounding the gate line. Pet. 42–43, 56.
We are not persuaded that we abused our discretion in considering the
fourth Becton, Dickinson factor to be neutral. Petitioner is correct that the
Petition here presents an argument not present in the first petition. Id. In
addition, the Petition here presents another new argument regarding the issue
of whether the sidewall spacers of Okuno and Okuno PCT are implanted
into the substrate or built on top of that substrate. Id. at 37–38. But the
remainder of this Petition is nearly identical, in many cases in a word-for-
word fashion, to the relevant portions of the first petition. Compare Pet. 31–
60, with IPR2018-01574, Paper 2, 43–57, 72–87. In large part, the only
difference between the petitions is the replacement of “Okuno” with “Okuno
PCT.” Id. Thus, “the extent of the overlap” between the petitions is quite
extensive. We maintain our finding that, in light of the presence of two new
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arguments and large sections of repetitive arguments, the fourth Becton,
Dickinson factor is neutral.
2. Fifth Becton, Dickinson Factor: Whether Petitioner has
pointed out sufficiently how the Office erred in its evaluation
of the asserted prior art
On the fifth Becton, Dickinson factor, Petitioner argues that the
rehearing request and request for rehearing by the Precedential Opinion
Panel (“POP”) in IPR2018-01574 both point out how we erred in our
evaluation of the asserted art. Req. Reh’g 5–6. We disagree. Both
rehearing requests in IPR2018-01574 have been denied. IPR2018-01574,
Papers 21, 23. Thus, we maintain our finding that this factor weighs in favor
of denying institution. As we noted in the Decision, however, in light of
Petitioner’s filing of the present Petition before we issued our decision
denying institution in IPR2018-01574, we afford this factor little weight.
Inst. Dec. 14.
3. Sixth Becton, Dickinson Factor: The extent to which
additional evidence and facts presented in the Petition
warrant reconsideration of prior art or arguments
On the sixth Becton, Dickinson factor, Petitioner argues that there is
new evidence that warrants reconsideration of the art and arguments we
previously evaluated in IPR2018-01574. Req. Reh’g 8–11. In particular,
Petitioner discusses a declaration recently filed on Patent Owner’s behalf in
a related action pending in China. Id. This discussion, however, is
completely unsupported by any evidence of record, and the declaration was
not “presented in the Petition,” as the sixth factor requires.”6 Id.; Becton,

6 We recognize that Petitioner may intend the statement in its Request for
Rehearing seeking “permission to submit a complete copy of the
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Dickinson, IPR2017-01586, Paper 8 at 18. Thus, it does not persuade us to
change our evaluation of the sixth factor, which we treated as weighing
somewhat against denying institution.
4. Conclusion as to 35 U.S.C. § 325(d)
Petitioner does not challenge our evaluation of the first three Becton,
Dickinson factors, and we have not been persuaded to change our view on
the fourth, fifth, or sixth factors. The recent Board decision in Advanced
Bionics, LLC v. Med-El Electromedizinische Gerӓte GmbH, IPR2019-
01469, Paper 6 at 9–10 (Feb. 13, 2020) (precedential) explains how the
Becton, Dickinson factors are used in applying the two-part framework
under § 325(d). The first, second, and fourth factors provide guidance as to
whether the art and arguments presented in the petition are the same or
substantially the same as those previously presented to the Office, whereas
the third, fifth, and sixth factors “relate to whether the petitioner has
demonstrated a material error by the Office” in its prior consideration of
such. Id. Our analysis is consistent with this framework. Accordingly, we
are not persuaded that we abused our discretion in deciding to exercise our
discretion under § 325(d) to deny institution.
C. Alleged Error in Analysis Under 35 U.S.C. § 314(a)
In part, we based our Decision to deny institution on 35 U.S.C.
§ 314(a). Inst. Dec. 16–21. We evaluated each of the factors presented in

[declaration from the Chinese proceeding showing the change in position]
and an English translation as an exhibit in this proceeding” as a motion to
supplement the record. Req. Reh’g 10. But “[e]ach petition or motion must
be filed as a separate paper,” and “[a] motion will not be entered without
Board authorization.” 37 C.F.R. §§ 42.20(b), 42.22(a). Petitioner did not
comply with either of these requirements with respect to this request.
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General Plastic Industrial Co. v. Canon Kabushiki Kaisha, IPR2016-01357,
Paper 19 at 16 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i) (“the
General Plastic factors”). Id. We concluded that “[o]ther than the last
factor, each of the seven General Plastic factors weighs in favor of denying
institution under § 314(a), in some cases quite heavily.” Id. at 21. Petitioner
now argues that this analysis was flawed, with the third, fourth, fifth, and
sixth General Plastic factors “favor[ing] institution” of inter partes review.
Req. Reh’g 11–13.
1. Third General Plastic Factor: Whether at the time of filing of
the second petition the petitioner already received the patent
owner’s preliminary response to the first petition or
received the Board’s decision on whether to institute review
in the first petition
Petitioner argues that we erred in determining that the third General
Plastic factor supported denial of institution because Petitioner filed the
Petition in this proceeding before we issued our decision denying institution
in IPR2018-01574, and because Petitioner could not have anticipated the
arguments contained in Patent Owner’s preliminary response in IPR2018-
01574. Req. Reh’g 12–13.
Petitioner is correct that it filed this Petition before it had access to our
decision denying institution in the earlier proceeding. But the third General
Plastic factor does not require access to the earlier institution decision; it
requires only access to either that decision or the corresponding preliminary
response. Here, at the time Petitioner filed this Petition, it already had
received Patent Owner’s preliminary response in IPR2018-01574. This is
sufficient to satisfy the third factor.
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Petitioner argues that its access to the preliminary response in
IPR2018-01574 should not matter because it could not have anticipated the
argument Patent Owner made in that preliminary response. Req. Reh’g 12.
We disagree. The third General Plastic factor is not limited to decisions and
preliminary responses whose conclusions or arguments the Petitioner could
have anticipated.
Moreover, Petitioner argued in the first petition that the result claimed
in the ’719 patent (a spacer that surrounded the gate line) was inherently
produced by a process that involved blanket deposition followed by
anisotropic etching. IPR2018-01574, Paper 2 at 33 (describing blanket
deposition and anisotropic etching and noting that “[t]his procedure leaves
dielectric sidewall material on all vertical surfaces (or sidewalls) of the gate
line”). It should have been clear to Petitioner that any counterexample in
which blanket deposition followed by anisotropic etching failed to produce
spacers that surrounded the structure on which they were formed would be
fatal to this inherency argument. Schering Corp. v. Geneva Pharms., 339
F.3d 1373, 1377 (Fed. Cir. 2003) (Inherent disclosure occurs only “if that
missing characteristic is necessarily present, or inherent, in the single
anticipating reference.”); see Therasense, Inc. v. Becton, Dickinson & Co.,
593 F.3d 1325, 1332 (Fed. Cir. 2010) (“Inherency . . . may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.”).
Here, a counterexample was evident from the face of Liaw, which
Petitioner relies upon in asserted grounds in both petitions. Ex. 1003, 3:61–
4:6, Fig. 2C; see Pet. 31–51 (relying on Liaw); IPR2018-01574, Paper 30–
72 (relying on Liaw). Liaw describes a process of “blanket depositing a
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spacer layer,” then “anisotropically etching and removing the spacer
layer . . . from the horizontal surfaces of the structure” to leave “first
spacers.” Id. at 3:61–4:6. Those spacers, however, are not present on the
end faces of the dummy layers on which they were constructed, even though
those end faces are vertical surfaces that were covered by the spacer layer
before it was anisotropically etched. Id. at Fig. 2C. We are not persuaded
that when Petitioner filed the first petition, Petitioner could not have noticed
this counterexample or anticipated that Patent Owner would bring it to our
attention.
Thus, Petitioner’s access to the earlier preliminary response at the
time it filed its Petition here is sufficient to satisfy the third General Plastic
factor, and there is no additional requirement that Petitioner had to have
been able to anticipate the arguments therein. Even if this ability to
anticipate the arguments were required, we are not persuaded that Petitioner
could not have anticipated Patent Owner’s arguments in its earlier
preliminary response. Accordingly, we are not persuaded that we abused
our discretion in determining that the third General Plastic factor weighs in
favor of denying institution.
2. Fourth General Plastic Factor: The length of time that
elapsed between the time the petitioner learned of the prior
art asserted in the second petition and the filing of the
second petition
In deciding not to institute, we found that Petitioner should have
known of Okuno PCT, the reference it asserts here for the first time, no later
than when it filed its first petition, which was six months before Petitioner
filed this Petition. Inst. Dec. 19. We also noted evidence that Petitioner
likely knew of Okuno PCT no later than April 26, 2018, almost eleven
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months before it filed this Petition. Id. We considered a delay of either
length long enough to warrant a conclusion that the fourth General Plastic
factor weighs in favor of denying institution. Id.
Petitioner now argues that we erred in determining that the fourth
General Plastic factor supported denial of institution because Petitioner
“moved quickly to get the Board the best information possible, including its
new obviousness argument on the ‘surrounding’ issue.” Req. Reh’g 13. The
fourth factor does not, however, examine the reasons for any delay in filing a
second petition; it merely asks how long the delay was between when
Petitioner learned of the prior art asserted in the second petition and when
Petitioner filed the second petition. Accordingly, even if we were persuaded
that Petitioner had good reasons for waiting either six or eleven months to
make us aware of Okuno PCT, it would not change our conclusion with
respect to the fourth General Plastic factor.
3. Fifth General Plastic Factor: Whether the petitioner
provides adequate explanation for the time elapsed between
the filings of multiple petitions directed to the same claims
of the same patent
In our Decision, we noted Petitioner’s argument that its delay in filing
the present Petition should be excused because “it was not until Patent
Owner’s first Preliminary Response that it was possible to understand that
there was any confusion regarding the teachings of Okuno,” meaning that “it
was not until that date that Petitioner had any reason to search for a
replacement for Okuno that might resolve the confusion.” Inst. Dec. 19–20
(citing Pet. 26–27). Despite this argument, we concluded that the fifth
General Plastic factor weighed in favor of denying institution. Id. at 20.
Specifically, we found that Petitioner’s argument demonstrated that this
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Petition represented “precisely the situation that General Plastic seeks to
prevent.” Id. (citing General Plastic, IPR2016-01357, Paper 19 at 17 (the
factors are “directed to Petitioner’s potential benefit from receiving and
having the opportunity to study Patent Owner’s Preliminary Response” in
order to avoid “abuse of the review process by repeated attacks on
patents”)).
Petitioner now argues that we erred in evaluating this factor because
Petitioner “moved quickly to get the Board the best information possible,
including its new obviousness argument on the ‘surrounding’ issue.” Req.
Reh’g 13. Regardless of the speed with which Petitioner moved after
learning of Patent Owner’s arguments from the preliminary response in the
first proceeding, responding to such arguments is an inadequate reason for
delay, because it is precisely what General Plastic is designed to prevent.
See General Plastic, IPR2016-01357, Paper 19 at 17–18. Accordingly, we
are not persuaded that we abused our discretion in concluding that the fifth
General Plastic factor weighs in favor of denying institution.
4. Sixth General Plastic Factor: The finite resources of the
Board
In our Decision, we found that, given our conclusion with respect to
the Becton, Dickinson factors, instituting trial on the present Petition “would
result in a significant duplication of the work already undertaken on the
earlier proceeding.” Inst. Dec. 20. Although we noted Petitioner’s argument
that this duplication could be decreased by consolidating trial in this
proceeding with trial in IPR2018-01574, we were not persuaded by this
argument because there was no instituted trial in IPR2018-01574 with which
to consolidate a trial here. Id. at 20–21.
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Petitioner now argues that it was error for us to rely on the fact that no
trial had been instituted in IPR2018-01574 while a request for rehearing and
a request for POP rehearing of the institution decision in that proceeding
remained pending. Req. Reh’g 11. Neither of those requests, however, is
still pending at this time, and there is still no trial in IPR2018-01574 with
which to consolidate trial in this proceeding. IPR2018-01574, Paper 21,
Paper 23. Accordingly, we are not persuaded that we abused our discretion
in concluding that the sixth General Plastic factor weighs in favor of
denying institution.
5. Conclusion as to 35 U.S.C. § 314(a)
Petitioner does not challenge our evaluation of General Plastic factors
one, two, or seven, and we have not been persuaded to change our view on
the third, fourth, fifth, or sixth factors. Accordingly, we are not persuaded
that we abused our discretion in deciding to exercise our discretion under
§ 314(a) to deny institution.
D. Special Circumstances that Allegedly Warrant Institution of Inter
Partes Review
Petitioner argues that two special circumstances present here warrant
institution. Req. Reh’g 13–14. In particular, Petitioner argues first that
institution of review is warranted because, as demonstrated by a declaration
filed in a pending related proceeding in China, Patent Owner recently
changed its position regarding whether blanket deposition followed by
anisotropic etching necessarily leaves spacers surrounding the gate line.
Second, Petitioner argues that we should not have denied institution because
the first petition remained pending, subject to Petitioner’s rehearing requests
in that proceeding.
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Neither of these arguments persuades us that we abused our discretion
by denying institution. As discussed above, the first argument, that Patent
Owner allegedly changed its position after our Decision, is not supported by
any evidence of record. Req. Reh’g 8–10, 13.
The second argument also is unpersuasive. When Petitioner argues
that we “should not have declined institution of the later-filed second
petition . . . while the earlier-filed first petition is still pending,” id. at 14, it
is not altogether clear what Petitioner thinks we should have done instead.
Although the precise contours of Petitioner’s argument are unclear,
we interpret the Request for Rehearing as arguing that discretionary denial
of a second petition is always improper whenever a first petition remains
pending.7 Petitioner does not explain the authority for that legal position,
and we can find none in either § 314(a) or § 325(d). Institution of inter
partes review is never compulsory under § 314(a). Harmonic Inc. v. Avid
Tech., Inc., 815 F.3d 1356, 1367–68 (Fed. Cir. 2016) (“[T]he PTO is
permitted, but never compelled, to institute an IPR proceeding.”). As for
§ 325(d), the statutory language appears to refute Petitioner’s position
directly. As long as “the same or substantially the same prior art or
arguments previously were presented to the Office,” discretion exists to
“reject the petition.” 35 U.S.C. § 325(d). There is no mention in the statute

7 Alternatively, the Request for Rehearing could be interpreted as arguing
that we should have withheld any decision on the second petition until the
rehearing request on the first petition was decided. If we were to interpret
the argument this way, we would find it unpersuasive because it would have
required us to violate 35 U.S.C. § 314(b)(1), which requires us to issue a
decision on institution no later than three months after the filing of the
preliminary response.
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of a limitation on that discretion that requires us to avoid “reject[ing] the
petition” whenever the earlier proceeding in which “the same or
substantially the same prior art or arguments previously were presented”
remains pending. Id.
Thus, we are not persuaded that any of the special circumstances that
Petitioner describes warrants a conclusion that we abused our discretion in
denying institution.
CONCLUSION
For the foregoing reasons, Petitioner has not demonstrated that we
abused our discretion in declining to institute an inter partes review of
claims 1–3, 6, and 7 of the ’719 patent.

ORDER
It is hereby
ORDERED that the Request for Rehearing is denied.

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For PETITIONER:
Jonathan McFarland
Tyler Bowen
PERKINS COIE LLP
Mcfarland-ptab@perkinscoie.com
Bowen-ptab@perkinscoie.com

For PATENT OWNER:
David Radulescu
Jonathan Auerbach
RADULESCU LLP
david@radip.com
jonathan@radip.com