Ex Parte 6433419 et al

Patent Trial and Appeal Board

Dec 21, 2012

95000227 (P.T.A.B. Dec. 21, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/000,227 02/09/2007 6433419 TESSERA 3.5-018CCIIDC 6504
530 7590 12/21/2012
LERNER, DAVID, LITTENBERG,
KRUMHOLZ & MENTLIK
600 SOUTH AVENUE WEST
WESTFIELD, NJ 07090
EXAMINER
TIBBITS, PIA FLORENCE
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/21/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
SILICONWARE PRECISION INDUSTRIES CO., LTD and
SILICONWARE, U.S.A.
Requester and Appellant

v.

Patent of TESSERA, INC.
Patent Owner and Respondent
____________________

Appeal 2012-009207
Reexamination Control 95/000,227
Patent US 6,433,419 B2
Technology Center 3900

____________

Before HOWARD B. BLANKENSHIP, KEVIN F. TURNER, and
JONI Y. CHANG, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge

DECISION ON APPEAL
App
Reex
Paten

the E
Oral
U.S.
C.F.
Int’l
5,85
prov
repro
'419

1 Thi
Cont
eal 2012-0
amination
t US 6,43
Request
xaminer f
hearing w
C. § 315.1
We reve
R. § 41.77

The '419
Trade Com
2,326, whi
ided a brie
duce belo
patents.

s appeal is
rol 95/000
09207
Control 9
3,419 B2
ST
er appeals
avorable t
as on Sept
rse and de
(b).
patent wa
m’n, 629
ch shares
f explanat
w, includi

related to
,229).
5/000,227
ATEMEN
under 35 U
o the paten
ember 19,
signate ne
In
s a patent
F.3d 1331
a common
ion of the
ng a repro

Appeal 2

2
T OF TH
.S.C. § 13
tablity of
2012. We
w grounds
vention
addressed
(Fed. Cir
specificat
disclosed
duction of
012-00857
E CASE
4(c) from
claims 1-1
have juri
of rejectio
in the cas
. 2010), al
ion. Our r
subject ma
Figure 2 f
9 (Inter P
the final d
9, 22-24,
sdiction un
n as perm
e of Spans
ong with U
eviewing
tter, which
rom the '3
artes Reex
ecision of
and 27.
der 35
itted by 37
ion, Inc. v
S
court
we
26 and

amination

.

Appeal 2012-009207
Reexamination Control 95/000,227
Patent US 6,433,419 B2

3

As shown in Figure 2, chip 28 with electrical contacts 40
is mounted on a substrate (PCB) 20 with an interposer/package
substrate 42 between the chip and the PCB. '326 patent col. 10
ll.23–67. The solder balls 52 bond each terminal 48 to the
associated contact pad 24. Id. Each terminal 48 is also
connected to one of the contacts 40 on chip 28 by a flexible
lead 50. Id. Electrical devices generate heat during operation
and subsequently cool when operation ceases. The electrical
interconnections within the package (between the
semiconductor chip and the backing element) and between the
package and the printed circuit board are subjected to
substantial strain resulting from expansion and contraction
caused by these changes in temperature. Since the components
are ordinarily formed by different materials having different
coefficients of thermal expansion, the chip, the backing
element, and the printed circuit board expand and contract by
different amounts with each power cycle. This difference,
called the differential thermal expansion, causes the electrical
contacts on one component to move relative to the contacts of
another component to which it is attached as the temperatures
of the different components change. For instance, a
semiconductor chip has a much lower coefficient of thermal
expansion than either the backing element or the printed circuit
board. During heating, the backing element beneath the chip
tends to be constrained by the chip and expands much less than
the board on which it is mounted, causing relative movement
there between. This relative movement causes mechanical
stress on the solder balls because the bottoms of the solder balls
get pulled outward relative to the tops causing distortion.
Repeated cycles of heating and cooling can ultimately lead to
permanent damage to the solder balls and breakage of the
electrical interconnections.

The patents at issue describe a semiconductor package
with the ability to accommodate this relative movement
between components by inserting a layer of compliant material
Appeal 2012-009207
Reexamination Control 95/000,227
Patent US 6,433,419 B2

4
that is “flexible, compressible, and/or elastic” between the chip
and its backing element. '326 patent col. 3 ll.61–64 (“Most
preferably, a compliant layer is disposed between said terminals
and said chip so that said compliant layer will be compressed
upon movement of said terminals toward said chip.”). This
compliant layer permits the terminals on the backing element to
move relative to the chip inside the package offsetting some of
the stress on the solder balls due to differential thermal
expansion. The reduction of stress on the solder balls in turn
decreases the occurrence of package failure and improves the
reliability of the electrical devices containing such packages.

Spansion, 629 F.3d at 1338-39 (internal citation omitted).

Claims
Claims 20, 21, 25, 26, 28, and 29 are not subject to reexamination.
Claim 1-19, 22-24, and 27 are confirmed.
For purposes of this appeal, claim 1 is representative.

1. A semiconductor assembly comprising:

a) a semiconductor chip having a front surface, a rear
surface and contacts on said front surface, said semiconductor
chip having a coefficient of thermal expansion;

b) a substrate adapted to physically support the chip and
electrically interconnect the chip with other elements of a
circuit, said substrate having a set of contact pads thereon, said
substrate having a coefficient of thermal expansion, said
semiconductor chip overlying said substrate so that said chip
overlies at least some of said contact pads of said set and so that
said rear surface of said chip faces toward said substrate and
said contact pads;

Appeal 2012-009207
Reexamination Control 95/000,227
Patent US 6,433,419 B2

5
c) a backing element having electrically conductive
terminals and electrically conductive lead portions electrically
connected to said terminals and to said contacts on said chip,
said backing element having a central region aligned with said
chip and disposed between said rear surface of said chip and
said substrate, said terminals of said backing element being
bonded to said contact pads on said substrate, at least some of
said terminals of said backing element being disposed in said
central region of said backing element and being movable with
respect to the chip to compensate for differential thermal
expansion of the chip and substrate.

Prior Art

White US 4, 601, 526 July 22, 1986
Freyman US 4,700,473 October 20, 1987
Hubbard US 4,866,841 September 19, 1989
Mullen, III US 5,241,133 August 31, 1993
Okinaga2 JP S61-177759 February 4, 1985

Otsuka et al., High Reliability Mechanism of New Silicone Gel
Sealing in Accelerated Environment Test.

Requester’s Contentions
Requester contends in the Appeal Brief that the following grounds of
rejection under §§ 102 and 103(a) were proposed and that the Examiner
erred in not entering:
1. Mullen Anticipates Claims 1-14, 16-19, 22-24, and 27;
2. Mullen in view of White renders Claim 15 Obvious;
3. Freyman Anticipates Claims 1-15 and 19;

2 With English translation.
Appeal 2012-009207
Reexamination Control 95/000,227
Patent US 6,433,419 B2

6
4. Freyman in view of Otsuka renders Claims 16-19, 24, and 27
Obvious;
5. White Anticipates Claim 1-8, 10, 11, 14, 15, and 19;
6. Okinaga Anticipates Claims 1-14, 16-19, 22-24, and 27;
7. Okinaga in view of White renders Claim 15 Obvious;
8. Otsuka in View of Hubbard renders Claims 1-14, 16-19, 22-24,
and 27 Obvious; and
9. Otsuka in view of Hubbard and White renders Claim 15
Obvious.

ANALYSIS
I. Prosecution of the Inter Partes Reexamination
During the instant reexamination proceeding, Patent Owner proposed
the following amendment to the '419 patent Specification:
As used in the claims with respect to terminals, the term
“movable” means that in the operation of the assembly, the
terminals are capable of being displaced relative to the chip by
external loads applied to the terminals, to the extent that the
displacement appreciably relieves mechanical stresses, such as
those caused by differential thermal expansion which would be
present in the electrical connections absent such displacement.

As used in the claims, the expression “to compensate for
differential thermal expansion of the chip and substrate” means
to appreciably accommodate the thermally induced stresses
caused by the difference in thermal expansion of the chip and
the substrate.

Owner’s Response after Non-Final Action, Aug. 10, 2007.
Appeal 2012-009207
Reexamination Control 95/000,227
Patent US 6,433,419 B2

7
The Examiner subsequently refused to enter the amendment, finding
that the proposed amendment constituted new matter. Right of Appeal
Notice, June 19, 2009 at 5-21. After examining the '419 patent disclosure,
the Examiner determined the broadest reasonable interpretation of the term
“movable” to be:
[A]ny relative movement between the chip and the terminals
compensating for or accommodating applied forces or loads,
including but not limited to those forces or loads caused by
differential thermal expansion (DTE) or some mechanical force.
Because the claims only required the movement to be relative
(i.e. “with respect to”), either the terminals or the chip’s
contacts may remain stationary while the other moves. In other
words, there is no requirement for absolute movement of both
the chip’s contacts and the terminals.

Id. at 21 (emphasis deleted).
The Examiner later reopened prosecution because the '419 patent
expired during the reexamination. See Reexamination Petition Decision
Granting In Part [Owner’s] Petition To Reopen Prosecution, Feb. 25, 2011.
The Examiner noted that no amendments may be made to an expired patent,
such that Owner’s proposed amendment to the Specification was effectively
withdrawn. Action Closing Prosecution, Mar. 11, 2011 at 4-5.
In the Right of Appeal Notice (RAN) (May 3, 2011) from which the
current appeal is taken, the Examiner states that claim terms in an expired
patent are not given the “broadest reasonable interpretation.” The Examiner
now accepts Owner’s proffered definitions for “movable,” and “to
compensate for different thermal expansion” because “the Courts provide a
definition that is narrower than the broadest reasonable interpretation used
by the Office.” RAN 6. Owner submits that the proffered definition of
Appeal 2012-009207
Reexamination Control 95/000,227
Patent US 6,433,419 B2

8
“movable” is identical in substance to that accepted by various U.S District
Courts, by the ITC, and by the U.S. Court of Appeals for the Federal Circuit,
when construing the term in the '419 patent or in other litigated patents
having the same specification. Owner Resp. Br. 4-5.

II. Claim Construction in an Expired Patent During Reexamination
Our reviewing court has held that, at least in appropriate
circumstances, “broadest reasonable interpretation” applies in reexamination
proceedings.
We affirm the board’s decision to give claims their
broadest reasonable interpretation, consistent with the
specification, in reexamination proceedings. In a district court
context, we too have said that claims should be construed, if
possible, to sustain their validity.
The PTO broadly interprets claims during examination of
a patent application since the applicant may “amend his claims
to obtain protection commensurate with his actual contribution
to the art.” This approach serves the public interest by reducing
the possibility that claims, finally allowed, will be given
broader scope than is justified. Applicants’ interests are not
impaired since they are not foreclosed from obtaining
appropriate coverage for their invention with express claim
language.
An applicant’s ability to amend his claims to avoid cited
prior art distinguishes proceedings before the PTO from
proceedings in federal district courts on issued patents. When
an application is pending in the PTO, the applicant has the
ability to correct errors in claim language and adjust the scope
of claim protection as needed. This opportunity is not available
in an infringement action in district court. District courts may
find it necessary to interpret claims to protect only that which
constitutes patentable subject matter to do justice between the
parties.
Appeal 2012-009207
Reexamination Control 95/000,227
Patent US 6,433,419 B2

9

In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984) (citations omitted).
In Ex parte Papst-Motoren, 1 USPQ2d 1655 (BPAI 1986), an
expanded panel of the Board that included the PTO Commissioner, Deputy
Commissioner, and Board Chairman held that:
[I]n reexamination proceedings in which the PTO is
considering the patentability of claims of an expired patent
which are not subject to amendment, a policy of liberal claim
construction may properly and should be applied. Such a
policy favors a construction of a patent claim that will render it
valid, i.e., a narrow construction, over a broad construction that
would render it invalid.

1 USPQ2d at 1656 (citations omitted).
To our knowledge, our reviewing court has never had occasion to rule
on whether there should be a difference in a reexamination proceeding
between interpreting the claim terms in a patent that can be amended and in
one that cannot; i.e., where the patent has expired. However, our reviewing
court recently acknowledged that the USPTO applies a different claim
interpretation for expired patents.
While claims are generally given their broadest possible scope
during prosecution, In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir.
2000), the Board’s review of the claims of an expired patent is
similar to that of a district court’s review, Ex Parte Papst-
Motoren, 1 U.S.P.Q.2d 1655, 1655-56 (B.P.A.I. Dec. 23, 1986);
see also MPEP § 2258 I.G (directing Examiners to construe
claims pursuant to Phillips v. AWH Corp., 415 F.3d 1303 (Fed.
Cir. 2005) (en banc), during reexamination of an expired
patent).

In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. Aug. 15, 2012).
Appeal 2012-009207
Reexamination Control 95/000,227
Patent US 6,433,419 B2

10
An expanded panel of the Board has pointed out that the Papst-
Motoren language with regard to the construction of a patent claim “that will
render it valid” can be misleading. The maxim that claims are construed, if
possible, to sustain their validity is limited “to cases in which ‘the court
concludes, after applying all the available tools of claim construction, that
the claim is still ambiguous.’ [quoting] Phillips v. AWH Corp., 415 F.3d
1303, 1327 (Fed. Cir. 2005) (en banc) (citing Liebel-Flarsheim Co. v.
Medrad, Inc., 358 F.3d 898, 911 (Fed. Cir. 2004)).” Ex parte Katz, 2010
WL 1259722 at *7 (BPAI 2010).
We will follow the guidance of Papst-Motoren and Ex parte Katz in
this appeal. “We assume for this appeal that a patentee is entitled to rely on
any of the various intrinsic and extrinsic sources of claim meaning discussed
in Phillips. It is patentee’s burden to show how an argued narrower claim
construction is supported by the evidence.” Katz, 2010 WL 1259722 at *8.
“In determining the meaning of the disputed claim limitation, we look
principally to the intrinsic evidence of record, examining the claim language
itself, the written description, and the prosecution history, if in evidence.”
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
(Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312-17).

III. Claim Construction -- “at least some of said terminals . . . being
movable with respect to the chip to compensate for differential thermal
expansion of the chip and substrate”

Our reviewing court previously heard an appeal where construction of
the phrase “movable with respect to the chip to compensate for differential
Appeal 2012-009207
Reexamination Control 95/000,227
Patent US 6,433,419 B2

11
thermal expansion of the chip and substrate” was at issue in the context of
the '419 patent. Spansion, 629 F.3d 1331.
In particular, our reviewing court considered the ALJ’s determinations
set forth in In the Matter of Semiconductor Chips With Minimized Chip
Package Size and Products Containing Same, Inv. No. 337-TA-605 (Int’l
Trade Comm’n Dec. 1, 2008) (Public Version) (“Initial Determination”).
Spansion, 629 F.3d at 1333 et seq. The ALJ found that the asserted
“claimed movement” -- that “in the operation of the assembly, the terminals
are capable of being displaced relative to the chip by external loads applied
to the terminals, to the extent that the displacement appreciably relieves
mechanical stresses, such as those caused by differential thermal expansion
which would be present in the electrical connections absent such
displacement” -- did not arise from the plain language of the claims or from
the description in the specification. Initial Determination, slip op. at 42-47.
However, the ALJ examined the prosecution of the '419 patent and found
that the Patent Owner had limited itself to terminal movement due to
external loads, by statements made to the Examiner in distinguishing over a
reference. Id. at 48-49.
Our reviewing court considered the ALJ’s determinations.
During prosecution of the '419 patent, the patent examiner
rejected the pending claims as anticipated by the Lin patent. In
response, Tessera distinguished the Lin patent by differentiating
solder ball deformation and “CTE [coefficients of thermal
expansion] matching” from the claimed movement. Initial
Determination at 48 (“Indeed, Lin's teaching that one should
rely upon deformable solder balls and CTE matching of the
‘carrier substrate 12’ and the printed circuit board as a full and
adequate solution to the problem of solder joint fatigue leads
Appeal 2012-009207
Reexamination Control 95/000,227
Patent US 6,433,419 B2

12
away from any suggestion that one should provide terminals
movable relative to the chip to deal with this problem.”)
(quoting Trial Ex. JX–0003 prosecution history of the '419
patent, amendment dated Aug. 20, 2001 at 4–5). Thus, the
prosecution history makes clear that claimed movement is
limited to movement caused by external loads as opposed to
movement caused by internal loads.

Spansion, 629 F.3d at 1346 (second emphasis added).3
Requester does not address the prosecution history of the '419 patent,
nor supply any evidence or reasoning in support of why the Federal Circuit
was wrong in its determination with respect to what the prosecution history
makes clear. However, Requester submits that according to an “admission”
by Owner, a prior art reference discloses “movable” terminals if it uses a
“flexible sheetlike element” and/or “flexible leads or wires.” Req. App. Br.
5. In particular, Requester submits that in “Tessera’s Amended Disclosure
of Asserted Claims and Preliminary Contentions (“PIC”),4 Owner admitted
how “movable” terminals are achieved:
The patents-in-suit teach other ways for achieving
“movable” terminals, including, by way of example and
not limitation, (1) using a flexible sheetlike element, such
as a polyimide layer (e.g., claim 6 of the ‘977 Patent)
and/or (2) using flexible leads or wires (e.g., claim 6 of
the '977 patent), alone or in combination with the use of
soft or ‘compliant’ layers (e.g., claim 17 of the ‘326
Patent).

3 The “claimed movement” applies to all the independent claims that are
before us (1-8), as claim 1 was taken as representative. See 629 F.3d at
1339-40.

4 Tessera v. AMD, C05-04063 CW (N.D. Cal.), Req. App. Br. Ex. OTH-1.
Appeal 2012-009207
Reexamination Control 95/000,227
Patent US 6,433,419 B2

13
PIC at 7 (emphasis added).

Id.
Owner counters that the relied-upon statement:
. . . simply does not say that flexible leads are sufficient to
render terminals of a chip package movable relative to the chip,
regardless of any other structural elements in the package. Nor
does its say that presence of a "flexible sheetlike element" is
enough to render the terminals movable regardless of other
structural elements in the package.

Owner Resp. Br. 16.
We agree with Owner. Owner’s statement merely indicates that
“movable” terminals may be achieved by the use of flexible sheetlike
elements, leads, or wires, but does not say that the presence of such a
flexible element, or that flexibility per se of such elements, is all that is
necessary to render a terminal “movable” as claimed. We further agree with
Owner (id.) that the '419 patent disclosure does not say that the mere
presence of flexible leads is enough to provide movability, regardless of any
other elements.
We also agree with Owner (Resp. Br. 12-13) that its proffered
construction of “movable” would not “exclude embodiments” of the
invention. Most important, the proper construction “neither requires nor
prohibits movability under the influence of ‘internal loads,’ e.g., expansion
of the element carrying the terminals” (id. at 12), because that is not the
“claimed movement.” See Spansion, 629 F.3d at 1346 (reproduced supra).
We agree with Requester to the extent that the '419 patent is not
entitled to a presumption of validity and that a lesser standard of proof
Appeal 2012-009207
Reexamination Control 95/000,227
Patent US 6,433,419 B2

14
(preponderance) applies in this proceeding. However, Requester has not
shown how the differences with respect to U.S. District Court and,
particularly, ITC proceedings are material in that the proper construction of
“movable” should now be different in this reexamination. Owner does not
allege that its proffered construction of “movable” is required by a reading
of the '419 patent alone, but relies on the tools of claim construction that
include consideration of the prosecution history. Our reviewing court could
not be more clear on what the prosecution history of the '419 patent makes
clear. See Spansion, 629 F.3d at 1346 (reproduced supra). We have
considered Requester’s evidence and arguments but are not persuaded that
our claim construction should differ from that of our reviewing courts’. In
the unusual circumstances of this case, our claim construction, although not
controlled by, is certainly informed by our reviewing court’s prior
statements on the subject.
Thus, Requester has not demonstrated error in the claim construction
adopted by the Examiner. While we agree with Requester to the extent that
the Examiner may have seemed to err in simply adopting the construction
because it was accepted by “the Courts,” and may have seemed to err in
adopting the construction because the proffered definition of “movable” is
narrower than the broadest reasonable interpretation, we consider such error,
if any, to be harmless.

IV.Mullen
Owner submits that Mullen is not prior art because that patent has
been antedated by the submission of a declaration by a co-inventor of the
Appeal 2012-009207
Reexamination Control 95/000,227
Patent US 6,433,419 B2

15
'419 patent “within the literal scope of Rule 131 and admissible on that
basis,” and by various other evidence and testimony from U.S. District Court
and ITC proceedings, including testimony of both inventors of the '419
patent. Owner Resp. Br. 13-14.
Rule 131 (37 C.F.R. § 1.131) provides for an appropriate “oath or
declaration” by “the owner of the patent under reexamination” to establish
“invention of the subject matter of the rejected claims prior to the effective
date of the reference or activity on which the rejection is based.” Owner
does not allege that one or more Rule 131 affidavits or declarations have
been submitted that is/are executed by both inventors of the '419 patent.
Rather, Owner seems to suggest in the Respondent Brief that a Rule 131
declaration has been submitted that was made by “the owner of the patent
under reexamination.” That position was acknowledged by Owner’s counsel
at the oral hearing.
MR. MILLET: If I may, Mr. Heafey has talked about the
defects in the 131 declaration. First of all, he simply ignores
the text at Rule 131 that we pointed out in our brief. The Patent
Owner makes --

JUDGE BLANKENSHIP: Do we have a 131
declaration?

MR. MILLET: We have a declaration that was filed with
the ITC which we submitted that was a -- we submitted here on
-- we resubmitted it here on behalf of the Patent Owner, signed
by Dr. DiStefano and under Rule 131, there is no requirement
for both Inventors to sign in a reexamination.

JUDGE BLANKENSHIP: There is a requirement for a
131declaration, though, in section 131.

Appeal 2012-009207
Reexamination Control 95/000,227
Patent US 6,433,419 B2

16
MR. MILLET: Yes, but there is no reason why you can’t
accept a declaration sworn -- and other sworn evidence filed in
other tribunals. It doesn’t have to be in the form of a, you
know, a declaration with a heading on it. There has been no
dispute of the sufficiency of the evidence --

JUDGE BLANKENSHIP: Do we have a declaration
from all the Inventors or from the Patent Owner?

MR. MILLET: We have a declaration from the Patent
Owner, that’s Dr. DiStefano --

JUDGE BLANKENSHIP: Where is that 131 declaration
from the Patent Owner?

MR. MILLET: Well, it’s submitted on behalf of the
Patent Owner. It’s an individual declaration that was submitted
on behalf of the Patent Owner.

JUDGE BLANKENSHIP: Does he have the authority to
--

MR. MILLET: In fact, the decisions that we’ve cited,
yes, certainly, I had --

JUDGE BLANKENSHIP: Did he allege authority -- did
he allege that he had that authority in the declaration?

MR. MILLET: I had authority to submit it on his behalf.
He was speaking for the Patent Owner. I’m not sure I
understand the question. In fact, the decision to appoint -- from
the OPLA held that an Inventor’s declaration from a single
Inventor was sufficient when submitted on behalf of the Patent
Owner reexamination.

JUDGE BLANKENSHIP: And what case is that?

Appeal 2012-009207
Reexamination Control 95/000,227
Patent US 6,433,419 B2

17
MR. MILLET: That’s the CRU -- I’m sorry, the OPLA
decision which is cited in our brief. I can’t identify from
memory, though. If I may move on --

Hrg Trans. 34-35.
However, that Owner’s counsel is authorized to act on behalf of
Patent Owner in submission of evidence (Resp. Br. 14 n.12) is not an
affidavit or declaration by “the owner of the patent under reexamination.”
37 C.F.R. § 1.131(a). The declaration by the co-inventor that Owner
provides does not say that Dr. DiStefano is Tessara, Inc., or authorized to
execute a declaration on Tessara’s behalf. Although the declaration asserts
that Dr. DiStefano held several positions (including President) at
IST/Tessera, and was a co-founder of the predecessor to Tessera, Inc., Dr.
DiStefano testifies that “I continued working at Tessera until September
1999.” Owner Resp. Br. Ex D-1, ¶ 2. Thus, according to the declaration,
Dr. DiStefano was not an officer of Tessera, Inc. at the time the declaration
was prepared.
Moreover, Owner does not tell us where Dr. DiStefano’s declaration
addresses the specific limitations of the '419 patent claims. We have
considered the declaration only to the extent of its cover page and first three
paragraphs. The declaration is not directed to the '419 patent and to the '419
patent claims, which sets forth the invention that Owner alleges to be prior
to the filing date of Mullen. Owner has not explained or even hinted why
the patent addressed in Dr. DiStefano’s declaration might be relevant to the
claimed invention of the '419 patent.
Further, Owner does not tell us how and where the declarations,
testimony, and exhibits (even if included in the Evidence Appendix of
Appeal 2012-009207
Reexamination Control 95/000,227
Patent US 6,433,419 B2

18
Owner’s Respondent Brief), upon which Owner nominally relies, show that
the claims of the '419 patent -- i.e., the claimed invention -- is demonstrated
to predate the filing of the Mullen patent. Mullen represents -- prima facie --
prior art under § 102(e) vis-à-vis the '419 patent. The burden to establish
prior completion of the invention is Owner’s. See In re Borkowski, 505 F.2d
713, 718 (CCPA 1974) (“It was appellants’ burden to explain the content of
these notebook pages as proof of acts amounting to reduction to practice.
That was not done.”). Owner refers to evidence in the form of testimony
and photographs, but does not direct us to any specific portions of the
evidence to show an actual reduction to practice of the invention before the
critical date or conception of the invention prior to the effective date of the
reference coupled with due diligence from prior to said date to a subsequent
reduction to practice or to the filing of the application. In fact, Owner does
not even tell us whether it is alleging actual reduction to practice before the
critical date or conception coupled with due diligence to a subsequent
reduction to practice or to the filing of the application.
Owner’s remarks in the Appeal Brief suggest that it may be relying in
part on the filing of U.S. 5,148,265, which is the second to earliest
application in the chain of applications to which the '419 patent claims
priority pursuant to 35 U.S.C. § 120.5 Owner Resp. Br. 14-15. Owner’s
discussion in the Respondent Brief does not establish that filing of the
application that matured into the '265 patent represents a constructive

5 The face of the '419 patent lists two Patent Numbers 5,148,265 in the
related application data, but the earliest Patent Number in the chain should
be 5,148,266.

Appeal 2012-009207
Reexamination Control 95/000,227
Patent US 6,433,419 B2

19
reduction to practice of the claimed invention of the '419 patent. Further,
Owner cites a case about 35 U.S.C. § 112 written description support
(Lockwood v. Am. Airlines, 107 F.3d 1565 (Fed. Cir. 1997)) and seems to
confuse constructive reduction to practice with priority benefit under 35
U.S.C. § 120. Owner Resp. Br. 14-15.
37 C.F.R. § 1.131 provides in pertinent part:
(b) The showing of facts shall be such, in character and
weight, as to establish reduction to practice prior to the
effective date of the reference, or conception of the invention
prior to the effective date of the reference coupled with due
diligence from prior to said date to a subsequent reduction to
practice or to the filing of the application. Original exhibits of
drawings or records, or photocopies thereof, must accompany
and form part of the affidavit or declaration or their absence
must be satisfactorily explained.

In view of the character and weight of Owner’s showing of facts, we
find that the preponderance of the evidence supports the conclusion that
Mullen is prior art.
Although Owner does not appear to mention Spansion in its
arguments with regard to Mullen, we note that our reviewing court affirmed
the ITC’s determination that, based on the evidence that was before it,
asserted claims of the '419 patent predate the filing of the Mullen patent.
Spansion, 629 F.3d at 1355-57. However, the Appellant in Spansion
challenged only the finding of a June, 1990 conception date. Id. In any
event, Owner does not identify any authority which holds that an ITC or an
Article III Court’s determination may substitute for a Rule 131 affidavit or
declaration in USPTO proceedings.
Appeal 2012-009207
Reexamination Control 95/000,227
Patent US 6,433,419 B2

20
Apparently, the Examiner’s sole reason for not adopting proposed
rejections based on6 Mullen is that Mullen is considered not to be prior art.
RAN 7. The Examiner states at page 9 of the RAN that “none of the
references” teach terminals that are “movable,” but fails to specify the
references that were considered. Moreover, the Examiner provides reasons
why other references are deemed not to teach “movable” terminals (RAN 7-
9), but does not address Mullen with respect to whether it may disclose,
teach, or suggest “movable” terminals.
Because Mullen has not been antedated by the evidence in this record,
we do not sustain the Examiner’s decision to not enter the proposed
rejections that are based on Mullen. We will designate the rejections over
Mullen as entered and as new grounds of rejection, to provide Owner the
right to provide a Rule 131 declaration and supporting evidence, since we
disagree with the Examiner’s determination that Mullen has been antedated
in this proceeding.

V. Freyman, White, and Okinaga
Requester’s arguments with respect to why rejections should be
entered based on Freyman, White, and Okinaga are founded on the claim
construction that Requester rejected. Because we are not persuaded that the
Federal Circuit’s claim construction (based on prosecution history) is wrong,
we sustain the Examiner’s decision not to enter those proposed rejections.
We agree with Requester that there is ambiguity in the Examiner’s

6 For simplicity, we use the term “based on” to indicate a reference that was
proposed as anticipating under § 102 or as the principal or base reference
under § 103(a).
Appeal 2012-009207
Reexamination Control 95/000,227
Patent US 6,433,419 B2

21
statements of “[t]o the extent that Patentee’s argument is accurate,” but the
statements that Freyman and White do not teach “movable” terminals as
required by the claims is sufficiently clear. RAN 8. We also observe that
although Requester alleges that the Examiner erred (in a June 5, 2007 Office
Action) in finding that Okinaga and White cannot be combined, Requester
does not address the Examiner’s reason in the RAN as to why a rejection
based on Okinaga or White is not entered. See Req. App. Br. 25-26.

VI. Otsuka
The RAN, understandably, did not address any proposed rejections
that were based on Otsuka. The last set of rejections proposed by Requester
before the RAN did not include a rejection based on Otsuka. See Req.
Respond. Br., filed Mar. 17, 2010 (prior to this appeal). Neither Requester’s
Notice of Appeal nor the Appeal Brief identifies where the rejections that
appear to be proposed in the Brief were earlier and completely presented,
and may be refused consideration on that basis. For the proposed rejections
that we have reviewed supra, we have presumed that the proposed rejections
are based on those of the original Reexamination Request (Feb. 9, 2007).
In any event, we consider the proposed rejections based on Otsuka, if
any, to be merely cumulative. Requester’s Appeal Brief (at 26-27) does not
explain why Otsuka is any better than the other art that is proposed to be
applied against the same claims.

Appeal 2012-009207
Reexamination Control 95/000,227
Patent US 6,433,419 B2

22
VII. Summary/Conclusion
We enter and designate the following rejections as new grounds of
rejection pursuant to 37 C.F.R. § 41.77(b):
Claims 1-14, 16-19, 22-24, and 27 are rejected under 35 U.S.C.
§ 102(e) as being anticipated by Mullen (as set forth in Original
Reexamination Request); and
Claim 15 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mullen and White (as set forth in Original Reexamination
Request).

DECISION
The Examiner’s decision favorable to the patentability of claims 1-19,
22-24, and 27 is reversed.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.77(b) which provides that "[a]ny decision which includes a new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review." Correspondingly, no portion of the decision is final for
purposes of judicial review. A requester may also request rehearing under
37 C.F.R. § 41.79, if appropriate, however, the Board may elect to defer
issuing any decision on such request for rehearing until such time that a final
decision on appeal has been issued by the Board.
For further guidance on new grounds of rejection, see 37 C.F.R.
§ 41.77(b)-(g). The decision may become final after it has returned to the
Board. 37 C.F.R. § 41.77(f).
Appeal 2012-009207
Reexamination Control 95/000,227
Patent US 6,433,419 B2

23
37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN
ONE MONTH FROM THE DATE OF THE DECISION, must exercise one
of the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the examiner. Such a response must be
either an amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both.7
(2) Request rehearing. The owner may request that the proceeding be
reheard under § 41.79 by the Board upon the same record. …
Any request to reopen prosecution before the examiner under 37
C.F.R. § 41.77(b)(1) shall be limited in scope to the "claims so rejected."
Accordingly, a request to reopen prosecution is limited to issues raised by
the new ground(s) of rejection entered by the Board. A request to reopen
prosecution that includes issues other than those raised by the new ground(s)
is unlikely to be granted.
A requester may file comments in reply to a patent owner response.
37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall
be limited in scope to the issues raised by the Board's opinion reflecting its
decision to reject the claims and the patent owner's response under
paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not
permitted as a matter of right. A newly proposed rejection may be
appropriate if it is presented to address an amendment and/or new evidence

7 We remind Owner that § 41.77(b) applies only in part because “an
amendment of the claims” cannot be entered into the expired '419 patent.
Appeal 2012-009207
Reexamination Control 95/000,227
Patent US 6,433,419 B2

24
properly submitted by the patent owner, and is presented with a brief
explanation as to why the newly proposed rejection is now necessary and
why it could not have been presented earlier.
Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for
all patent owner responses and requester comments, is required.
The examiner, after the Board's entry of a patent owner response and
requester comments, will issue a determination under 37 C.F.R. § 41.77(d)
as to whether the Board's rejection is maintained or has been overcome. The
proceeding will then be returned to the Board together with any comments
and reply submitted by the owner and/or requester under 37 C.F.R.
§ 41.77(e) for reconsideration and issuance of a new decision by the Board
as provided by 37 C.F.R. § 41.77(f).
Requests for extensions of time in this proceeding are governed by 37
C.F.R. §§ 1.956 and 41.79(e).

REVERSED -- 37 C.F.R. § 41.77(b)

cu
Appeal 2012-009207
Reexamination Control 95/000,227
Patent US 6,433,419 B2

25
Patent Owner:

Lerner, David, Littenberg, Krumholz & Mentlik
600 South Avenue
Westfield, NJ 07090

Third Party Requester:

Orrick, Herrington & Sutcliffe, LLP
IP Prosecution Department
2050 Main Street, Suite 1100
Irvine, CA 92614