Ex Parte 6940751 et al

Patent Trial and Appeal Board

Jul 29, 2013

95001495 (P.T.A.B. Jul. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
95/001,495 12/07/2010 6940751 028489-000500US 5516
25096 7590 07/29/2013
PERKINS COIE LLP - SEA General
PATENT-SEA
P.O. BOX 1247
SEATTLE, WA 98111-1247
EXAMINER
GE, YUZHEN
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
07/29/2013 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
________________

SIDENSE CORP.
Requester and Appellant

v.

KILOPASS TECHNOLOGIES, INC.
Patent Owner and Respondent
________________

Appeal 2013-003141
Reexamination Control 95/001,495
Patent 6,940,751 B21
Technology Center 3900
________________

Before KEVIN F. TURNER, STEPHEN C. SIU, and
STANLEY M. WEINBERG, Administrative Patent Judges.

WEINBERG, Administrative Patent Judge.

DECISION ON APPEAL

1 The patent involved in this reexamination appeal proceeding (the “’751
Patent”) issued to Peng et al. on September 6, 2005.
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A. STATEMENT OF THE CASE
Introduction
Requester Sidense Corp. (Requester) appeals under 35 U.S.C.
§§ 134(c) and 315(b)(1) from the Examiner’s refusal to adopt any of
Requester’s proposed rejections under 35 U.S.C. §§ 102 and 103 of claims
1-14 of the ‘751 Patent. The proposed rejections are based on Tanaka,2
Yamauchi,3 Frerichs,4 Gardner,5 Kachelmeier,6 Bertin,7 Abadeer,8 Gill,9 Van
Dort,10 Mohsen,11 and Peng.12 Right of Notice of Appeal (RAN) 2, 15-42.
An oral hearing was conducted on April 3, 2013. A transcript of the
hearing was entered into the record on July 17, 2013.
We have jurisdiction under 35 U.S.C. §§ 134(c) and 315(b)(1).
We affirm the Examiner’s decision not to adopt any of Requester’s
proposed rejections and to confirm the patentability of claims 1-14.
Related Proceedings
Requester and Patent Owner have informed us that there are no
related appeals or interferences. Appeal Brief (Br.) 3; Respondent Brief
(Resp. Br.) 1.

2 Tanaka, US 5,331,181, issued July 19, 1994.
3 Yamauchi, US 5,401,993, issued March 28, 1995.
4 Frerichs, US 5,646,438, issued July 8, 1997.
5 Gardner, US 5,918,133, issued June 29, 1999.
6 Kachelmeier, US 5,741,737, issued April 21, 1998.
7 Bertin, US 6,531,410 B2, issued March 11, 2003.
8 Abadeer, US 6,624,031 B2, issued September 23, 2003.
9 Gill, US 5,008,721, issued April 16, 1991.
10 Van Dort, US 5,561,315, issued October 1, 1996.
11 Mohsen, US 4,876,220, issued October 24, 1989.
12 Peng, US 6,777,757 B2, issued August 17, 2004.
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Patent Owner and Requester have also informed us that the ‘751
Patent is being litigated in Kilopass Technology, Inc. v. Sidense Corp. in the
U.S. District Court of Northern California, Case No. 10-02066 SI. Br. 28
(Related Proceedings App’x); Resp. Br. 1, 21 (Related Proceedings App’x).
During the oral hearing, Requester also informed us that an appeal involving
the above-entitled California litigation was pending in the U.S. Court of
Appeals for the Federal Circuit and had been argued earlier that same day.
See oral hearing transcript (Tr.) of the April 3, 2013 hearing. Tr. 27-28.
The parties have not provided us with the caption of the case in the Federal
Circuit nor informed us as to the disposition in the Federal Circuit.13
Although not referenced in the Related Proceedings section of
Requester’s Brief, Requester’s December 7, 2010 Replacement Request for
Inter Partes Reexamination (Request) stated that Requester has filed Inter
Partes reexamination requests for related patent numbers 6,777,757 and
6,856,540 which, Requester asserts, are members of the same patent family
as the ‘751 Patent. Request 9.
The Request also identifies US 7,402,855 (“the ‘855 Patent) as being
related to the issues in the present appeal. The Request states that the ‘855
Patent is owned by Requester, that Patent Owner has requested
reexamination of the ‘855 Patent (“the ‘855 reexamination), and that Patent
Owner’s position in the ‘855 reexamination is pertinent to the present
reexamination for reasons we discuss below. Request 10-14.

13 See 37 C.F.R. §§ 1.933, 1.985.
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The Invention
The invention relates to a programmable memory cell comprised of a
transistor located at the crosspoint of a column bitline and a row wordline.
The transistor has its gate formed from the column bitline and its source
connected to the row wordline. The memory cell is programmed by
applying a voltage potential between the column bitline and the row
wordline. Abstract.
Claim 1 is representative of the appealed subject matter and is
reproduced below with disputed limitations emphasized (Br. 25, Claims
App’x):
1. A programmable memory cell useful in a memory array having
column bitlines and row wordlines, the memory cell comprising:
a transistor having a gate, a gate dielectric between the gate and
over a substrate, and first and second doped semiconductor
regions formed in said substrate adjacent said gate and in a
spaced apart relationship to define a channel region
therebetween and under said gate; and

wherein the second doped semiconductor region of the
transistor is connected to one of said row wordlines, and
wherein said gate dielectric is formed such that the gate
dielectric is more susceptible to breakdown near the first doped
semiconductor region than said second doped semiconductor
region.

The Proposed Rejections of Claims 1, 5, 9, 11, and 12
The Request proposed a rejection of claims 1, 5, 9, and 11 as
anticipated by Tanaka (Request 30, 33-36) and as anticipated by Yamauchi
(Request 31, 84-90), and a rejection of claims 1, 3, 5, 9, 11, and 12 as
anticipated by Frerichs (Request 32, 138-143). See also Br. 7-9. Because
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the parties have focused on the interpretation of Tanaka as applied to claim
1, we will do likewise.
B. ANALYSIS
The Proposed Rejection of Claims 1, 5, 9, and 11
Under 35 U.S.C. § 102 as Anticipated by Tanaka
The Examiner’s Findings And Conclusions
The Examiner finds that Tanaka’s second doped region is connected
to bitlines B1-B5 and not wordlines. RAN 9. That is, the Examiner finds,
“Tanaka shows the second doped region connected to a bitline.” RAN 13.
Consequently, the Examiner concludes that Tanaka does not show “the
second doped semiconductor region of the transistor is connected to one of
said row wordlines” as recited in claim 1 (RAN 13) and therefore does not
anticipate claim 1. RAN 19.
Requester’s Estoppel Argument
Requester does not disagree with the Examiner’s finding that Tanaka
shows the second doped region is connected to a bitline rather than to a
wordline. In fact, Requester effectively agrees with the Examiner:
 Figure 3 of Tanaka “shows second doped semiconductor
regions 21 being connected (via contacts 26) to metal lines 27. Metal lines
27 form part of what Tanaka calls bitlines BIT B1- BIT B5.” Request 34-
35.
 “[B]ut for the Owner’s contrary assertions in other . . .
proceedings[,] Requester would be in complete agreement with Examiner’s
position (and has so asserted in those other proceedings).” Br. 14.
Nevertheless, based on Patent Owner’s purported admissions in other
proceedings, Requester asks us to reverse the Examiner’s refusal to reject
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claim 1 as anticipated by Tanaka. According to Requester, “Owner admits
and is estopped from denying that the terms ‘wordline’ and ‘bitline’ are
arbitrary and interchangeable” and, therefore, “lines 27 in Figure 3 of
Tanaka can be viewed as wordlines.” Request 35. See also Br. 16 (“the
Examiner should treat them [wordline and bitline] here as interchangeable
because the Owner has consistently done so in parallel proceedings before
the Patent Office and in the District Court.”)
In the ‘855 reexamination, Requester contends, Patent Owner “argued
that the terms ‘wordlines’ and ‘bitlines’ of the Peng ‘751 patent are arbitrary
and interchangeable.” Therefore, Requester further contends, the Examiner
can and should adopt Patent Owner’s assertion that wordlines and bitines are
arbitrary and interchangeable as admissions regarding what constitutes the
broadest reasonable interpretation of Patent Owner’s claims. Request 11-12.
Requester also contends that in the District Court proceeding Patent Owner
similarly contended that the claim terms “wordlines” and “bitlines” are
interchangeable. Br. 13.
Requester submitted an Information Disclosure Statement (IDS) with
information regarding the District Court proceeding. Br. 9. The Examiner
refused to consider the IDS. RAN 5. The propriety of that refusal is not
before us.
The Examiner has considered Requester’s estoppel argument asserted
on pages 11-12 of the Request based on the ‘855 reexamination, referred to
in the RAN as 95/001,359. RAN 17. The Examiner has not found this
estoppel argument persuasive because, in the ‘855 reexamination, Requester
(as owner of the ‘855 Patent) filed a Declaration stating that the terms
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“wordlines” and “bitlines” are not interchangeable arbitrary terms. RAN 17.
Requester agrees that it did file such a statement. Br. 16 (“Examiner
grounds his rejection of Requestor’s estoppel argument, in part, on
Requestor’s prior assertion that those claim terms are not interchangeable
(which, as previously mentioned, has been Requestor’s position consistently
throughout litigation and other related proceedings.)”)
Relying on Minnesota Mining & Mfg. Co. v. Chemque, Inc., 303 F.3d
1294, 1302 (Fed. Cir. 2002), Requester asks us to invoke the doctrine of
judicial estoppel to prevent Patent Owner “from playing fast and loose with
the re-examination process, by asserting that the terms ‘wordlines’ and
‘bitlines’ (and also ‘column’ and ‘row’) are arbitrary and interchangeable in
the ‘855 re-examination and in the District Court Markman proceedings, and
then implicitly asserting the opposite in the ‘751 re-examination.” Br. 14.
Citing Russell v. Rolfs, 893 F.2d 1033, 1037 (9th Cir. 1990), Requester
acknowledges that judicial estoppel is an equitable doctrine invoked by a
court at its discretion. Br. 14.
The Federal Circuit in Minnesota Mining also acknowledged the
discretionary aspect of judicial estoppel by relying upon New Hampshire v.
Maine, 532 U.S. 742, 750-51 (2001) where the Supreme Court provided a
flexible, non-exhaustive list of factors to be considered including whether
the party has succeeded in persuading a court to accept that
party’s earlier position, so that judicial acceptance of an
inconsistent position in a later proceeding would create the
perception that either the first or the second court was misled,
. . . Absent success in a prior proceeding, a party’s later
inconsistent position introduces no risk of inconsistent court
determination, . . . and thus poses little threat to judicial
integrity . . . . A third consideration is whether the party seeking
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to assert an inconsistent position would derive an unfair
advantage or impose an unfair detriment on the opposing party
if not estopped. . . . (internal quotations omitted).

Minnesota Mining, 303 F.3d at 1303.
At the oral hearing, Patent Owner denied it is taking inconsistent
positions:
 “[B]it lines and word lines are interchangeable with respect to
the context of the patent in reexamination. Tanaka is a different type of
memory cell, and it does not operate in the same manner as the 751 patent.”
Tr. 7:6-9.
 “In this patent, the word lines and the bit lines, it doesn’t matter
what is called what. But, in Tanaka, it may matter. . . .” Tr. 7:24-8:1.
 “[W]ith respect to the 751 patent, bit lines and word lines are
interchangeable. . .[A]fter my review of Tanaka, there is no indication that
you could change the word line and bit line.” Tr. 13:24-14:6.
Even if Patent Owner has in fact taken inconsistent positions,
Requester has not identified any adverse effects it has suffered as a result of
any such inconsistent positions. Tr. 25:23-28:4.
JUDGE WEINBERG: So up until now, there has been no adverse
effect.
MR. COOK: “. . . Up to now, yes, you’re correct.” Tr. 28:1-4.
For example, Requester has informed us that the District Court entered
summary judgment of non-infringement in favor of Requester (Tr. 27:7-11).
Our review of the of the electronic database of the U.S. Court of
Appeals for the Federal Circuit reveals that on April 10, 2013, the Court
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affirmed the District Court Per Curiam in Kilopass Technology, Inc.Plaintiff-
Appellant v. Sidense Corp. Defendant-Appellee, No. 2013-1009, thereby
indicating that Requester continues to experience no adverse effect from
Patent Owner’s purported inconsistent positions.
Consequently, assuming the doctrine of judicial estoppel applies to
our Board’s proceedings, we exercise our discretion not to apply the doctrine
in this case.
Furthermore, when a requester appeals a final decision of an
Examiner favorable to patentability, the requester has the burden of showing
error in the Examiner’s decision and therefore the burden of proof on the
question of patentability. Accordingly, Requester here has the burden of
showing that claim 1 is unpatentable in this appellate proceeding.
The Examiner has found that Tanaka does not anticipate claim 1
because Tanaka discloses the second doped region is connected to a bitline
and does not show the second doped region is connected to a row wordline.
RAN 13. Requester has not carried its burden of showing the Examiner is
wrong. Instead, Requester effectively admits the Examiner is factually
correct:
 “It has always been and continues to be Requester’s position
that, but for Owner’s contrary assertions with regard to his own patent, the
claim terms ‘wordline’ and ‘bitline’ (and ‘column’ and ‘row’) are not
interchangeable. In this respect, Requestor agrees with the Examiner’s
conclusion that the claim terms are functionally distinct.” Br. 15.
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 “Requester has never argued that the well-known and well-
established technical terms ‘wordline’ and ‘bitline’ are interchangeable.”
Br. 16.
 “Requester does not fault the Examiner’s decision to interpret
‘wordline’ and ‘bitline’ in accordance with the well-established meanings of
those well-established terms. To the contrary, Requester applauds that
interpretation.” Br. 17.
 “[W]e have maintained throughout the proceeding that in our
view word lines/bit lines have distinct functions.” Tr. 20:24-25.
The relief Requester seeks is to find the Examiner “wrong” although
the Examiner is “correct.”
We therefore conclude that Requester has not proven that the
Examiner’s finding is wrong and on this record we decline to reverse the
Examiner’s finding (not disputed by Requester) that Tanaka does not
anticipate claim 1.
Patent Owner’s Alternative Basis Supporting Patentability
Patent Owner’s Respondent Brief asserts that in addition to the
reasons stated by the Examiner, Tanaka does not anticipate claim 1 because
Tanaka purportedly does not disclose “a “gate dielectric is more susceptible
to breakdown near the first doped semiconductor region that said second
doped semiconductor region.” Resp. Br. 6-7. Since we have affirmed the
Examiner’s finding that claim 1 is not anticipated by Tanaka on one ground,
it is unnecessary for us to reach this additional reason why Patent Owner
believes claim 1 is patentable over Tanaka. Cf. In re Swanson, 540 F.3d
1368, 1374 (Fed. Cir. 2008) (“we consider only whether [the first reference]
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raised a substantial new question of patentability and do not reach the issue
of whether the Board properly found claims 22 and 23 anticipated by [the
second reference].”; Linear Technology Corp. v. Int’l Trade Com’n, 566
F.3d 1049, 1069 n.11 (Fed. Cir. 2009) (“We find no error with the
Commission’s decision to not address indirect infringement.”). See also, In
re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching other
rejections after upholding an anticipation rejection).
Accordingly, we will sustain the Examiner’s decision confirming (1)
the patentability of (1) claim 1as not anticipated by Tanaka under 35 U.S.C.
§ 102; (2) claim 9 for similar reasons; and (3) claims 5 and 11 not argued
with particularity.
The Other Proposed Rejections
Beginning on page 17 of its Brief, Requester contends that the
Examiner’s refusal to adopt each of its other proposed rejections “is in error
for the reasons stated above in connection with claim 1” (Br. 17-23). Since
Requester has not argued any of its other proposed rejections with
particularity, we affirm the Examiner’s decision refusing to adopt the
remaining rejections proposed by Requester and confirming the patentability
of claims 1-14.
CONCLUSION
Under §§ 102 and 103, the Examiner did not err in refusing to reject
claims 1-14.
DECISION
The Examiner’s decision refusing to reject claims 1-14 and
confirming the patentability of claims 1-14 is affirmed.
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Requests for rehearing and the time for such requests are governed by
37 C.F.R. § 41.79.
AFFIRMED

cu

PATENT OWNER:
PERKINS COIE LLP
PATENT-SEA
P.O. BOX 1247
SEATTLE, WA 98111-1247
THIRD PARTY REQUESTER:
BARMAK SANI
KILPATRICK TOWNSEND & CREW, LLP
TWO EMBARCADERO CENTER\
EIGHTH FLOOR
SAN FRANCISCO, CA 94111-3834