Bell Semiconductor LLC v. NXP B.V., NXP USA, INC., NXP SEMICONDUCTORS N.V., Cross-Appellants 2023-1260,…

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
BELL SEMICONDUCTOR LLC,
Appellant
v.
NXP B.V., NXP USA, INC., NXP SEMICONDUCTORS
N.V.,
Cross-Appellants
______________________
2023-1260, 2023-1262, 2023-1263, 2023-1264
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2021-
00966, IPR2021-00967.
______________________
Decided: December 5, 2024
______________________
BLAIR A. SILVER, Irell & Manella LLP, Washington, DC,
argued for appellant. Also represented by JASON SHEASBY,
HONG ANNITA ZHONG, Los Angeles, CA.
TRUMAN FENTON, Slayden Grubert Beard PLLC,
Austin, TX, argued for cross-appellants. Also represented
by BRIAN C. BANNER.
______________________
Case: 23-1260 Document: 47 Page: 1 Filed: 12/05/2024

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BELL SEMICONDUCTOR LLC v. NXP B.V. 2
Before LOURIE, REYNA, and HUGHES, Circuit Judges.
LOURIE, Circuit Judge.
In this consolidated appeal, Bell Semiconductor LLC
(“Bell”) appeals from the final written decisions in two inter
partes reviews (“IPRs”), determining that 23 claims of U.S.
Patents 8,049,340 (“the ’340 patent”) and 8,288,269 (“the
’269 patent”) were unpatentable. NXP B.V. and related
entities (collectively, “NXP”) cross-appeal the final written
decisions in those same IPRs with respect to 11 of the
remaining 16 challenged claims that the Board determined
had not been shown to be unpatentable. NXP B.V. v. Bell
Semiconductor, LLC, No. IPR2021-000966 (P.T.A.B. Oct. 6,
2022) (“’340 Decision”), J.A. 1–81; NXP B.V. v. Bell
Semiconductor, LLC, No. IPR2021-000967 (P.T.A.B. Oct. 6,
2022) (“’269 Decision”), J.A. 82–138.1 For the following
reasons, we affirm the decisions of the Board. 2
BACKGROUND
The ’340 patent is “directed to the design of an
integrated circuit package that minimizes parasitic
1 The final written decisions consolidated in this
appeal share similar analyses of the issues relevant to the
parties’ disputes. Unless otherwise indicated, we cite the
’340 Decision as representative.
2 NXP’s principal brief, in part, purports to challenge
the Board’s determination with respect to claims 12, 15,
and 16 of the ’269 patent, requesting that this court
“instead find these claims obvious.” NXP Principal Br. at
77; see also id. at 62 (statement of the issues). However,
the Board did find those claims obvious, ’269 Decision, J.A.
135–37, and NXP appears to have dropped claims 12, 15,
and 16 from its conclusion statement in reply, see NXP
Reply Br. at 20. For that reason, we will assume the
statement in NXP’s principal brief was a typographical
error rather than an improperly raised cross-appeal.
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BELL SEMICONDUCTOR LLC v. NXP B.V. 3
capacitance between metal layers in a ball grid array
integrated circuit package.” ’340 patent at col. 1, ll. 10–13.
Independent claim 1 of the ’340 patent claims “[a]n
integrated circuit package substrate comprising” a series of
electrically conductive and insulating layers, wherein the
second electrically conductive layer includes “a plurality of
cutouts . . . for reducing parasitic capacitance.” Id. at col.
6, ll. 36–54. The ’269 patent is a continuation of the ’340
patent and claims methods of “forming” those electrically
conductive and insulating layers. See ’269 patent at col. 6,
l. 39–col. 8, l. 45.
NXP petitioned for IPR, asserting that the challenged
claims of both patents would have been obvious over U.S.
Patent 6,765,298 (“Chin”) alone or in combination with
other references. The Board found that claims 1, 4, and
12–17 of the ’340 patent and claims 1, 4, 7, and 9–20 of the
’269 patent had been shown to be unpatentable, but that
claims 2, 3, 5–11, 18, and 19 of the ’340 patent and 2, 3, 5,
6, and 8 of the ’269 patent had not been shown to be
unpatentable. ’340 Decision, J.A. 79; ’269 Decision, J.A.
136. Both Bell and NXP timely appealed. We have
jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
Obviousness is a question of law based on underlying
findings of fact. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
427 (2007). We review the Board’s legal conclusion on
obviousness de novo and its findings of fact for substantial
evidence. HTC Corp. v. Cellular Commc’ns Equip., LLC,
877 F.3d 1361, 1369 (Fed. Cir. 2017).
I
On appeal, Bell primarily argues that the Board’s
obviousness analysis was both legally and factually flawed
because the Board failed to consider Chin as a whole.
According to Bell, when properly considered, Chin does not
teach the use of its invention with integrated circuit
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BELL SEMICONDUCTOR LLC v. NXP B.V. 4
package substrates, only printed circuit boards, and that
all challenged claims of the ’340 and ’269 patents are
limited to integrated circuit package substrates. NXP
responds that Bell’s arguments are based on the erroneous
premise that the Board’s analysis of Chin should have been
limited to the preferred embodiments disclosed in Chin and
that Bell attempts to improperly frame issues of fact as
issues of law. We agree with NXP.
The question of obviousness requires “an expansive
and flexible approach.” KSR, 550 U.S. at 415. Bell seems
to argue that single-reference obviousness requires a more
rigid test that looks to the preferred embodiment—or in
Bell’s words: “final device”—of the primary reference and
requires the Board to “identify any reason(s) to abandon its
key features.” Bell Principal Br. 24–29. However, rigid
approaches to the question of obviousness have repeatedly
been rejected. See KSR, 550 U.S. at 415; see also LKQ
Corp. v. GM Glob. Tech. Operations LLC, 102 F.4th 1280,
1293 (Fed. Cir. 2024). We therefore disagree with Bell that
the Board somehow legally erred in its single-reference
obviousness analysis of Chin. The remaining questions are
therefore ones of fact, i.e., the scope and content of the prior
art and differences between the prior art and the claims at
issue, reviewed for substantial evidence. See Graham v.
John Deere Co., 383 U.S. 1, 17–18 (1966).
The Board’s findings of fact with respect to Chin were
supported by substantial evidence. The Board determined
that Chin discloses the key limitation of claim 1 that
requires “cutouts formed in the second electrically
conductive layer for reducing parasitic capacitance,” ’340
patent at col. 6, ll. 44–46, because “Chin expressly states
that it includes [holes in the second electrically conductive
layer] to reduce the corresponding pad’s parasitic
capacitance,” ’340 Decision, J.A. 34. This conclusion was
not unreasonable. In fact, the very first sentence of the
detailed description of Chin states “[a] landing pad’s
parasitic capacitance may be reduced by forming patterned
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BELL SEMICONDUCTOR LLC v. NXP B.V. 5
holes in one or more reference potential layers below the
landing pad.” Chin at col. 3, ll. 45–47. The Board also
considered Bell’s arguments regarding the additional
disclosures of Chin and correctly rejected them. See ’340
Decision, J.A. 35–38 (“Patent Owner’s arguments
regarding the ‘second half of Chin’s methodology’ are
misplaced.”). The Board’s finding that Chin teaches the
key limitation of claim 1 was therefore supported by
substantial evidence.
Similarly, the Board’s finding that a person of ordinary
skill in the art would have understood that Chin “expressly
suggests implementing its invention in an [integrated
circuit] package substrate” was not unreasonable. ’340
Decision, J.A. 21. Chin states that its invention is
applicable to “multi-layered substrates,” Chin at col. 1, l. 8,
“semiconductor implementations,” id. at col. 6, ll. 1–3, and
“a substrate used inside a [Ball Grid Array] package,” id.
at col. 1, ll. 56–58. Relying on those disclosures and expert
testimony, the Board concluded that a person of ordinary
skill in the art would have understood Chin’s disclosure to
apply to an integrated circuit package substrate. ’340
Decision, J.A. 22. That conclusion was reasonable given
the above disclosures of Chin and therefore was supported
by substantial evidence. Because the Board determined
that Chin applied to both integrated circuit package
substrates as well as printed circuit boards, we need not
resolve Bell’s argument that the claims are limited to
integrated circuit package substrates.
We have considered Bell’s remaining arguments and
find them unpersuasive. For the forgoing reasons, we find
that the Board did not err in its unpatentability
determination with respect to claims 1, 4, and 12–17 of the
’340 patent and claims 1, 4, 7, 9–20 of the ’269 patent.
II
On cross-appeal, NXP focuses on the claims that
require the cutouts to be the same size as the contact pads,
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BELL SEMICONDUCTOR LLC v. NXP B.V. 6
see, e.g., ’340 patent at col. 6, ll. 62–64 (“wherein the cutouts
have the same dimensions as the contact pads”), and the
claims that require a specific location for a “routing layer,”
see, e.g., ’340 patent at col. 6, ll. 59–60 (“the second
electrically conductive layer being a routing layer”).
NXP argues that the Board legally erred by not
considering key evidence in Chin that teaches same-sized
cutouts and by misapplying its construction of “routing
layer.” Bell responds that NXP presents new unsupported
arguments on appeal and that the Board’s findings should
be affirmed as supported by substantial evidence. We
agree with Bell.
The Board did not ignore key evidence in Chin that
teaches same-sized cutouts as argued by NXP. The Board
accurately characterized NXP’s expert testimony as
conclusory and correctly pointed out that the only evidence
in NXP’s petition was a citation of their expert’s declaration
that parrots the language of the petition. See ’340 Decision,
J.A. 49; see also J.A. 364, 1599. The Board also correctly
evaluated NXP’s underdeveloped “obvious to try”
argument. See ’340 Decision, J.A. 53–54. Subsequent
attorney argument made for the first time on appeal cannot
save a petition the Board reasonably concluded was
evidentiarily deficient. See Estee Lauder Inc. v. L’Oreal,
S.A., 129 F.3d 588, 595 (Fed. Cir. 1997) (“[A]rguments of
counsel cannot take the place of evidence lacking in the
record[.]” (citation omitted)).
Similarly, the Board did not misapply its construction
of “routing layer” as argued by NXP. In fact, the Board did
not construe “routing layer.” Instead, in discussing an
untimely and forfeited argument by NXP that “routing
layer” was non-limiting, the Board merely stated that
“‘routing layer’ is limiting and requires at least one routing
trace.” ’340 Decision, J.A. 44–45. And even if that was a
construction of “routing layer,” NXP fails to persuasively
explain how that construction changes the Board’s finding
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BELL SEMICONDUCTOR LLC v. NXP B.V. 7
of a lack of motivation to relocate Chin’s routing layer to
the location required by the claims. See id. at J.A. 42–44.
The Board’s finding that Chin does not teach or disclose the
routing layer location limitations was therefore supported
by substantial evidence.
We have considered NXP’s remaining arguments and
find them unpersuasive. For the forgoing reasons, we find
that the Board did not err in finding that claims 2, 3, 5, 6,
11, and 18 of the ’340 patent and 2, 3, 5, 6, and 8 of the ’269
patent had not been shown to be unpatentable. NXP does
not appeal the Board’s findings with respect to claims 7–10
and 19 of the ’340 patent, which the Board also found had
not been shown to be unpatentable.
CONCLUSION
Having fully considered the parties’ arguments, we
affirm the Board’s determinations in IPR2021-000966 and
IPR2021-000967.
AFFIRMED
COSTS
No costs.
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