Trials@uspto.gov Paper 28
`Tel: 571-272-7822 Entered: November 30, 2015
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.
`(TSMC) and SAMSUNG ELECTRONICS CO., LTD,
`Petitioner,
`
`v.
`
`DSS TECHNOLOGY MANAGEMENT, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-010301
`Patent 5,652,084
`_____________
`
`
`
`Before ERICA A. FRANKLIN, JACQUELINE WRIGHT BONILLA, and
`KRISTINA M. KALAN, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`1 Case IPR2014-01493 has been joined with this proceeding.
`
`

`
`IPR2014-01030
`Patent 5,652,084
`
`I.
`
`INTRODUCTION
`A. Background
`Taiwan Semiconductor Manufacturing Company, Ltd. (“TSMC”)
`filed a Petition to institute an inter partes review of claims 1–16 of U.S.
`Patent No. 5,652,084 (Ex. 1001, “the ’084 patent”). Paper 1 (“Pet.”). DSS
`Technology Management, Inc. (“Patent Owner”) filed a Preliminary
`Response. Paper 6 (“Prelim. Resp.”). On December 31, 2014, we instituted
`trial as to claims 1–12, 15, and 16 of the ’084 patent. Paper 9 (“Dec.”).
`
`A different party, Samsung Electronics Co., Inc. (“Samsung”), filed a
`Petition for inter partes review of the ’084 patent, which Petition was
`accorded a filing date of September 12, 2014. Case IPR2014-01493, Paper
`1, Paper 4, see also Paper 7 (Corrected Petition for Inter Partes Review filed
`October 3, 2014). On January 29, 2015, Samsung also filed a Motion for
`Joinder to join the case with the previously instituted proceeding in Taiwan
`Semiconductor Mfg. Co. v. DSS Tech. Mgmt., Inc., Case IPR2014-01030.
`Case IPR2014-01493, Paper 10. On February 24, 2015, we instituted trial in
`IPR2014-01493 and joined the case with Case IPR2014-01030. Case
`IPR2014-01493, Paper 12; Case IPR2014-01030, Paper 15.
`During trial, Patent Owner filed a Patent Owner Response (Paper 18,
`“PO Resp.”), which was accompanied by a Declaration from Dr. Chris A.
`Mack (Ex. 2007). TSMC and Samsung (collectively, “Petitioner”) filed a
`Reply to the Patent Owner Response. Paper 22 (“Reply”). An oral hearing
`was held on August 12, 2015. A transcript of the consolidated hearing has
`been entered into the record. Paper 27 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`
` 2
`
`
`
`
`
`

`
`IPR2014-01030
`Patent 5,652,084
`
`We determine that Petitioner has shown by a preponderance of the evidence
`that claims 1–12, 15, and 16 of the ’084 patent are unpatentable.
`B. Related Proceedings
`The parties indicate that the ’084 patent is involved in the following
`district court proceeding: DSS Technology Mgmt., Inc. v. Taiwan
`Semiconductor Mfg. Co., 2-14-CV-00199 (E.D. Tex.) (the “related
`proceeding”). Pet. 1; Paper 4, Related Matters, 2.
`C. The ’084 Patent
`The ’084 patent, titled “Method for Reduced Pitch Lithography,”
`issued on July 29, 1997. The ’084 patent relates to a lithographic patterning
`process using multiple exposures to provide for relatively reduced pitch for
`features of a single patterned layer. Ex. 1001, Abstract.
`Figure 1, reproduced below, illustrates an exemplary process:
`
`
`
` 3
`
`
`
`
`
`

`
`IPR2014-01030
`Patent 5,652,084
`
`Figure 1 illustrates, in flow diagram form, one lithography method for
`semiconductor fabrication. Id. at 2:7–8.
`Figure 5, reproduced below, illustrates a product of the method
`illustrated in Figure 1:
`
`
`Specifically, Figure 5 shows a cross-sectional view of a semiconductor
`wafer as a result of the method of Figure 1. Id. at 2:20–22, 7:36–37. After
`completion of steps 110 and 120 of Figure 1, first patterned layer 232 is
`formed. Id. at 4:31–34. Following completion of steps 130 and 140 of
`Figure 1, second patterned layers 251 and 253 are formed. Id. at 6:51–53.
`As a result of the method of Figure 1, a single patterned layer is formed over
`layer 210 as illustrated in Figure 5. Id. at 7:36–37.
`D. Illustrative Claims
`Of the instituted claims, claims 1 and 15 are independent. As to the
`remaining instituted claims, claims 2–12 directly depend from claim 1, and
`claim 16 depends from claim 15.
`Claim 1 of the ’084 patent is illustrative of the claims at issue:
`1. A lithography method for semiconductor fabrication using a
`semiconductor wafer, comprising the steps of:
`(a) forming a first imaging layer over the semiconductor wafer;
`(b) patterning the first imaging layer in accordance with a first
`pattern to form a first patterned layer having a first feature;
`(c) stabilizing the first patterned layer;
`
` 4
`
`
`
`
`
`

`
`IPR2014-01030
`Patent 5,652,084
`
`
`(d) forming a second imaging layer over the first pattern layer;
`and
`(e) patterning the second imaging layer in accordance with a
`second pattern to form a second patterned layer having a
`second feature distinct from the first feature, wherein the
`second patterned layer and the first patterned layer form a
`single patterned layer, and wherein the first and second
`features which are formed relatively closer to one another
`than is possible through a single exposure to radiation.
`Ex. 1001, 13:6–24.
`
`E. Prior Art Supporting Instituted Unpatentability Grounds
`1. Japanese Patent App. No. H04-71222, published
`March 5, 1992 (“Jinbo”) (Ex. 1011) (Ex. 1004).2
`2. US Patent No. 4,931,351, issued June 5, 1990
`(“McColgin”) (Ex. 1006).
`3. US Patent No. 4,548,688, issued October 22, 1985
`(“Matthews”) (Ex. 1007).
`
`F. Instituted Unpatentability Grounds
`We instituted an inter partes review of claims 1–12, 15, and 16 of the
`’084 patent on the following grounds. Dec. 19.
`References
`Basis
`Jinbo
`§ 102(b)
`
`Claims Challenged
`1–8, 12, 15, and 16
`
`Jinbo and McColgin
`
`Jinbo and Matthews
`
`§ 103(a)
`
`§ 103(a)
`
`9
`
`10 and 11
`
`
`
`
`2 Petitioner relies on a certified English translation of Jinbo submitted as
`Exhibit 1004 (in original and corrected versions). All references to Jinbo in
`this Decision refer to the corrected version of Exhibit 1004.
`
` 5
`
`
`
`
`
`

`
`IPR2014-01030
`Patent 5,652,084
`
`II. ANALYSIS
`For the challenged claims, Petitioner must prove unpatentability by a
`preponderance of the evidence. 35 U.S.C. § 316(e). We begin with a claim
`construction analysis, and then follow with specific analysis of the prior art.
`A. Claim Construction
`The subject patent expired on or about December 22, 2014. PO Resp.
`9; Reply 2 n.2; Ex. 1001. We construe expired patent claims according to
`the standard applied by the district courts. See In re Rambus, Inc., 694 F.3d
`42, 46 (Fed. Cir. 2012). Specifically, we apply the principles set forth in
`Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). “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). Only those terms
`which are in controversy need to be construed, and only to the extent
`necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`Specifically, words of a claim are generally given their ordinary and
`customary meaning as understood by a person of ordinary skill in the art at
`the time of the invention, in light of the language of the claims, the
`specification, and the prosecution history of record. Phillips, 415 F.3d at
`1312–14. We do not apply a presumption of validity, and we evaluate
`Petitioner’s burden of proof under the preponderance of evidence standard.
`Cisco Sys., Inc. v. AIP Acquisition, LLC, Case IPR2014-00247, Paper 17,
`slip op. at 3–4 (PTAB June 26, 2014).
`
` 6
`
`
`
`
`
`

`
`IPR2014-01030
`Patent 5,652,084
`
`
`1. Second pattern
`As discussed by the parties, in our Decision to Institute, we
`interpreted the term “second pattern” as “any suitable pattern in accordance
`with which the second imaging layer is selectively irradiated.” Dec. 7–8. In
`other words, the second pattern can be any geometric pattern, including a
`pattern the same as the first pattern, provided that the second pattern is a
`separate element. Id. at 8.
`Both Patent Owner and Petitioner generally agree with the claim
`construction of the term “second pattern” as adopted in our Decision to
`Institute. PO Resp. 10; Reply 2–4. Patent Owner agrees with the
`construction insofar as it requires that the first and second patterns are two
`separate individual elements that are not one and the same. PO Resp. 10.
`Patent Owner, however, proposes that the Board modify its construction as
`follows: “any suitable pattern in accordance with which the second imaging
`layer is selectively irradiated…provided that the second pattern is a separate
`element and is not a duplicate of the first pattern.” Id. at 19.
`Petitioner replies that Patent Owner’s new proposed construction
`attempts to “read in a difference between the first and second patterns that
`the claim language does not require and that actually contradicts the totality
`of the intrinsic evidence.” Reply 3. Petitioner notes that, in the related
`proceeding, the district court construed the claim terms as follows: “‘first
`pattern’ to mean ‘a pattern in accordance with which the first imaging layer
`is selectively irradiated’” and “‘second pattern’ to mean ‘a pattern in
`accordance with which the second imaging layer is selectively irradiated.’”
`Id. at 6 (citing Ex. 1016, 18).
`The rationale of the district court, cited by Petitioner, is as follows:
`
` 7
`
`
`
`
`
`

`
`IPR2014-01030
`Patent 5,652,084
`
`
`[Patent Owner] would have this Court import an embodiment
`from the specification. Such a conclusion is wrong for multiple
`reasons. First, there is no disavowal or clear disclaimer of the
`well understood claim language. In contrast, the specification
`clearly states repeatedly that “any suitable pattern of opaque
`and clear features that may depend, for example, on the desired
`pattern to be formed in [the] imaging layer.” 3:59–62; 6:23–25;
`8:11–14; 8:65–9:1; 10:61–64, and 11:49–52. In this regard, the
`specification could not be clearer: a particular pattern is not
`required for the first and second patterns. Second, it is not even
`clear that in the exemplary specification embodiments, the first
`and second patterns are different. For example, the first and
`second patterns shown in Figures 2–5, 7–11 and 13–16,
`respectively, may each be the same pattern, just shifted
`horizontally.
`Id. at 17 (citing Ex. 1016, 17). Although we are not bound by the
`construction or reasoning of the district court, which was rendered after we
`issued our Decision to Institute but before oral hearing, we have considered
`it. As discussed, the ’084 patent has expired, and we apply the same
`standard for claim construction as the district court. Accordingly, we do not
`disregard the analysis and conclusions of a court applying the same claim
`construction standard to the same claim term in a concurrent proceeding
`concerning the same patent. Power Integrations, Inc. v. Lee, 797 F.3d 1318,
`1326–1327 (Fed. Cir. 2015) (discussing Board’s error in declining to address
`or acknowledge the district court’s claim construction).
`In further support of its argument, Petitioner cites to the prosecution
`history of a divisional application, in which then-applicant Patent Owner
`amended a claim to require that the first and second patterns be “different.”
`Reply 10 (citing Ex. 1018, 84, 87). Petitioner notes that the Examiner
`rejected the amendment under 35 U.S.C. § 112, finding that there was
`inadequate written description support in the specification. Id. (citing
`
` 8
`
`
`
`
`
`

`
`IPR2014-01030
`Patent 5,652,084
`
`Ex. 1018, 101). Petitioner further notes that Patent Owner’s reliance on the
`abstract’s disclosure of “two separate patterns” refers to a separate,
`unclaimed embodiment that was subject to a restriction requirement, and not
`elected. Id. at 11–12. Petitioner characterizes this argument as responsive to
`Patent Owner’s argument in the Patent Owner Response that the first and
`second patterns must be different. Tr. 14:16–21. We consider this argument
`together with the totality of the evidence presented.
`Patent Owner argues that the second pattern cannot be a duplicate of
`the first pattern, citing case law in support of the proposition that the terms
`“first” and “second” signify the presence of two structurally different
`elements. PO Resp. 12–13. Petitioner disputes Patent Owner’s
`interpretations of the supporting case law. Reply 12–15. On this subject, we
`agree that the terms “first” and “second” commonly are used to distinguish
`between repeated instances of an element or limitation, and need not refer to
`structurally different elements. Free Motion Fitness, Inc. v. Cybex Int’l,
`Inc., 423 F.3d 1343, 1348 (Fed. Cir. 2005); see also Ex. 1019 (Reporter’s
`Transcript of Claim Construction Hearing, March 3, 2015) 36:6–18.
`Finally, Patent Owner argues that interpreting the first and second
`patterns as duplicates either renders the patent inoperable, or requires
`additional steps outside the disclosure (PO Resp. 13); and that the disclosure
`of the ’084 patent supports that the two patterns are not duplicates of one
`another. Id. at 16.
`Petitioner disagrees with Patent Owner’s inoperability argument,
`citing Patent’s Owner’s expert testimony in support of the proposition that
`shifting and aligning a wafer relative to a mask is a well-known technique in
`lithographic patterning. Reply 16–17 (citing Ex. 1017, 64:11–21).
`
` 9
`
`
`
`
`
`

`
`IPR2014-01030
`Patent 5,652,084
`
`Regarding the additional steps argument, the claim language employs the
`term “comprising,” meaning that other steps or elements may be present in
`the claim. Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir.
`1997); Tr. 21:7–17.
`The specification of the ’084 patent provides: “Any suitable
`lithographic patterning technique may be used and may depend, for
`example, on the material used for” the imaging layer. Ex. 1001, 6:14–16.
`The specification and claims together, therefore, allow for alternate, known
`techniques of lithographic patterning, such as shifting a wafer relative to a
`mask. Reply 16; Jinbo 5. Patent Owner’s expert, Dr. Mack, agreed that
`both aligning and shifting a mask relative to a wafer were standard in the
`industry at the time of the ’084 patent. Reply 16–17 (citing Ex. 1017,
`64:11–21).
`In sum, the parties, the district court, and this panel all appear to agree
`that the “claim terms ʻa first pattern’ and ʻa second pattern’ must be
`interpreted as two separate individual elements,” meaning they are separate,
`i.e., not “one and the same.” We are not persuaded, however, to construe the
`second pattern as a geometric pattern that is “different” from the first
`pattern, or as “not a duplicate of the first pattern.” See Free Motion Fitness,
`supra.
`The specification provides: “The second mask may include any
`suitable pattern of opaque and clear features that may depend, for example,
`on the desired pattern to be formed in imaging layer 240.” Ex. 1001, 6:23–
`25 (emphasis added). We note that the second pattern must be “suitable,” in
`that the claims require that the second imaging layer be patterned in
`accordance with a second pattern “to form a second patterned layer having a
`
`10
`
`
`
`

`
`IPR2014-01030
`Patent 5,652,084
`
`second feature (distinct from the first feature).” If use of the second pattern
`did not result in a second patterned layer having a second feature, it would
`not be suitable. The second pattern nevertheless may be different from the
`first pattern, i.e. it may be a separate element, in certain aspects, such as the
`order in which it is used (claims 1, 15) and its use to generate a second
`feature (Ex. 1001, Figs. 5, 11, 16). The geometry of the second pattern,
`however, is not necessarily different from the first pattern. See, e.g.,
`Figs. 7–11, 13–16. Thus, the second pattern is a separate element, but need
`not be further defined as Patent Owner urges.
`Accordingly, we construe the term “second pattern” as “any suitable
`pattern in accordance with which the second imaging layer is selectively
`irradiated.”
`2. Additional Claim Terms
`In the Decision to Institute, we also construed the term “stabilizing” as
`“performing any process that renders a material able to withstand subsequent
`lithographic processing steps,” and the term “a second feature distinct from
`the first feature” as “a second feature that is a separate element from the first
`feature.” Dec. 6–9. The parties did not address these constructions in the
`Patent Owner Response and Petitioner’s Reply. Based on the complete
`record now before us, we see no reason to alter our earlier constructions, and
`maintain the constructions for this Final Written Decision.
`B. Anticipation by Jinbo
`We have reviewed the Petition, the Patent Owner Response, and
`Petitioner’s Reply, as well as the evidence presented by both parties in
`support of their arguments.
`
`
`11
`
`
`
`

`
`IPR2014-01030
`Patent 5,652,084
`
`
`1. Jinbo
`Jinbo discloses “a pattern forming method used in the process of
`manufacturing semiconductor devices or the like.” Ex. 1004, 2. Jinbo states
`that a first resist pattern and a second resist pattern are arranged in a
`prescribed relationship on a substrate (for example, a space of the second
`resist pattern is arranged in an area corresponding to a space section of the
`first resist pattern on the substrate) for forming resist patterns, and the
`patterns can become the final resist pattern. Id. at 3. Jinbo’s exemplary
`process includes forming a first resist on a substrate (id. at 4), using a mask
`having a line and space pattern to expose the first resist to exposure light to
`create a first resist pattern 13b (id. at 4–5), insolubilizing the first resist
`pattern (id. at 5), forming a second resist (id.), and using a mask to form a
`second resist pattern 15a (id.). Together the first resist pattern 13b and
`second resist pattern 15a form a resist pattern 17. Id.
`Jinbo’s Figure E, reproduced below, illustrates an exemplary product
`of such a process:
`
`
`Figure E depicts the product of Jinbo after second resist developing. Id.
`
`
`12
`
`
`
`

`
`IPR2014-01030
`Patent 5,652,084
`
`
`2. Arguments
`Petitioner challenges claims 1–8, 12, 15, and 16 as anticipated under
`35 U.S.C. § 102(b) by Jinbo. Pet. 18–29. Petitioner argues that Jinbo
`discloses every element of claim 1, relying inter alia on Jinbo Figures B, D,
`and E, and on the declaration of Richard A. Blanchard, Ph.D. Pet. 19–24,
`Ex. 1009. Petitioner also argues that Jinbo discloses every element of
`independent claim 15, referring to its claim 1 arguments. Id. at 28–29. With
`respect to claims 2–8, 12, and 16, Petitioner argues that Jinbo discloses each
`limitation of those dependent claims. Id. at 24–28, 29.
`Patent Owner argues that Jinbo does not explicitly disclose the
`limitation of patterning the second imaging layer in accordance with a
`second pattern. PO Resp. 20. Patent Owner maintains that the ’084 patent
`claims patterning two imaging layers “in accordance with two separate
`patterns, whereas Jinbo uses a single pattern and requires shifting the wafers
`between the patterning steps.” Id. at 21. Patent Owner interprets our finding
`that Jinbo reasonably supports a reading that “a mask” could be any suitable
`mask as “a testament to the fact that Jinbo does not expressly disclose a
`‘second pattern.’” Id. at 22.
`Patent Owner also argues that Jinbo does not inherently disclose a
`second pattern in accordance with which the second resist layer is patterned.
`Id. at 23. Patent Owner points to Jinbo’s technique of shifting the wafer
`stage so that the spaces of the mask will be projected on the spaces of first
`resist pattern 13b as illustrating that the “second pattern” limitation is not
`necessarily present in Jinbo. Id.
`Petitioner responds that, even if Jinbo uses the same mask in both
`patterning steps, “the use of the same mask in the second patterning step
`
`13
`
`
`
`

`
`IPR2014-01030
`Patent 5,652,084
`
`does not mean that the second imaging layer is irradiated with the same
`‘pattern.’” Reply 18. In other words, Petitioner argues, “‘pattern’ in the
`claims is not synonymous with mask.” Id. Petitioner thus argues that “Jinbo
`teaches patterning a first imaging (resist) layer using a first pattern and
`separately patterning a second imaging (resist) layer using a second pattern.”
`Reply 22. Regarding pattern placement and pattern timing, Petitioner notes
`that Patent Owner’s expert, Dr. Mack, agreed that “a pattern that’s placed in
`a different position is a different pattern” and that Jinbo has a second
`patterning step that occurs later in time than the first patterning step.” Id. at
`20–21 (citing Ex. 1017, 60:2–15; 84:24–85:3). Regardless of which claim
`construction we adopt, Petitioner argues, Jinbo still teaches the “second
`pattern” claim element, because “Jinbo clearly teaches that the patterns
`being exposed on the first and second resists are indeed different” and
`“Jinbo teaches that the second pattern is different from the first pattern in the
`order in which it is formed.” Id. at 22.
`We construe the claim term “second pattern” as “any suitable pattern
`in accordance with which the second imaging layer is selectively irradiated,”
`as discussed above. Jinbo selectively irradiates a second imaging layer,
`resulting in a second patterned layer having a second feature distinct from
`the first feature (claim 1) or a second feature, where the first and second
`features do not overlap (claims 15, 16). Ex. 1004, 4–5. Jinbo teaches a
`second patterned layer, and thus, a suitable pattern, i.e. a second pattern, that
`was used to make the second patterned layer. Id. As in the claims, Jinbo’s
`second pattern is used after the first pattern, and use of the second pattern
`results in a second patterned layer having a second feature distinct from the
`first feature. Jinbo creates features 13b using a first pattern, and then creates
`
`14
`
`
`
`

`
`IPR2014-01030
`Patent 5,652,084
`
`distinct, non-overlapping features 15a using a second pattern. Id. Under our
`claim construction, therefore, Jinbo discloses a second pattern.
`The parties have not offered any proposed constructions for the term
`“mask.” We note that the term “mask” appears in two claims, claim 6: “The
`method of claim 1, wherein the patterning step (b) includes the step of
`exposing a portion of the first imaging layer to radiation through a mask,”
`and in claim 7: “The method of claim 1, wherein the patterning step (e)
`includes the step of exposing a portion of the second imaging layer to
`radiation through a mask.” Those claims do not recite “first mask” or
`“second mask,” but rather “a mask.”
`“The doctrine of claim differentiation ‘create[s] a presumption that
`each claim in a patent has a different scope.’ The difference in meaning and
`scope between claims is presumed to be significant ‘[t]o the extent that the
`absence of such difference in meaning and scope would make a claim
`superfluous.’” Free Motion Fitness, 423 F.3d at 1351 (citations omitted).
`Patent Owner does not address directly Petitioner’s assertions that Jinbo
`anticipates claims 6 and 7. Based upon our review, the use of the term “a
`mask” in claims 6 and 7 supports Petitioner’s argument that “pattern is not
`synonymous with mask.” In addition, whether Jinbo discloses a single
`mask, or multiple masks, does not affect our analysis relative to Jinbo’s
`disclosure of a second pattern. Jinbo’s disclosure of a mask, or multiple
`masks, discloses “a mask,” as recited in claims 6 and 7.
`Patent Owner argues that the ’084 patent “could be a single mask
`having multiple patterns and then the mask might be shifted to expose a
`different pattern, but that is not what’s taught in Jinbo.” Tr. 37:8–12. Patent
`Owner instead argues that Jinbo shifts the wafer stage to create its second
`
`15
`
`
`
`

`
`IPR2014-01030
`Patent 5,652,084
`
`patterned layer, and thus does not have a “second pattern,” but rather, “the
`exact same pattern.” Id. at 37:23. We are not persuaded.
`The claims and the specification allow broadly for any suitable
`lithographic technique, including shifting the wafer stage, so Jinbo’s
`technique is consistent with those claim elements. Jinbo creates a first
`patterned layer, and then creates a second patterned layer with features
`distinct from those of the first patterned layer. Ex. 1004, 4–5. In order to do
`so, it uses a pattern that effects this result, notwithstanding the mask used.
`That pattern is a separate element in time and in space, and therefore, is a
`second pattern that is not the exact same pattern as the first pattern.
`Notwithstanding Patent Owner’s argument and cited evidence, we are
`persuaded by Petitioner’s argument and supporting evidence that Jinbo
`expressly discloses both a first pattern and a second pattern.
`We also have reviewed the arguments presented in the Petition and
`the supporting evidence regarding the anticipation of the remaining elements
`of claims 1–8, 12, 15, and 16, which were not expressly disputed by Patent
`Owner in its Response. Patent Owner has not rebutted Petitioner’s showing
`that Jinbo discloses a second pattern, nor Petitioner’s showing regarding
`anticipation by Jinbo of the remaining elements of the independent and
`dependent claims challenged in this ground. We find that Petitioner has
`established, by a preponderance of the evidence, that Jinbo anticipates
`claims 1–8, 12, 15, and 16.
`C. Obviousness Based on Jinbo and McColgin
`Petitioner challenges claim 9 as unpatentable under 35 U.S.C. § 103
`over Jinbo in view of McColgin. Pet. 32–34. Claim 9 further limits the
`stabilizing step of claim 1 with the language “wherein the stabilizing step (c)
`
`16
`
`
`
`

`
`IPR2014-01030
`Patent 5,652,084
`
`includes the step of using a silylation technique to stabilize the first
`patterned layer.” Pet. 32. We instituted inter partes review on this ground.
`Dec. 14.
`McColgin teaches a silylation technique that produces resist patterns
`“which have excellent etch resistance and superior thermal and dimensional
`stability.” Ex. 1006, 2:9–12. Petitioner argues that substitution the
`silylation stabilization of McColgin for the plasma stabilization of Jinbo
`“would merely be the simple substitution of known elements to obtain
`predictable results.” Pet. 33. More specifically, Petitioner points to the
`“direct motivation from Jinbo,” i.e. teaching a desire to make the first resist
`layer “insoluble” (Ex. 1004, 5) and encouraging use of different treatment
`methods for making the resist insoluble (id. at 6). Pet. 33.
`Patent Owner argues that claim 9 cannot be obvious because Jinbo
`does not disclose several material limitations of claim 1, from which claim 9
`depends. PO Resp. 25. Patent Owner alleges that “Petitioners failed to
`address the deficiencies of their challenge of claim 1,” and the challenge to
`claim 9 fails at least for this reason. Id.
`We have reviewed the Petition, the Patent Owner Response, and
`evidence in support of each party’s arguments. As previously discussed, we
`are persuaded that Petitioner has demonstrated, by a preponderance of the
`evidence, that Jinbo discloses every element of the independent claims.
`After reviewing of the arguments and evidence presented concerning
`dependent claim 9, we find a preponderance of the evidence establishes that
`Jinbo in combination with McColgin teaches each and every limitation of
`dependent claim 9.
`
`
`17
`
`
`
`

`
`IPR2014-01030
`Patent 5,652,084
`
`
`D. Obviousness Based on Jinbo and Matthews
`Petitioner challenges claims 10 and 11 as unpatentable under
`35 U.S.C. § 103 over Jinbo in view of Matthews. Pet. 34–37. Claim 10
`further limits the stabilizing step (c) of claim 1 to include “exposing the first
`patterned layer to radiation and heating the first patterned layer.” Claim 11
`further limits the stabilizing step (c) of claim 1 to include “exposing the first
`patterned layer to radiation having a wavelength in a range from
`approximately 200 nanometers to approximately 400 nanometers, and
`heating the first patterned layer at a temperature ramped to approximately
`230 degrees Celsius.” We instituted inter partes review on this ground.
`Dec. 16.
`Matthews teaches a technique that is capable of “hardening a positive
`photoresist by exposing a film of photoresist material to UV radiation while
`subjecting the film to elevated temperatures.” Ex. 1007, 2:53–58. In this
`capacity, Petitioner contends that Matthews describes using radiation
`“having wavelengths about 320 nm and below to cause the polymer to cross-
`link.” Pet. 36 (citing Ex. 1007, 3:57–61). In addition, Petitioner contends
`that Matthews discloses that “the temperature of the photoresist is controlled
`during the exposure to radiation,” and that a “typical [temperature] range
`therefor being about 100°–200°C. and more usually, about 120° to about
`200° C.” Pet. 36–37 (citing Ex. 1007, 4:52–57; 5:8–12). Petitioner argues
`that substitution of the hardening process of Matthews for the plasma
`stabilization of Jinbo “would merely be the simple substitution of known
`elements to obtain predictable results.” Pet. 35. Specifically, Petitioner
`points to the “direct motivation from Jinbo,” i.e. teaching a desire to make
`the first resist layer “insoluble” (Ex. 1004, 5) and encouraging use of
`
`18
`
`
`
`

`
`IPR2014-01030
`Patent 5,652,084
`
`different treatment methods for making the resist insoluble (id. at 6). Pet.
`35.
`
`Patent Owner argues that claims 10 and 11 cannot be obvious because
`Jinbo does not disclose all limitations of claim 1. PO Resp. 25. Patent
`Owner alleges that “Matthews does not cure deficiencies of Jinbo,” and thus
`the challenge to claims 10 and 11 fails at least for the same reasons as the
`challenge to Jinbo. Id.
`We have reviewed the Petition, the Patent Owner Response, and
`evidence in support of each party’s arguments. As previously discussed, we
`are persuaded that Petitioner has demonstrated, by a preponderance of the
`evidence, that Jinbo discloses every element of the independent claims.
`After reviewing of the arguments and evidence presented concerning
`dependent claims 10 and 11, we find a preponderance of the evidence
`establishes that Jinbo in combination with Matthews teaches each and every
`limitation of dependent claims 10 and 11.
`
`III. SUMMARY
`Petitioner has demonstrated, by a preponderance of the evidence, that
`claims 1–12, 15, and 16 of the ’084 patent are unpatentable. This is a Final
`Written Decision of the Board under 35 U.S.C. § 318(a).
`
`IV. ORDER
`For the reasons given, it is
`FURTHER ORDERED that claims 1–12, 15, and 16 of the ’084
`patent are unpatentable; and
`
`
`19
`
`
`
`

`
`IPR2014-01030
`Patent 5,652,084
`
`
`FURTHER ORDERED that parties to the proceeding seeking judicial
`review of this final written decision must comply with the notice and service
`requirements of 37 C.F.R. § 90.2.
`
`
`
`
`20
`
`
`
`

`
`IPR2014-01030
`Patent 5,652,084
`
`FOR PETITIONER:
`
`David Odell
`David L. McCombs
`Scott Cunning
`HAYNES AND BOONE, LLP
`david.odell.ipr@haynesboone.com
`david.mccombs.ipr@haynesboone.com
`scott.cunning@haynesboone.com
`
`FOR PATENT OWNER:
`
`Andriy Lytvyn
`Anton J. Hopen
`SMITH & HOPEN, P.A.
`andriy.lytvyn@smithhopen.com
`anton.hopen@smithhopen.com
`
`
`
`
`21