Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
` Paper No. 26
`
`
` Entered: November 16, 2017
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HAMAMATSU CORPORATION,
`Petitioner,
`
`v.
`
`PRESIDENT & FELLOWS OF HARVARD COLLEGE
`Patent Owner.
`____________
`
`Case IPR2016-01143
`Patent 7,884,446 B2
`____________
`
`
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`HARLOW, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`Determining Claims 1–6 and 11 Have Been Shown To Be Unpatentable
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
` Paper No. 26
`
`
` Entered: November 16, 2017
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HAMAMATSU CORPORATION,
`Petitioner,
`
`v.
`
`PRESIDENT & FELLOWS OF HARVARD COLLEGE
`Patent Owner.
`____________
`
`Case IPR2016-01143
`Patent 7,884,446 B2
`____________
`
`
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`HARLOW, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`Determining Claims 1–6 and 11 Have Been Shown To Be Unpatentable
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`
`IPR2016-01143
`Patent 7,884,446 B2
`
`
`
`I.
`INTRODUCTION
`Hamamatsu Corporation (“Petitioner”), filed a Petition requesting an
`inter partes review of claims 1–11 of U.S. Patent No. 7,884,446 B2
`(Ex. 1001, “the ’446 patent”). Paper 1 (“Pet.”). President & Fellows of
`Harvard College, (“Patent Owner”), filed a Preliminary Response to the
`Petition. Paper 6 (“Prelim. Resp.”). We determined that the information
`presented in the Petition demonstrated that there was a reasonable likelihood
`that Petitioner would prevail in challenging claims 1, 2, 4–6 and 11 as
`unpatentable under 35 U.S.C. § 102(b), and in challenging claim 3 as
`unpatentable under 35 U.S.C. § 103(a). Pursuant to 35 U.S.C. § 314, the
`Board instituted trial on November 22, 2016, as to those claims of the
`’446 patent. Paper 7 (“Institution Decision” or “Inst. Dec.”).
`Following our institution, Patent Owner filed a Response to the
`Petition (Paper 10, “PO Resp.”) and Petitioner filed a Reply to the Patent
`Owner Response (Paper 13, “Reply”). An oral hearing was held on July 17,
`2017. The transcript of the hearing has been entered into the record.
`Paper 25 (“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.
`Based on the record before us, we conclude that Petitioner has demonstrated
`by a preponderance of the evidence that claims 1–6 and 11 of the ’446 patent
`are unpatentable.
`
`2
`
`
`
`IPR2016-01143
`Patent 7,884,446 B2
`
`
`
`A. Related Matter
`
`The ’446 patent is asserted against Petitioner in SiOnyx LLC, et al. v.
`Hamamatsu Photonics K.K., et al., Case No. 1:15-cv-13488-FDS
`(D. Mass.). Pet. 1.
`
`B. The ’446 Patent
`
`The ’446 patent is titled “Femtosecond Laser-Induced Formation of
`Submicrometer Spikes on a Semiconductor Substrate.” Ex. 1001, [54].
`The ’446 patent is a division of U.S. Patent Application No. 11/196,929,
`filed on August 4, 2005, now U.S. Patent No. 7,442,629, which is a
`continuation-in-part of U.S. Patent Application Nos. 10/950,248 and
`10/950,230, now U.S. Patent Nos. 7,354,792 and 7,057,256, respectively,
`each of which was filed on September 24, 2004. Id. [60].
`The ’446 patent describes “methods for generating submicron-sized
`features on a semiconductor surface by irradiating the surface with short
`laser pulses” and devices produced by such methods. Id. 1:50–52. In
`discussing the advantages of the claimed invention, the ’446 patent explains
`that although techniques for generating micrometer-sized structures on
`silicon surfaces are well-known, the claimed invention satisfies the need “for
`enhanced methods that allow generating even smaller structures on
`semiconductor surfaces, and particularly on silicon surfaces.” Id. at 1:38–
`46, 1:50–52.
`
`3
`
`
`
`IPR2016-01143
`Patent 7,884,446 B2
`
`
`
`The ’446 patent describes the generated features as substantially
`columnar spikes, that extend from a base to a tip, and “protrude above the
`surface.” Id. at 1:58–60.
`In many embodiments, the average height of the spikes (i.e., the
`average separation between the base and the tip) can be less than
`about 1 micron, and the spikes can have an average width—
`defined, for example, as the average of the largest dimensions of
`cross-sections of the spikes at half way between the base and the
`tip—that ranges from about 100 nm to about 500 nm (e.g., in a
`range of about 100 nm to about 300 nm).
`Id. at 1:60–67.
`Figures 5A and 5B of the ’446 patent are reproduced below.
`
`
`
`Figures 5A and 5B “are scanning electron micrographs of silicon spikes
`formed on a silicon surface viewed at 45° angle relative to a normal to the
`surface, formed by placing the surface in contact with distilled water and
`irradiating it with 100-fs, 400-nm, 60-μJ laser pulses[.]” Id. at 3:38–43. The
`’446 patent explains that the spikes depicted in Figures 5A and 5B “have a
`substantially columnar shape with a typical height of about 500 nm and a
`typical diameter of about 200 nm. They protrude up to about 100 nm above
`the original surface of the wafer.” Id. at 6:8–14.
`4
`
`
`
`IPR2016-01143
`Patent 7,884,446 B2
`
`
`
`C. Illustrative Claim
`
`Claim 1, reproduced below, is the sole independent challenged claim,
`and is illustrative of the claimed subject matter.
`1.
`A semiconductor substrate, comprising
`a surface layer having at least a portion exhibiting an
`undulating
`topography characterized by a plurality of
`submicron-sized features having an average height less than
`about 1 micrometer and an average width in a range of about
`100 nm to about 500 nm.
`Ex. 1001, 8:31–36.
`
`D. Instituted Grounds of Unpatentability
`
`We instituted inter partes review in this proceeding based on the
`following patentability challenges:
`
`Claim(s)
`1, 2, 4–6, and 11
`3
`
`Basis
`§ 102(b)
`§ 103(a)
`
`Reference(s)
`Uematsu1
`Uematsu
`
`Petitioner relies on the Declaration of Shukri J. Souri, Ph.D. (“Souri
`Declaration,” Ex. 1007) to support its Petition and Reply.
`Patent Owner does not rely on expert testimony to support its Patent
`Owner Response to the Petition. Patent Owner does, however, rely on the
`Declaration of Dr. Ezekiel Kruglick, Ph.D. (“Kruglick Declaration,”
`
`
`1 Uematsu et al., JP H06 244444, published September 2, 1994 (Ex. 1004).
`Petitioner submitted a certified English translation of Uematsu as Ex. 1005.
`Our citations to Uematsu are to the English translation.
`5
`
`
`
`IPR2016-01143
`Patent 7,884,446 B2
`
`
`Ex. 2001) to support its Patent Owner Preliminary Response. See Tr. 21:14–
`22:15 (explaining that Patent Owner relies on the Kruglick Declaration in
`Patent Owner’s Preliminary Response, but not the Patent Owner Response).
`
`II. DISCUSSION
`
`A. Level of Skill in the Art
`
`Petitioner contends that a person of ordinary skill in the art for the
`’446 patent would have had “at least a bachelor’s degree in material science,
`physics, or electrical engineering, and at least one year of work experience
`in semiconductor processing.” Pet. 7–8 (citing Ex. 1007 ¶ 15). Patent
`Owner does not dispute Petitioner’s proposal, or otherwise address the level
`of skill in the art at the time of invention of the ’446 patent in its Response.
`See generally, PO Resp. In addition, in its Preliminary Response, Patent
`Owner applies the level of skill in the art set forth in the Petition. Prelim.
`Resp. 6; Ex. 2001 ¶¶ 11–12.
`We agree with Petitioner that an artisan of ordinary skill at the time of
`invention of the ’446 patent would have had at least a bachelor’s degree in
`material science, physics, or electrical engineering, and at least one year of
`work experience in semiconductor processing, with the understanding that
`the level of skill is also reflected in the prior art of record. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). In addition, we have
`reviewed the credentials of Dr. Souri (Ex. 1007), and we consider him to be
`qualified to provide his opinion on the level of skill and the knowledge of a
`person of ordinary skill in the art at the time of the invention.
`
`6
`
`
`
`IPR2016-01143
`Patent 7,884,446 B2
`
`
`
`B. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable interpretation in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2144–45 (2016) (upholding the use of the
`broadest reasonable interpretation standard). Under the broadest reasonable
`interpretation standard, claim terms are presumed to have their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art in the context of the entire disclosure. In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007). Under this standard, we may take
`into account definitions or other explanations provided in the written
`description of the specification. In re Morris, 127 F.3d 1048, 1054 (Fed.
`Cir. 1997). Any special definition for a claim term must be set forth in the
`specification with reasonable clarity, deliberateness, and precision. In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Only those terms that are in
`controversy need be construed, and only to the extent necessary to resolve
`the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci.
`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`1. “undulating topography”
`Independent claim 1 recites, in pertinent part, “a surface layer having
`at least a portion exhibiting an undulating topography characterized by a
`plurality of submicron-sized features having an average height less than
`about 1 micrometer and an average width in a range of about 100 nm to
`7
`
`
`
`IPR2016-01143
`Patent 7,884,446 B2
`
`
`about 500 nm.” Ex. 1001, 8:32–36 (emphasis added). Because the parties
`did not identify any dispute as to the meaning of the term “undulating
`topography” prior to institution, we did not provide an express construction
`of that term in the Institution Decision. Based on the full record in this
`proceeding, we afford the term “undulating topography” its plain and
`ordinary meaning, which encompasses a wavy surface, and permits, but does
`not require, the non-uniformity or irregularity of the individual features
`within that topography.
`Petitioner contends that the term “undulating topography” is entitled
`to its “plain and ordinary meaning, and as such, no detailed construction[]
`[is] proposed therefor.” Pet. 9.
`Patent Owner does not expressly propose a construction for
`“undulating topography” in the Patent Owner Response. See Tr. 22:7–9
`(“These were not cited in the Patent Owner response. Patent Owner was not
`putting forth a construction for undulating.”). In arguing that Uematsu fails
`to disclose an undulating topography as required by claim 1, however, Patent
`Owner asserts that “[b]y it’s plain meaning, the term ‘undulating’ means
`‘having a wavy surface, edge, or markings.’ MERRIAM-WEBSTER
`DICTIONARY, https://www.merriam-webster.com/dictionary/undulate (last
`visited Jan. 26, 2017). This is confirmed by the specification, which
`describes exemplary surface features as ‘wave-like.’ (Ex. 1001 at col. 7:16–
`19.).” PO Resp. 8.
`In arguing that Petitioner has not shown that Uematsu teaches an
`“undulating topography,” Patent Owner additionally states that “Petitioner
`
`8
`
`
`
`IPR2016-01143
`Patent 7,884,446 B2
`
`
`has not provided any explanation or support to show that that [sic] these
`‘pyramids having a regular width and largeness’ constitute an ‘undulating
`topography’”. Id. at 9. In this regard, Patent Owner contends that
`statements made by Petitioner’s parent company during the prosecution of
`its own patents in November 2013 demonstrate that “regular features can
`perform differently than irregular features.” Id. at 9–10, n.1.
`In reply, Petitioner asserts that Patent Owner has not demonstrated
`that an ordinarily skilled artisan would have understood, at the time of
`invention, that “undulating topography” meant “a topography ‘having a
`wavy surface, edge, or markings’ or that is ‘wave-like.’” Reply 6–7.
`Petitioner further contends that “wavy” and “wave-like” each encompass
`“regularly-spaced pyramids.” Id. at 8. Petitioner additionally submits that
`Patent Owner’s discussion of Petitioner’s parent company’s statements in
`2013 concerning patent applications that “do not utilize or define the term at
`issue” should be disregarded. Id. at 8, n.2.
`During oral hearing, Patent Owner indicated that, although it had not
`previously provided a construction for “undulating topography,” if it were
`required to provide one, Patent Owner would propose that “undulating
`topography” be construed to mean “a plurality of non-uniform irregular
`features distributed to provide a wave-like topography.” Tr. 17:19–24.
`Patent Owner went on to identify the portions of the ’446 patent
`specification relating to Figures 5–7 as supporting a construction of
`“undulating topography” that requires that the claimed submicron-sized
`features be non-uniform and irregular. See, e.g., id. at 32:12–16. Patent
`
`9
`
`
`
`IPR2016-01143
`Patent 7,884,446 B2
`
`
`Owner additionally stated that certain portions of the Kruglick Declaration,
`relied on in its Preliminary Patent Owner Response, but not in its Patent
`Owner Response, support its proposed construction. Id. at 21:14–22:1.
`On the record before us, we conclude that the term “undulating
`topography” should be afforded its plain and ordinary meaning, which
`encompasses a wavy surface, and permits, but does not require, the
`non-uniformity or irregularity of the individual features, within that
`topography.
`As an initial matter, we observe that Patent Owner’s contention that
`“undulating topography” requires non-uniformity and/or irregularity of the
`claimed submicron-sized features, is improper, as it was impermissibly
`raised for the first time during oral hearing. See Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012) (“No new evidence or
`arguments may be presented at the oral argument.”). Accordingly, we need
`not address this contention. Nevertheless, for the reasons set forth below,
`we determine that even had Patent Owner timely raised this argument, the
`broadest reasonable interpretation of “undulating topography” does not
`require that the claimed submicron-sized features be non-uniform or
`irregular.
`Turning to the parties’ arguments, we note that there is no genuine
`dispute that the plain and ordinary meaning of “undulating topography”
`encompasses a wavy surface. See e.g., MERRIAM-WEBSTER
`DICTIONARY, https://www.merriam-webster.com/dictionary/undulate (last
`visited Jan. 26, 2017). Indeed, although Petitioner takes issue with certain
`
`10
`
`
`
`IPR2016-01143
`Patent 7,884,446 B2
`
`
`aspects of Patent Owner’s argument, Petitioner does not affirmatively
`dispute that the plain and ordinary meaning of “undulating topography”
`includes a wavy surface. See Reply 4–8. Moreover, because we find, as set
`forth below, that Uematsu discloses a wavy surface, we need not decide
`whether the claim term “undulating topography” requires that the surface in
`question be wavy; it is sufficient for our patentability determination in the
`instant proceeding to conclude that “undulating topography” encompasses
`such morphology. See Nidec Motor, 868 F.3d at 1017.
`With regard to the plain language of the claims, we observe that the
`term “undulating topography” appears only in claim 1 of the ’446 patent,
`which states that the claimed “undulating topography [is] characterized by a
`plurality of submicron-sized features having an average height less than
`about 1 micrometer and an average width in a range of about 100 nm to
`about 500 nm.” The use of the term “undulating topography” in claim 1 is
`consistent with the plain and ordinary meaning of that term, which
`encompasses a wavy surface. Furthermore, through its use of the phrase
`“characterized by,” claim 1 identifies the necessary features of an
`“undulating topography,” namely, the presence of a plurality of
`submicron-sized features having certain average dimensions, without
`excluding additional, unrecited aspects of such a topography. See Mars, Inc.
`v. H.J. Heinz Co., L.P., 377 F.3d 1369, 1375–76 (Fed. Cir. 2004) (explaining
`that “[t]he transitional term ‘comprising,’ . . . is synonymous with . . .
`‘characterized by,’ [and] is open-ened and does not exclude additional,
`
`11
`
`
`
`IPR2016-01143
`Patent 7,884,446 B2
`
`
`unrecited elements or method steps.”) (citing the Manual of Patent
`Examining Procedure, 8th ed., rev. 1 § 2111.03 (2003)).
`Notably absent from claim 1, however, is any indication that the
`recited submicron-sized features must be non-uniform or irregular. Indeed,
`although the limitations on the “average height” and “average width” of the
`submicron-sized features leave open the possibility that those features may
`be non-uniform or irregular, such limitations cannot be said to mandate that
`the submicron-sized features must be non-uniform or irregular.
`The specification of the ’446 patent likewise includes only a single
`instance of the term “undulating topography.” In particular, the
`specification discloses:
`In another aspect, the invention provides a semiconductor
`substrate that includes a surface layer having at least a portion
`that exhibits an undulating topography characterized by a
`plurality of submicron-sized features having an average height
`less than about 1 micrometer and an average width in a range of
`about 100 nm to about 500 nm.
`Ex. 1001, 2:32–39. Notably, the specification uses the same language as
`claim 1 to describe the recited “undulating topography,” and is likewise
`consistent with the plain and ordinary meaning of the term, which
`encompasses a wavy surface. Furthermore, like claim 1, the specification is
`devoid of any suggestion that the submicron-sized features that comprise the
`undulating topography must be non-uniform or irregular.
`In this regard, we observe that the specification expressly
`contemplates spikes that are uniform and regular in shape and size. For
`example, the specification discloses that “the submicron-sized features can
`12
`
`
`
`IPR2016-01143
`Patent 7,884,446 B2
`
`
`include a plurality of microstructured spikes, e.g., columnar structures”
`(Ex. 1001, 4:20–22), and elsewhere refers to embodiments in which the
`spikes are “substantially columnar” (see, e.g., id. at 1:58–60). Furthermore,
`the specification states that a given spike “has a height H defined as the
`separation between its base 20 and its tip 22, and a width defined by a
`diameter D of a cross-section” (id. at 4:28–30), and describes an
`embodiment in which “[t]he spikes have a substantially columnar shape with
`a typical height of about 500 nm and a typical diameter of about 200 nm”
`(id. at 6:11–13). In contrast, the specification identifies “irregularly shaped
`spikes” as an exception, requiring a modified definition of width. Ex. 1001,
`4:32–34.
`With respect to the portions of the Kruglick Declaration identified by
`Patent Owner at the oral hearing (see, e.g., Tr. 21:14–22:1), we observe that
`those portions do not address the meaning of the term “undulating
`topography,” or relate to claim 1, in which that term appears (see Ex. 2001
`¶¶ 17–19). Rather, the portions of the Kruglick Declaration on which Patent
`Owner now relies describe the purportedly “fundamentally different
`structural characteristics” of “submicron-sized features produced by
`irradiating the surface of the substrate with short laser pulses as recited in
`claim 7 of the ’446 Patent.” Ex. 2001 ¶ 17 (emphasis added). Because
`Dr. Kruglick focuses his testimony on specification embodiments related to
`claim 7, which recites a particular process for generating the claimed
`semiconductor substrate, and does not address the term “undulating
`topography,” or contend that this testimony is relevant to other, broader
`
`13
`
`
`
`IPR2016-01143
`Patent 7,884,446 B2
`
`
`claims, such as claim 1 (see id. ¶¶ 17–19), we do not discern any basis for
`limiting the meaning of “undulating topography” in view of that testimony.
`Moreover, we note that we have considered the portions of the specification
`of the ’446 patent addressed by Dr. Kruglick, and, although we agree, as
`discussed further below, that those portions indicate that the construction of
`“undulating topography” should allow for submicron-sized features that are
`non-uniform or irregular, they do not support importing into the claims a
`requirement that such features be non-uniform or irregular.
`Concerning the extrinsic evidence that Petitioner’s parent company, in
`November 2013, “acknowledged that regular features can perform
`differently than irregular features during prosecution of their own patents on
`textured silicon devices” (PO Resp. 9–10, n.1), we agree with Petitioner that
`because the statements in question were made years after both the filing date
`and priority date for the ’446 patent, and do not relate to the disputed claim
`term, such evidence is not pertinent to the construction of “undulating
`topography” as that term is used in the ’446 patent.
`We also consider the district court’s construction of “undulating
`topography” as “arrangement of features of varying heights and widths”
`(Paper 23,2 22) in determining the broadest reasonable interpretation of that
`term.3 We observe, however, that we are “not generally bound by a prior
`
`2 Papers 23 and 24 each appear to be copies of the Claim Construction
`Memorandum and Order issued in the corresponding district court litigation.
`For convenience, we refer to Paper 23 throughout the Decision.
`
`3 The district court’s Claim Construction Memorandum and Order issued on
`14
`
`
`
`IPR2016-01143
`Patent 7,884,446 B2
`
`
`judicial construction of a claim term.” Power Integrations, Inc. v. Lee, 797
`F.3d 1318, 1326 (Fed. Cir. 2015). In this regard, we note that we are tasked
`to discern the broadest reasonable interpretation of disputed claim terms, and
`thus apply “a different claim construction standard than that applied by a
`district court.” Id. We also observe that the parties’ proposed constructions
`in the district court proceeding are different from those advanced here, and,
`thus, the record differs between the district court and instant inter partes
`review proceedings. Paper 23, 21–22.
`We further observe that the parties did not address whether
`“undulating topography” encompasses a wavy surface in the district court
`proceedings. Paper 23, 21 (“The parties dispute whether the term
`‘undulating topography’ requires variation in both height and width, or
`variation in height alone” of the submicron-sized features). We note,
`however, that the district court’s construction of this term is consistent with
`our understanding that “undulating topography” encompasses a wavy
`surface. See id. at 21–22.
`With respect to the district court’s determination that the specification
`of the ’446 patent discloses embodiments depicting variation in the height
`and/or width of certain submicron-sized features, we agree that the
`embodiments shown in Figures 5A–5C and 6A–6B include examples of
`
`
`September 7, 2017 (Papers 23, 24), subsequent to the conclusion of briefing
`and oral hearing in the instant inter partes review. Patent Owner requested
`to file a copy of that order “without comment,” and we authorized that
`request. Ex. 3001.
`
`15
`
`
`
`IPR2016-01143
`Patent 7,884,446 B2
`
`
`such variation.4 Nevertheless, in view of the plain language of claim 1, as
`well as the portions of the specification discussed in detail above, we
`conclude that although the broadest reasonable interpretation of “undulating
`topography” permits that the recited submicron-sized features may vary in
`height and width, it does not affirmatively require such variation.
`Accordingly, for the reasons set forth above, we conclude that the
`broadest reasonable interpretation of “undulating topography” encompasses
`a wavy surface, and permits, but does not require, non-uniformity or
`irregularity of the individual features within that topography.
`
`2. “protrude above the semiconductor surface
`by a distance”
`Dependent claim 6 recites, in pertinent part, “wherein said spikes
`protrude above the semiconductor surface by a distance in a range of about
`100 nm to about 300 nm.” Ex. 1001, 8:48–50. In the Institution Decision,
`we conclude that the broadest reasonable interpretation of this claim term
`“encompasses spikes that measure from about 100 nm to about 300 nm from
`base to tip.” Inst. Dec. 8–9. We consider anew this claim construction
`based on the full record in this proceeding, and again conclude that the
`broadest reasonable interpretation of “wherein said spikes protrude above
`
`
`4 Because Figures 7A–7J “are scanning electron micrographs of a silicon
`surface irradiated while in contact with distilled water by an increasing
`number of laser pulses” (Ex. 1001, 3:53–55) and not images of the final
`semiconductor substrate product, we are not persuaded that these figures
`depict spikes of varying height and width.
`16
`
`
`
`IPR2016-01143
`Patent 7,884,446 B2
`
`
`the semiconductor surface by a distance in a range of about 100 nm to about
`300 nm” encompasses spikes that measure from about 100 nm to about
`300 nm from base to tip.
`Petitioner contends that claim 6 should be interpreted “as reducing the
`spike heights to a preferred feature size (i.e., spikes 100–300 nm high).”
`Pet. 21. In support of its position, Petitioner’s expert, Dr. Souri, testifies that
`an ordinarily skilled artisan would have understood the claim term
`“semiconductor surface” as referring to “any portion of the semiconductor
`that is in contact with the environment above it, where two different such
`portions may or may not be coplanar” (Ex. 1007 ¶ 70), and thus “may
`interpret the given range of 100 nm to 300 nm as a reduction of the spike
`heights to a preferred feature size” (id. ¶ 69). Dr. Souri identifies the
`following portion of the ’446 patent specification as supporting an
`interpretation of claim 6 as limiting the height of the spikes to a range of
`about 100 nm to about 300 nm:
`the surface layer has a thickness in a range of about 100 nm to
`about 1 micrometer and the submicron-sized features comprise
`spikes each of which extends from a base to tip separated from
`the base by a distance that is less than about 1 micron. For
`example, the spikes can protrude above the semiconductor
`surface by a distance in a range of about 100 nm to about 300 nm.
`Ex. 1001, 2:40–46.
`Patent Owner responds that the claim 6 phrase “protrude above the
`semiconductor surface by a distance” should be construed to mean “extend
`above an original surface of the semiconductor,” rather than the actual
`surface of the claimed semiconductor substrate. PO Resp. 16. Patent Owner
`17
`
`
`
`IPR2016-01143
`Patent 7,884,446 B2
`
`
`contends that although they both refer to length measurements, “throughout
`the specification, the use of ‘height’ and ‘protrude’ is consistent with the
`presumption that they should be given different meanings.” Id. at 11.
`In support of its position, Patent Owner points to the following
`passage of the ’446 patent (PO Resp. 12):
`FIGS. 5A, 5B, and 5C present electron micrographs of the
`silicon surface after irradiation with one thousand laser pulses,
`showing formation of a plurality of spikes on the surface. The
`spikes have a substantially columnar shape with a typical height
`of about 500 nm and a typical diameter of about 200 nm. They
`protrude up to about 100 nm above the original surface of the
`wafer (FIG. 1C).
`Ex. 1001, 6:8–14. Based on the discussion in the specification of the
`above-described embodiment, Patent Owner asserts that “[i]f ‘height’ and
`the extent by which a feature ‘protrude[s] above the semiconductor surface’
`were to be interpreted as coextensive , . . . this recitation in claim 6 would
`contain a logical fallacy: spikes cannot both be 500 nm and 100 nm in
`height.” PO Resp. 12. Patent Owner surmises that “[b]ecause the
`‘protrusion’ refers to a portion of the spike as a whole, it typically has a
`smaller value than the height of the spike.” Id.
`Patent Owner additionally contends that discussion of spike size set
`forth in column 2 of the ’446 patent demonstrates that spike height and spike
`protrusion are distinct measurements taken from different reference points.
`Id. at 13. In particular, Patent Owner identifies the following excerpt from
`column 2 as supporting its proposed claim interpretation (id.):
`the submicron-sized features comprise spikes each of which
`extends from a base to a tip separated from the base by a distance
`18
`
`
`
`IPR2016-01143
`Patent 7,884,446 B2
`
`
`
`that is less than about 1 micron. For example, the spikes can
`protrude above the semiconductor surface by a distance in a
`range of about 100 nm to about 300 nm.
`Ex. 1001, 2:40–46. Patent Owner contends that this passage discloses that
`spike “‘height’ – measured as the separation from base to tip – is less than
`about 1 micron, while the amount by which those less-than-1-micron-sized
`features protrude – measured as the amount by which the features extend
`above the original surface of the semiconductor – is between 100 nm and
`300 nm.” PO Resp. 13.
`Patent Owner further asserts that if the applicant had “intended to
`define different ranges for the same attribute it would have used the same
`term.” Id. at 14. To illustrate this point, Patent Owner highlights that the
`’446 patent teaches that “the spikes can have an average width . . . that
`ranges from about 100 nm to about 500 nm (e.g., in a range of about 100 nm
`to about 300 nm).” Id. at 14 (quoting Ex. 1001, 1:63–67) (emphasis
`omitted).
`Lastly, Patent Owner argues that Petitioner’s proposed construction
`“rests on Petitioner’s implicit construction of the term ‘semiconductor
`surface,’ for which Petitioner provides no support.” Id. at 15. Instead,
`asserts Patent Owner, “protrudes” ought to be constructed to mean “extend
`above the original surface of the semiconductor” because such construction
`“is consistent with the exemplary embodiments on the specification.” Id.
`In reply, Petitioner contends that the ’446 patent specification equates
`the concepts of “‘height,’ a ‘separation [or distance] between the base and
`the tip,’ and ‘protrud[ing] above the semiconductor surface by a distance,’”
`19
`
`
`
`IPR2016-01143
`Patent 7,884,446 B2
`
`
`thereby rebutting the presumption that the claim 6 term “protrude above the
`semiconductor surface by a distance” must mean something different than
`“height” as recited in claim 1 (Ex. 1001, 8:34), or “extending from a base to
`a tip separated from the base by a distance” as recited in claim 5 (id. at 8:45–
`46). Reply 9.
`Petitioner additionally asserts that the above-described excerpt from
`column 6 of the specification on which Patent Owner relies “is the only
`instance where the term ‘original’ appears within the ’446 patent (including
`the claims).” Id. at 11. Petitioner notes that the spike protrusion range
`described in that excerpt is “virtually exclusive” of that recited in claim 6,
`and, therefore, contends that it “does not support claim 6.” Id. Petitioner
`further argues that the column 6 excerpt confirms that “protrude above the
`semiconductor surface” and “protrude . . . above the original surface of the
`wafer” are distinct measurements, and illustrates that the applicant for the
`’446 patent knew how to claim the measurement intended. Id.
`Petitioner characterizes Patent Owner’s position as an argument that
`“Petitioner’s and the Board’s understanding of claim 6 reads ‘original’ out of
`the specification,” and responds that “[t]here is no dispute that the
`’446 patent contains a disclosure of a measurement for spikes that is taken
`from an ‘original’ surface of the substrate. Rather, the issue is that claim 6
`recites a different measurement having no bearing on the ‘original’ surface
`measurement.” Id. at 12.
`On the record before us, we conclude that the broadest reasonable
`interpretation of the claim phrase “wherein said spikes protrude above the
`
`20
`
`
`
`IPR2016-01143
`Patent 7,884,446 B2
`
`
`semiconductor surface by a distance in a range of about 100 nm to about
`300 nm” encompasses spikes that measure from about 100 nm to about
`300 nm from base to tip. In reaching this conclusion, we determine, for the
`reasons set forth below, that the presumption that different claim terms have
`different meanings is rebutted by the
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
