Trials@uspto.gov
`571-272-7822
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` Paper 9
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` Date: January 5, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY
`LIMITED,
`Petitioner,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`
`
`
`Case IPR2016-01331
`Patent RE41,980 E
`
`
`
`
`Before JUSTIN T. ARBES, MICHAEL J. FITZPATRICK, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`
`
`FITZPATRICK, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
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`
`571-272-7822
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` Paper 9
`
` Date: January 5, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY
`LIMITED,
`Petitioner,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`
`
`
`Case IPR2016-01331
`Patent RE41,980 E
`
`
`
`
`Before JUSTIN T. ARBES, MICHAEL J. FITZPATRICK, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`
`
`FITZPATRICK, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2016-01331
`Patent RE41,980 E
`
`
`I.
`
`INTRODUCTION
`
`Petitioner, Taiwan Semiconductor Manufacturing Company Limited,
`filed a Petition to institute an inter partes review of claims 18, 19, 30–36,
`and 47–51 of U.S. Patent No. RE41,980 E (Ex. 1001, “the ’980 patent”)
`pursuant to 35 U.S.C. § 311(a). Paper 2 (“Pet.”). Patent Owner, Godo
`Kaisha IP Bridge 1, filed a Preliminary Response under 35 U.S.C. § 313.
`Paper 7 (“Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Upon consideration of the
`Petition and Preliminary Response, and for the reasons explained below, we
`determine that the information presented does not show a reasonable
`likelihood that Petitioner would prevail with respect to any claim challenged
`in the Petition. See 35 U.S.C. § 314(a); 37 C.F.R § 42.108. The Petition is
`denied.
`
`A. Related Matters
`
`The ’980 patent issued from Serial No. 11/984,551, which was a
`continuation reissue application of Serial No. 10/438,348 (now U.S. Patent
`No. RE39,932), which was a reissue application of Serial No. 09/387,834
`(now U.S. Patent No. 6,232,656), which was a divisional application of
`Serial No. 08/925,442 (now U.S. Patent No. 5,989,992), which was filed
`September 8, 1997. Ex. 1001, 1:10–20.
`Petitioner has filed a separate petition for an inter partes review of
`the ’980 patent, which petition challenges a subset of the claims challenged
`in the instant Petition. Pet. 65; Paper 3, 1; see also Case IPR2016-01367.
`
`2
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`IPR2016-01331
`Patent RE41,980 E
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`Patent Owner has asserted the ’980 patent in Godo Kaisha IP Bridge 1
`v. Broadcom Ltd., No. 2-16-cv-00134 (E.D. Tex.). Pet. 65; Paper 3, 2.
`
`B. The ’980 Patent
`
`The ’980 patent “relates to a semiconductor device having a metal
`wire layer and a passivation film in the upper most layer” and, more
`particularly, to “improvement in the structures of a bonding pad and a
`surface protecting film.” Ex. 1001, 1:23–27. The stated “object” of the ’980
`patent is “providing a semiconductor device having high integration, high
`reliability, and high performance . . . by decreasing a parasitic capacitance
`between metal wires with a small pitch in a metal wire layer, by preventing a
`coverage defect in depositing a silicon nitride film used as a passivation
`film, and by suppressing moisture absorption through an opening for
`forming a bonding pad.” Id. at 2:40–48.
`Figure 1 of the ’980 patent is reproduced below.
`
`Figure 1 shows a sectional view of a semiconductor device
`embodiment of the invention of the ’980 patent. Id. at 6:21–23. The
`3
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`IPR2016-01331
`Patent RE41,980 E
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`embodiment includes interlayer insulating film 11 on which is formed a
`metal wire layer including a plurality of metal wires 12. Id. at 7:29–32.
`Surface protecting film 20 covers the interlayer insulating film and the metal
`wires. Id. at 7:33–35. The surface protecting film “is a composite film
`including a buried insulating film 13 of an insulating film with a small
`dielectric constant (such as a TEOS film) and a passivation film 14 of an
`insulating film with a large dielectric constant and high moisture absorption
`resistance (such as a silicon nitride film).” Id. at 7:35–40. Bonding pad 15
`is buried in opening 20a of the surface protecting film, completely covers the
`side faces of the buried insulating film, and is drawn above the passivation
`film. Id. at 7:43–49.
`
`C. The Challenged Claims
`
`Of the challenged claims, claims 18 and 35 are independent. Claim
`18 is illustrative and reproduced below with emphasis on the limitation
`which is dispositive of the Petition.
`18. A semiconductor device comprising:
`a
`semiconductor
`substrate bearing
`semiconductor
`elements;
`insulating
`interlayer
`an
`semiconductor substrate;
`a metal wire layer including plural metal wires formed on
`said interlayer insulating film;
`a surface protecting film including a first dielectric film
`with a small dielectric constant for filling at least a part of areas
`among said metal wires in said metal wire layer and a second
`dielectric film with a higher moisture absorption preventing
`function than said first dielectric film for covering said metal
`wire layer and said first dielectric film, said second dielectric
`4
`
`film
`
`formed on
`
`said
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`IPR2016-01331
`Patent RE41,980 E
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`film having a function of suppressing moisture absorption of said
`first dielectric film;
`an opening for a bonding pad formed in said surface
`protecting film; and
`a bonding pad formed in said opening for obtaining
`external electrical connection,
`wherein said bonding pad in said opening and said second
`dielectric film of said surface protecting film completely cover
`said first dielectric film so as not to expose said first dielectric
`film.
`
`D. Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability:
`Basis1
`Reference(s)
`Claims
`Ting (Ex. 1006)2
`§ 102(a), (b) and (e) 18, 19, 30–36,
`and 47–51
`18, 19, 30–36,
`and 47–51
`
`Ting and Jeng (Ex. 1007)3 § 103(a)
`
`Pet. 20–63.
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
`which was enacted on September 16, 2011, made amendments to 35 U.S.C.
`§§ 102 and 103. AIA § 3(b) and (c). Those amendments became effective
`eighteen months later on March 16, 2013. Because the application from
`which the ’980 patent issued was filed before March 16, 2013, our citations
`to 35 U.S.C. §§ 102 and 103 are to their pre-AIA versions.
`2 U.S. Patent No. 5,169,680 to Ting was filed March 11, 1992, and issued
`December 8, 1992. The earliest possible effective filing date of the
`challenged claims of the ’980 patent is September 10, 1996. Ex. 1001, [30].
`Thus, Ting is prior art under at least 35 U.S.C. § 102(b).
`3 U.S. Patent No. 5,527,737 to Jeng was filed May 27, 1994, and issued June
`18, 1996. Jeng is prior art under at least 35 U.S.C. § 102(a).
`5
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`IPR2016-01331
`Patent RE41,980 E
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`II. ANALYSIS
`
`A. Claim Construction
`
`Patent Owner filed a Motion for a district court-type claim
`construction, asserting that the ’980 patent will expire on September 8, 2017,
`which is less than eighteen months after entry of the Notice of Filing Date
`Accorded to the Petition. Paper 6; see also 37 C.F.R. § 42.100(b) (“A party
`may request a district court-type claim construction approach to be applied if
`a party certifies that the involved patent will expire within 18 months from
`the entry of the Notice of Filing Date Accorded to Petition.”); Paper 5
`(Notice of Filing Date Accorded to Petition entered July 21, 2016).
`Petitioner concedes that the ’980 patent will expire on September 8, 2017.
`Pet. 19. We grant Patent Owner’s Motion.
`In district court, claim terms are given their plain and ordinary
`meaning as would be understood by a person of ordinary skill in the art at
`the time of the invention and in the context of the entire patent disclosure.
`Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).
`“There are only two exceptions to this general rule: 1) when a patentee sets
`out a definition and acts as his own lexicographer, or 2) when the patentee
`disavows the full scope of a claim term either in the specification or during
`prosecution.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362,
`1365 (Fed. Cir. 2012).
`Petitioner does not propose an express construction for any limitation.
`Pet. 19–20. Patent Owner proposes express constructions for several
`limitations, one of which is dispositive and addressed below. Prelim.
`Resp. 7–13.
`
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`IPR2016-01331
`Patent RE41,980 E
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`
`“an interlayer insulating film”
`
`Independent claims 18 and 35 recite “an interlayer insulating film.”
`Patent Owner argues that this limitation means “an insulating film located
`between but not within layers.” Prelim. Resp. 8. Patent Owner supports its
`construction with intrinsic and extrinsic evidence.
`With respect to the intrinsic evidence, Patent Owner points out that
`the figures in the ’980 patent consistently and uniformly depict the interlayer
`insulating film below and not within the metal wire layer, which is above the
`interlayer insulating film. Id. at 9 (citing Ex. 1001, Figs. 1–17). Patent
`Owner, citing the same evidence, also points out that the interlayer
`insulating film is consistently and uniformly shown with smooth top and
`bottom surfaces and not extending into any adjacent layers. Id. Patent
`Owner also points out that the specification uses a different term, “buried
`insulating film,” in reference to an insulating film that extends into a metal
`wire layer (i.e., the wires are buried in such an insulating film). Id. at 9–10
`(quoting Ex. 1001, 8:4–9, 10:44–49, 13:39–47, 15:7–16, 15:52–57, Fig. 1).
`With respect to the extrinsic evidence, Patent Owner cites dictionary
`entries to show the contrasting meanings of the prefixes “inter-” and
`“intra-.” Id. at 10 (citing Exs. 2001, 2002). Specifically, Patent Owner
`states: “The dictionary provides several definitions for the prefix ‘inter,’ the
`most applicable in context of the ’980 patent being ‘located between’ or
`‘between the limits of.’ The prefix ‘intra’ means within, in, or into
`something.” Id. (citing Exs. 2001, 2002) (footnotes omitted). Patent Owner
`also cites U.S. Patent No. 6,432,811 (“the ’811 patent”). Id. (citing
`Ex. 2003). The ’811 and ’980 patents are unrelated; neither claims priority
`
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`IPR2016-01331
`Patent RE41,980 E
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`to or through the other, and they do not share a common inventor or
`assignee. The ’811 patent, however, is from the same general field of
`semiconductors as the ’980 patent. See Ex. 2003, 1:12–20. Patent Owner
`cites the ’811 patent for its following statements: “The term intralayer
`dielectric as used in this field is understood to refer to the dielectric material
`disposed between interconnect lines on a given interconnect level. That is,
`an intralayer dielectric is found between adjacent interconnect lines, rather
`than vertically above or below those interconnect lines.” Prelim. Resp. 10
`(quoting Ex. 2003, 3:48–53 (our emphasis)). The ’811 patent, thus, uses the
`term “intralayer” in the same manner as the ’980 patent uses the term
`“buried.”4
`We are in general agreement with Patent Owner’s proposed
`construction. However, our construction adds the word “other” and is as
`follows: an insulating film located between but not within other layers. Our
`construction is supported sufficiently by the intrinsic evidence alone.
`The ’980 patent uses the terms “interlayer” and “buried” to refer to two
`distinct configurations of insulating films. The term “interlayer insulating
`film” is described with something (namely a metal wire layer) formed on top
`
`
`4 The ’980 patent identifies several priority applications, having a range of
`filing dates from September 10, 1996 through November 19, 2007.
`Ex. 1001, [22], [64], [60], [30]; see also id. at 1:10–20 (identifying the U.S.
`priority applications). The ’811 patent was filed within this range—on
`December 20, 2000. Ex. 2003, [22]. In its Preliminary Response, Patent
`Owner does not argue for entitlement to any particular priority date. On this
`record, we find the ’811 patent’s disclosure probative of what a person of
`ordinary skill in the art would have understood “intralayer” to mean in the
`context of semiconductors.
`
`8
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`IPR2016-01331
`Patent RE41,980 E
`
`of it. E.g., Ex. 1001, Abstract (“A plurality of metal wires are formed on an
`underlying interlayer insulating film.”), 13:39–41 (“As is shown in FIG. 10,
`on an underlying interlayer insulating film 11 is formed a metal wire layer
`including a plurality of metal wires 12.”); see also id. at Fig. 1 (illustrating
`the same). In contrast, the term “buried insulating film” is described with
`something (namely, metal wires) buried within it. E.g., id., Abstract (“Areas
`among the metal wires are filled with a buried insulating film.”), 13:39–48
`(“The metal wires 12 are buried in the insulating film 13.”), Fig. 1 (ref. 11,
`13); see also id. at Fig. 1 (illustrating the same); dependent claims 19 and 36
`(reciting “wherein said first dielectric film is buried, among said areas
`among said metal wires, at least in an area having a minimum pitch between
`said metal wires.”). Patent Owner’s extrinsic evidence, discussed above,
`also supports our construction.
`
`B. Anticipation by Ting
`1. Disclosure of Ting
`Ting “relates to forming conductive patterns on a semiconductor
`substrate and more specifically to a selective deposition technique
`connecting various conducting layers during the formation of an integrated
`circuit.” Ex. 1006, 1:15–19. Figure 5 of Ting, as annotated and colored by
`Petitioner, is reproduced below.
`
`9
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`IPR2016-01331
`Patent RE41,980 E
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`
`
`Pet. 27. Figure 5, reproduced above as annotated and colored by Petitioner,
`shows a cross-sectional view of “completed semiconductor device 52.”
`Ex. 1006, 9:3–5.
`
`2. Application of Ting to the Challenged Claims
`As discussed above, independent claims 18 and 35, recite “an
`interlayer insulating film.” To meet this limitation, Petitioner relies on
`Ting’s dielectric layer 25, which is colored light blue in Petitioner’s
`annotated version of Ting Figure 5 reproduced above. Pet. 25–26.
`Petitioner’s entire argument is as follows: “Ting teaches this claim element.
`Ting discloses the semiconductor device 52 in FIG. 5 comprises an
`interlayer insulating film (dielectric layer 25) including upper and lower
`regions 26 and 27 ‘formed to insulate the underlying layers from the
`subsequent conducting layer.’ Ex. 1006, 7:4–12, FIG. 5.” Id. We are not
`persuaded.
`
`10
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`IPR2016-01331
`Patent RE41,980 E
`
`An “interlayer insulating film” within the meaning of claims 18 and
`35 is an insulating film located between but not within other layers. As
`Patent Owner correctly points out, in Ting, dielectric layer 25 is located, at
`least partially, within the same layer as conducting layer 21. See Ex. 1006,
`6:51–53, Fig. 5; Prelim. Resp. 22–24. Put another way, conducting layer 21
`is buried within dielectric layer 25 in a manner similar to that of the ’980
`patent’s metal wires 12 buried within buried insulating film 13. See
`Ex. 1001, 13:39–48, Fig. 1. Accordingly, dielectric layer 25 is not an
`interlayer insulating film within the meaning of claims 18 and 35.5
`Petitioner has not shown how any of the challenged claims, all of
`which recite or incorporate “an interlayer insulating film,” is anticipated by
`Ting.
`
`C. Obviousness over Ting and Jeng
`
`Petitioner’s obviousness challenge relies additionally on Jeng but not
`in a manner that would cure the deficiency of Ting identified above. More
`specifically, Petitioner relies additionally on Jeng to meet different
`limitations of claims 18 and 35, namely “a metal wire layer including plural
`metal wires formed on said interlayer insulating film” and “a surface
`protecting film including a first dielectric film with a small dielectric
`
`
`5 Ting states that in Figure 5—the embodiment asserted by Petitioner—
`dielectric layer 25 “has a lower region 27 comprised of silicon dioxide
`(SiO2) and an upper region 26 comprised of silicon nitride (Si2N4).”
`Ex. 1006, 7:9–12. Petitioner does not assert that upper region 26 alone
`constitutes an “interlayer insulating film” within the meaning of claims 18
`and 35. See Pet. 25–27.
`
`11
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`IPR2016-01331
`Patent RE41,980 E
`
`constant for filling at least a part of areas among said metal wires in said
`metal wire layer,” and no other limitations. Pet. 52–58. Accordingly,
`Petitioner has not shown how any of the challenged claims would have been
`obvious over Ting and Jeng.
`
`III. CONCLUSION
`
`There is not a reasonable likelihood that Petitioner would prevail with
`respect to any challenged claim. See 35 U.S.C. § 314(a); 37 C.F.R.
`§ 42.108.
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that the Petition is denied.
`
`12
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`
`IPR2016-01331
`Patent RE41,980 E
`
`For Petitioner:
`
`Robert Yoches
`Bob.yoches@finnegan.com
`
`Stephen E. Kabakoff
`Stephen.kabakoff@finnegan.com
`
`Joshua L. Goldberg
`Joshua.goldberg@finnegan.com
`
`
`
`For Patent Owner:
`
`Michael J. Fink
`mfink@gbpatent.com
`
`Neil Greenblum
`ngreenblum@gbpatent.com
`
`Arnold Turk
`aturk@gbpatent.com
`
`
`
`
`13
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