Inter Partes Review
`United States Patent No. RE41,980
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`
`
`
`
`
`
`
`
`Taiwan Semiconductor Manufacturing Company Limited
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`Petitioner
`
`v.
`
`Godo Kaisha IP Bridge 1
`
`Patent Owner
`
`
`
`Inter Partes Review No. IPR2016-01331
`U.S. Patent RE41,980
`
`
`
`REQUEST FOR REHEARING UNDER 37 C.F.R. § 42.71(D)(2)
`
`
`United States Patent No. RE41,980
`
`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
`
`
`
`Inter Partes Review No. IPR2016-01331
`U.S. Patent RE41,980
`
`
`
`REQUEST FOR REHEARING UNDER 37 C.F.R. § 42.71(D)(2)
`
`
`
`
`
`Inter Partes Review
`United States Patent No. RE41,980
`
`TABLE OF CONTENTS
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`I.
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`INTRODUCTION .......................................................................................... 1
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`II. ARGUMENT ................................................................................................... 3
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`A.
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`The Board misapprehended the “distinction” between “interlayer
`insulating film” and “buried insulating film”......................................... 3
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`1.
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`2.
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`3.
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`The Board misapprehended the features of the “buried
`insulating film.” ........................................................................... 3
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`The smoothness of the bottom surface of interlayer
`insulating film 11 in the figures does not justify the
`Board’s definition of “interlayer insulating film.” ...................... 5
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`The Board misapprehended the intrinsic evidence to limit
`the scope of “interlayer insulating film” to exclude any
`intralayer properties. .................................................................... 7
`
`B.
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`The extrinsic evidence does not support the Board’s construction
`of “interlayer insulating film” ................................................................ 9
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`1.
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`2.
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`The Board misapprehended the teachings of the ’811
`patent ............................................................................................ 9
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`The Board misapprehended the dictionary definitions the
`Patent Owner cited ..................................................................... 11
`
`C.
`
`The Board’s misapprehension of the evidence led it to err in
`finding Ting’s layer 25, which fills areas both between metal
`wire layers and between metal wires in the same layer, was not
`an “interlayer insulating film” as claimed in the ’980 patent .............. 12
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`III. CONCLUSION ............................................................................................. 14
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`I.
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`INTRODUCTION
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`Inter Partes Review
`United States Patent No. RE41,980
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`Under 37 C.F.R. § 42.71(d)(2), Petitioner respectfully requests rehearing of
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`the Board’s Decision (Paper No. 9) because the Board misapprehended or
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`overlooked the intrinsic and extrinsic evidence to misconstrue the term “interlayer
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`insulating film.”
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`In discussing the intrinsic evidence, the Board, referring only to Figures 1-17
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`and the different titles of “buried” and “interlayer” insulating films,
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`misapprehended the distinction between the “buried insulating film” 13 and
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`“interlayer insulating film” 11 in the ’980 patent. Decision at 7-9. The Board
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`overlooked the entirety of the ’980 patent disclosure showing that those terms differ
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`because: (1) the “buried” insulating film must be formed on the uppermost metal
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`wire layer (which means it cannot be an “interlayer” insulating film); and (2) the
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`term “buried” is used to reflect the alleged inventive concept of the invention
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`(which distinguished it over the prior art). The difference is not, as the Board
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`concluded, a superficial one based on the drawings showing the buried insulating
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`film 13 extending into another film. Indeed, the specification explains the drawings
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`are only partial renditions of the layers in a semiconductor structure, and do not
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`accurately depict interlayer insulating film 11.
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`Moreover, the Board equated the ’980 patent’s buried insulating film 13 with
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`an “intralayer” dielectric, even though film 13 did not meet the definition the Board
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`1
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`Inter Partes Review
`United States Patent No. RE41,980
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`assigned for “intralayer,” and the term “intralayer” appears nowhere in the ’980
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`patent. Figure 1 shows that film 13 not only exists between adjacent metal wires 12,
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`it also extends above the layer of metal wires 12, something that the Board
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`specifically excluded from its definition of “intralayer.” Despite this evidence, the
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`Board incorrectly concluded that a “buried” insulating film was identical to an
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`“intralayer” film, and that an “interlayer” film could not have “intralayer” features.
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`With regard to extrinsic evidence, the Board misapplied the teachings of U.S.
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`Patent No. 6,432,811 (“the ’811 patent”) to the ’980 patent in equating the ’980
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`patent’s use of “buried” to the ’811 patent’s use of “intralayer.” The Board
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`overlooked that the ’811 patent teaches a composite “interlayer” dielectric that
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`provides both “interlayer” and “intralayer” insulating properties. The Board also
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`overlooked the fact that the ’811 patent addressed an intralayer dielectric material,
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`and not a dielectric layer or film like the ’980 patent’s buried insulating film. The
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`Board also cited general dictionary definitions of “inter-” and intra-,” which have
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`dubious value in this technology, and, in any event, do not support the Board’s
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`limiting construction of “interlayer insulating film.” Those definitions do not
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`require that an insulating film only have interlayer features or intralayer features,
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`but not both.
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`These misapprehensions and errors led the Board to discount the Ting
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`reference, which teaches an “interlayer insulating film” as the claims recite.
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`2
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`Inter Partes Review
`United States Patent No. RE41,980
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`II. ARGUMENT
`A. The Board misapprehended the “distinction” between “interlayer
`insulating film” and “buried insulating film”
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`The “interlayer” and “buried” insulating films in the ’980 patent are
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`“distinct,” but the Board misapprehended the reason for that distinction when it
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`concluded they are “two distinct configurations of insulating films.” Decision at 8.
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`In its preliminary response (“POPR”), Patent Owner superficially
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`distinguished between an “interlayer insulating film” and a “buried insulating film”
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`by simply pointing to the patent figures, which all showed metal wires inside the
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`buried insulating film and the interlayer insulating film with metal wires on top of it.
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`See Paper No. 7, POPR, at 9-10. The Board agreed with this distinction (Decision at
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`7-9), and thus, misapprehended and misunderstood the ’980 patent. There is no
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`evidence to support the Patent Owner’s and the Board’s reason for the distinction,
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`which is whether the film extends into a metal wire layer. Rather, the record
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`evidence demonstrates the ’980 patent uses “buried” and “interlayer” to describe
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`insulating films that differ because of their location in the semiconductor structure
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`and to differentiate the claimed structure over the prior art.
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`1.
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`The Board misapprehended the features of the “buried
`insulating film.”
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`When the Board characterized the “buried insulating film” as a film “with
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`something (namely, metal wires) buried within it” (Decision at 9), it overlooked the
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`fact that the “buried” film in the ’980 patent is always deposited on the uppermost
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`3
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`Inter Partes Review
`United States Patent No. RE41,980
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`metal wire layer as part of a surface protection film 20 and fills areas between and
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`above adjacent metal wires 12 in the uppermost metal wire layer of a
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`semiconductor device. Ex. 1001, 8:4-9, 10:44-49, 13:39-47, 15:7-16, 15:52-57,
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`FIG. 1 (film 13) (each cited in POPR at 9); see also id. 1:23-27 (cited in Decision at
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`3); 7:25-28 (part of citation in Petition at 26, n. 5). By filling those areas, the buried
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`film 13 allows the top passivation layer of the surface protection film 20 to form
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`over the buried film without coverage defects (e.g., air pockets shown in FIG. 20a)
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`between the wires as in the prior art. See id., Abstract (cited in Petition at 11-12);
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`2:11-15 (within citation in Petition at 12); FIG. 20 (cited in Petition at 12).
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`Because buried insulating film 13 is formed on the uppermost metal wire
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`layer, it cannot be an “interlayer insulating film” between different metal wire
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`layers. Decision at 8-9. The intrinsic evidence supports this distinction.
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`Using the modifier “buried” to describe film 13 also distinguished the
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`invention from the prior art, which had an “underlying” insulating film 19 in the
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`uppermost metal wire layer. See, e.g., Petition at 11-16. Calling film 13 a “buried”
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`insulating film thus highlights the alleged inventive feature, which is forming the
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`top “passivation” film of the surface protection film over both the buried film and
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`metal wire layer without forming coverage defects. See, e.g., Ex. 1001, Abstract
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`(cited in Petition at 11-12); 2:11-15 (within citation in Petition at 12); and claims 18
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`and 35 (claiming a “surface protecting film” with a “first dielectric film” and a
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`4
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`United States Patent No. RE41,980
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`“second dielectric film with a higher moisture absorption preventing function than
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`said first dielectric film for covering said metal wire layer and said first dielectric
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`film”).
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`Although the ’980 patent used two different terms “buried” and “interlayer”
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`to describe insulating films 13 and 11, respectively, the intrinsic evidence shows
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`that different words were used because of film 13’s location and its alleged features,
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`not, as the Board found, because film 13 protrudes into another layer.
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`2.
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`The smoothness of the bottom surface of interlayer
`insulating film 11 in the figures does not justify the Board’s
`definition of “interlayer insulating film.”
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`Without the benefit of an expert declaration, Patent Owner assigned
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`significance to the fact that the bottom surface of interlayer insulating film 11 was
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`smooth, while that of buried insulating film 13 was not. See POPR at 9; FIGS. 1-17
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`(cited in POPR at 9). The Board appears to have adopted this position (Decision at
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`7), and thus, misapprehended the reason for the difference.
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`The specification suggests only one reason for the smooth bottom of film 11,
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`which is that Figures 1-17 omitted all of the metal wire layers and interlayer
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`insulating films below the interlayer insulating film 11 because they had “no
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`relation to the characteristics of the present invention.” Ex. 1001, 7:18-28 (cited in
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`Petition at 26, n. 5). The ’980 patent only concerns the uppermost metal wire layer
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`12, which is why only the interlayer insulating film 11 formed under the metal
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`5
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`United States Patent No. RE41,980
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`wires 12 is shown in the Figures. Ex. 1001, 1:35-44 (within citation in Petition at
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`12). The smooth bottom surface of interlayer film 11 is consistent with only
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`showing a partial view of the semiconductor device. Nothing else in the
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`specification provides any other reason for the smooth bottom surface, and it would
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`be error to invent such a reason. See, e.g., Starhome GMBH v. AT&T Mobility LLC,
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`743 F.3d 849, 857 (Fed. Cir. 2014) (refusing to limit a claim construction based on
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`a “simplified drawing,” which at best inserted ambiguity as to the ordinary meaning
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`of the claim term).
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`In addition, nothing in the ’980 patent precludes an interlayer insulating film
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`from containing wires or being partially formed between wires in an underlying
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`metal wire layer. There is no clear and unmistakable disavowal, and neither the
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`Board nor Patent Owner have cited any, that would mandate imposing the Board’s
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`negative limitation of prohibiting the “interlayer insulating film” from extending
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`into another layer. See, e.g., Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314,
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`1323 (Fed. Cir. 2003) (finding no support for a negative limitation in a claim
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`construction absent “any express disclaimer or independent lexicography in the
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`written description that would justify adding that negative limitation”). It would be
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`clear error to find such a disavowal when the only reason the ’980 patent suggests
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`for not showing metal wire layers under the interlayer insulating film 11 is because
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`6
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`United States Patent No. RE41,980
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`they were not relevant to the invention. Ex. 1001, 7:18-28 (cited in Petition at 26, n.
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`5); see also id. 1:35-44 (within citation in Petition at 12).
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`3.
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`The Board misapprehended the intrinsic evidence to limit
`the scope of “interlayer insulating film” to exclude any
`intralayer properties.
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`The Board based its construction and scope of “interlayer insulating film” on
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`the observation that “[t]he ’811 patent . . . uses the term ‘intralayer’ in the same
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`manner as the ’980 patent uses the term ‘buried.’” Decision at 8. The Board
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`elaborated that “an intralayer dielectric is found between adjacent interconnect
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`lines, rather than vertically above or below those interconnect lines.” Id. Thus, the
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`Board essentially erroneously concluded that “interlayer” and “intralayer” refer to
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`two distinct and exclusive configurations of insulating films in the ’980 patent. Id.
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`The Board, however, misapprehended the buried insulating film 13 in the
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`’980 patent. Figure 1 of the ‘980 patent (reproduced below) shows buried film 13
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`both between adjacent interconnect lines (metal wires 12) and vertically above
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`those lines.
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`7
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`United States Patent No. RE41,980
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`
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`Ex. 1001, FIG. 1. See FIGS. 1, 5, 7 (cited in POPR at 4-5).
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`Figure 1 shows dielectric material in film 13 extending vertically above the
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`metal wires 12, which conflicts with the Board’s definition of “intralayer” as “‘a
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`dielectric [] found between adjacent interconnect lines, rather than vertically above
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`or below those interconnect lines.’” Ex. 2003, 3:48-53 (emphasis added) (cited in
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`Decision at 8; POPR at 10). Based on its own logic, the Board clearly erred in
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`concluding that the ’811 patent uses “intralayer” in the same manner as the ’980
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`patent uses the term “buried.” Decision at 8.
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`The Board’s error in calling the “buried” film an “intralayer” film, in
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`combination with its misapprehension of why the “buried” and “interlayer” films
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`are distinct (Section II(A)(1) supra), incorrectly led the Board to limit the claimed
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`“interlayer insulating film” to a film that does not have “intralayer” properties.
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`8
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`United States Patent No. RE41,980
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`B.
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`The extrinsic evidence does not support the Board’s construction
`of “interlayer insulating film”
`1.
`In support of its construction of “interlayer insulating film,” Patent Owner
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`The Board misapprehended the teachings of the ’811 patent
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`cited this definition from the ’811 patent:
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`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.”
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`POPR at 10 (citing Ex. 2003, 3:48-53) (emphasis added). The Board accepted this
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`extrinsic evidence but misapprehended its significance and improperly relied on it.
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`Decision at 8.
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`Consistent with the Board’s cited definition, dielectric material that provides
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`electrical insulation vertically, which the ’811 patent defines as substantially
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`perpendicular to the surface of the substrate (Ex. 2003, 3:54-55), between different
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`interconnect layers would be an interlayer dielectric layer. The ’811 patent,
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`however, does not in any way preclude an insulating film from having both
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`“intralayer” and “interlayer” insulating properties. Indeed, the ’811 patent teaches a
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`composite “interlayer” dielectric that provides both “interlayer” and “intralayer”
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`insulating properties.
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`9
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`Inter Partes Review
`United States Patent No. RE41,980
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`For example, Figure 1 in the ’811 patent (reproduced and annotated below)
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`shows a “composite interlayer dielectric” with combined layers 104 and 102 located
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`between adjacent trenches for interconnect lines (“intra” direction shown by the red
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`line), and between the interconnect lines above and below the composite interlayer
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`dielectric (“inter” direction shown by the blue lines). Ex. 2003, 1:55-58. This
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`dielectric layer provides an “interlayer” insulating property between different metal
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`wire layers, and also has a portion disposed between adjacent interconnect lines that
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`provides an “intralayer” insulating property.
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`
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`Therefore, the ’811 patent does not support the conclusion that an “interlayer
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`insulating film” cannot have “intralayer” insulating properties.
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`The Board’s cited definition from the ’811 patent only indicates that
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`intralayer dielectric material (not film) disposed between adjacent metal wires in an
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`interconnect layer prevents parasitic capacitance and electrical current flow
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`horizontally between the wires. See also, Petition at 6 (describing parasitic
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`capacitance between adjacent interconnect lines). It does not refer to or define what
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`10
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`United States Patent No. RE41,980
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`is an intralayer dielectric film. The ’811 patent teaches that the intralayer dielectric
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`is “material” between individual metal wires in a layer, and nowhere is that
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`intralayer dielectric material referred to as a “layer” or “film.” In contrast, the ’811
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`patent does consistently refer to “interlayer dielectric (ILD) layers” as separate from
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`the defined dielectric “material.” Compare, e.g., Ex. 2003, 3:48-53 with 3:62-63.
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`The ’980 patent terms only concern films and layers, not material.
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`2.
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`The Board misapprehended the dictionary definitions the
`Patent Owner cited
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`The Federal Circuit has cautioned against using general-purpose dictionaries
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`in a manner inconsistent with the specification. See, e.g., Phillips v. AWH Corp.,
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`415 F.3d 1303, 1321 (Fed. Cir. 2005)). This case shows why. The dictionary
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`definitions of the prefixes “inter-” and “intra-” offered by the Patent Owner and
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`cited by the Board have nothing to do with layers in a semiconductor structure.
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`Moreover, those definitions do not support the Board’s conclusions that the
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`terms are mutually exclusive in the context of insulating layers in a semiconductor
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`device. The dictionary merely defined “intra” as “within, in, or into something,”
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`and “inter” as “located between” or “between the limits of.” Decision at 7; Ex.
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`2001, 2002. Nothing in either definition precludes an “interlayer insulating film”
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`from also being “within or in” another layer, as the Board concluded.
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`11
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`United States Patent No. RE41,980
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`C. The Board’s misapprehension of the evidence led it to err in
`finding Ting’s layer 25, which fills areas both between metal wire
`layers and between metal wires in the same layer, was not an
`“interlayer insulating film” as claimed in the ’980 patent
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`The Board’s misapprehension of the “buried insulating film” and its
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`supposed distinct configuration from an “interlayer insulating film” in the ’980
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`patent resulted in the erroneous conclusion that Ting’s dielectric layer 25 is a
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`“buried insulating film,” and therefore not an “interlayer insulating film.” Decision
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`at 11. Ting’s dielectric layer 25 is not a buried insulating film because it is not
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`between metal wires in the uppermost metal wire layer.1 Although Ting’s dielectric
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`layer 25 cannot be the “buried insulating film” in the ’980 patent, it is an “interlayer
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`insulating film” since it provides electrical insulation between different metal wire
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`layers 36 and 21. See Petition at 25-27 (citing Ex. 1006, 7:4-12); Ex. 1006, FIG. 5.
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`Both the Patent Owner and Board acknowledge that Ting’s dielectric layer 25
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`(in Figure 5) is “partially” within the same layer as the conducting layer 21.
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`Decision at 11; POPR at 23. That means part of dielectric layer 25 is not buried
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`1 In contrast, dielectric layer 42 in Ting’s Figure 5 fills areas between wires in the
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`uppermost wire layer 36. Petition at 31 (“Ting discloses . . . a first dielectric film
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`(i.e., lower section 42 of layer 40) for filling at least a part of areas among said
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`metal wires in said metal wire layer (i.e., areas among the metal wires formed by
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`conducting layer 36 and its adhesive layer 35)”).
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`12
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`United States Patent No. RE41,980
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`within the conducting layer 21. At least this portion of dielectric 25 that is not
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`buried provides electrical insulation between layers in a vertical direction under the
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`plain meaning of “interlayer insulating film” that the intrinsic and extrinsic
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`evidence mandate. Layer 25’s function in providing insulation between adjacent
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`metal wires (“intralayer”) does not disqualify it from also acting as an “interlayer
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`insulating film” vertically, where it is disposed between metal wire layers 36 and
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`21.2
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`Figure copied from Petition at 27, “interlayer” and “intralayer” annotations added.
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`2 Although there is no basis for the negative limitation in the Board’s construction
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`of “interlayer insulating film,” the portion of Ting’s dielectric layer 25 that is not
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`buried satisfies that definition despite the negative limitation.
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`13
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`United States Patent No. RE41,980
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`In another decision also involving the ’980 patent, the Board recognized that
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`an “interlayer dielectric layer” could have dual “inter” and “intra” functions where
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`only a portion of the film exists between adjacent metal wires when it
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`acknowledged that Wollesen discloses an “interlayer dielectric layer 6.” IPR2016-
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`01367, Paper No. 8 at 12, n. 5 (citing Ex. 1003, 1:57). Wollesen’s interlayer
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`dielectric layer 6 is just another example of an “interlayer insulating film” that
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`provides both intralayer insulation between metal wires 49 and interlayer insulation
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`between different metal wire layers 8 and 49. Id.; Ex. 1003, FIG. 1 (interlayer
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`dielectric layer 6) (cited in Petition at 10). The Board’s construction of “interlayer
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`insulating film” as “an insulating film located between but not within other layers”
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`(Decision at 8) improperly excludes the interlayer insulating film 6 in Wollesen and
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`interlayer insulating film 25 in Ting.
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`III. CONCLUSION
`The Board misapprehended or overlooked the intrinsic and extrinsic evidence,
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`so rehearing is appropriate under the abuse-of-discretion standard of 37 C.F.R.
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`§ 42.71(c). See Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004)
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`(an abuse of discretion occurs if a decision is based on an erroneous interpretation
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`of law or a factual finding not supported by substantial evidence).
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`Petitioner respectfully requests the Board grant a rehearing and institute inter
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`partes review on all asserted grounds.
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`14
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`Dated: February 6, 2017
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`Inter Partes Review
`United States Patent No. RE41,980
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`Respectfully submitted,
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` By: /E. Robert Yoches/
`E. Robert Yoches, Lead Counsel
`Reg. No. 30,120
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`15
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`Inter Partes Review
`United States Patent No. RE41,980
`CERTIFICATE OF SERVICE
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`The undersigned certifies that the foregoing REQUEST FOR
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`REHEARING UNDER 37 C.F.R. § 42.71(D)(2) is being served on February 6,
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`2017, by electronic mail at the following address of record for the Patent Owner as
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`Michael J. Fink (Reg. No. 31,827)
`E-mail: mfink@gbpatent.com
`Neil F. Greenblum (Reg. No. 28,394)
`E-mail: ngreenblum@gbpatent.com
`Arnold Turk (Reg. No. 33,094)
`Email: aturk@gbpatent.com
`Greenblum & Bernstein, P.L.C.
`1950 Roland Clarke Place
`Reston, Virginia 20191
`Tel: 703-716-1191
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`Patent Owner has agreed to electronic service.
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`Dated: February 6, 2017
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`By: /Lauren K. Young/
`Lauren K. Young
`Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
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