Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 12
`Entered: April 18, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SYNAPTICS INCORPORATED,
`Petitioner,
`
`v.
`
`AMKOR TECHNOLOGY, INC.,
`Patent Owner.
`_______________
`
`Case IPR2017-00085
`Patent 7,358,174 B2
`_______________
`
`
`
`Before RAMA G. ELLURU, ROBERT J. WEINSCHENK,
`and JASON J. CHUNG, Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Denying Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 12
`Entered: April 18, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SYNAPTICS INCORPORATED,
`Petitioner,
`
`v.
`
`AMKOR TECHNOLOGY, INC.,
`Patent Owner.
`_______________
`
`Case IPR2017-00085
`Patent 7,358,174 B2
`_______________
`
`
`
`Before RAMA G. ELLURU, ROBERT J. WEINSCHENK,
`and JASON J. CHUNG, Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Denying Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-00085
`Patent 7,358,174 B2
`
`
`I. INTRODUCTION
`Synaptics Incorporated (“Petitioner”) filed a Petition (Paper 1,
`“Pet.1”) to institute an inter partes review of claims 1–4, 6, 8–15, and 17–31
`of U.S. Patent No. 7,358,174 B2 (Ex. 1001, “the ’174 Patent”). Petitioner
`also filed a Motion for Joinder (Paper 4, “Mot.”), requesting that this
`proceeding be joined with IPR2015-00863. Mot. 1. Amkor Technology,
`Inc. (“Patent Owner”) filed a Preliminary Response (Paper 11, “Prelim.
`Resp.”), and an Opposition to Petitioner’s Motion (Paper 8, “Opp.”).
`We have jurisdiction under 35 U.S.C. § 314. Based on the specific
`facts presented, we exercise our discretion and deny review under 35 U.S.C.
`§ 325(d).
`A. Related Matter
`The ’174 Patent is the subject of Amkor Technology, Inc. v. Synaptics
`Inc., Civil Action No. 1:15-cv-00910-GMS (D. Del). Pet. 1; Paper 6, 2.
`Petitioner also has filed three additional petitions for inter partes review,
`each challenging claims of the ’174 patent. As discussed in more detail
`below, the petition in IPR2016-00866 was denied in its entirety, the petition
`in IPR2016-00865 was instituted in part, and the petition in IPR2016-00863
`was instituted in part.
`B. The ’174 Patent
`The ’174 patent is titled “Methods of Forming Solder Bumps on
`Exposed Metal Pads,” and is directed towards methods of forming an
`electronic structure. Ex. 1001, Abstract. Embodiments of the methods may
`include providing a substrate having a metal pad thereon. Id. at 1:57–59.
`
`1The present Petition has two pages labeled as “1,” the first starts the
`mandatory notices and the second starts the introduction.
`
`2
`
`
`
`IPR2017-00085
`Patent 7,358,174 B2
`
`“A conductive barrier layer may be formed on a first portion of the metal
`pad with a second exposed portion of the metal pad remaining free of the
`conductive barrier layer.” Id. at 1:59–62. “[A]n interconnection structure
`may be provided on the conductive barrier layer so that the conductive
`barrier layer is between the interconnection structure and the metal pad and
`so that the interconnection structure and the conductive barrier layer include
`different materials.” Id. at 1:62–67. In addition, “an insulating passivation
`layer may be formed on the substrate surrounding the metal pad, with the
`insulating passivation layer extending on an edge portion of the metal pad so
`that the second portion of the metal pad is exposed between the conductive
`barrier layer and the insulating passivation layer.” Id. at 2:19–24.
`
`Figure 2B from the ’174 patent is reproduced below.
`
`
`
`Figure 2B is a cross–sectional view illustrating steps of forming an
`electronic structure according to an embodiment of the present invention.
`Ex. 1001, 4:40–42. This embodiment includes providing substrate 201 with
`metal pad 203 and inorganic dielectric passivation layer 204 thereon. Id. at
`8:62–64. “[T]he inorganic passivation layer 204 may be formed over the
`substrate 201 and the metal pad 203 and then patterned to expose portions of
`the metal pad 203.” Id. at 8:64–67. “An underbump metallurgy (seed) layer
`
`3
`
`
`
`IPR2017-00085
`Patent 7,358,174 B2
`
`205 may then be formed on the metal pad 203 and on the inorganic
`passivation layer 204.” Id. at 9:6–8. “A barrier layer 209 may then [be]
`selectively formed (such as by plating) on portions of the underbump
`metallurgy (seed) layer 205.” Id. at 9:39–41. Solder bump 211 is then
`plated on barrier layer 209. Id. at 9:43–44.
`C. Illustrative Claims
`Petitioner challenges claims 1–4, 6, 8–15, and 17–31 of the ’174
`patent. Claims 1, 17, and 18 are independent, and the remaining claims
`depend therefrom. Claim 1 is illustrative of the claimed subject matter and
`recites the following:
`
`1.
`A method of forming an electronic structure, the
`method comprising:
`
`providing a substrate having a metal pad thereon and an
`insulating layer surrounding the metal pad,
`
`forming a conductive barrier layer on a first portion of the
`metal pad, wherein a second exposed portion of the metal pad is
`free of the conductive barrier layer and free of the insulating
`layer; and,
`
`providing an interconnection structure on the conductive
`barrier layer, wherein the conductive barrier layer is between the
`interconnection structure and the metal pad and wherein the
`interconnection structure and the conductive barrier layer include
`different materials.
`Ex. 1001, 20:4–16.
`D. References Relied Upon
`Petitioner relies upon the following prior art references:
`US Patent No. 6,780,751 B2, filed on Oct. 9, 2002, and issued on
`Aug. 24, 2004, under pre-AIA 35 U.S.C. § 102(e) (Ex. 1006, “Fay”); and
`
`4
`
`
`
`“the state of the art2.” Pet. 5.
`Petitioner also supports its Petition with the testimony of Dr. Peter
`Ivey, Ph.D. (Ex. 1003, “Ivey Decl.”).
`E. The Asserted Grounds
`Petitioner contends that the challenged claims are unpatentable based
`on the following specific grounds (Pet. 5–6):
`Claim(s) Challenged
`Reference(s)
`Basis
`Fay and “the state of the
`§ 103(a) 1–4, 6, 8–15, and 17–31
`art”
`Fay
`
`§ 102
`
`1–4, 6,3 8–15, and 17–
`31
`
`IPR2017-00085
`Patent 7,358,174 B2
`
`
`
`
`II. ANALYSIS
`A. Factual Background
`This is the fourth Petition Petitioner has filed challenging claims of
`the ’174 patent. In IPR2016-00866, Petitioner challenged claims 1, 4–10,
`and 12–21 of the ’174 based on references not asserted in the present
`proceeding. Synaptics Inc. v. Amkor Tech., Inc., Case IPR2016-00866, Slip
`op. 5 (PTAB Oct. 12, 2016) (Paper 27) (“IPR2016-00866 Dec.”). We
`denied institution of the entire petition in IPR2016-00866. IPR2016-00866
`Dec. 19. In IPR2016-00865, Petitioner challenged claims 1, 4, 6, 8, 13–15,
`and 17–21 of the ’174 patent based on references not asserted in the present
`Petition. Synaptics Inc. v. Amkor Tech., Inc., Case IPR2016-00865, slip op.
`
`
`2Patent Owner disputes whether the “state of the art” is a basis for an inter
`partes review, an issue we need not reach. Prelim. Resp. 21, n.4.
`3Although Petitioner does not identify claim 6 as challenged under Ground 2
`on page 5 of the Petition, Petitioner subsequently provides such an analysis.
`Pet. 5, 42–43.
`
`5
`
`
`
`IPR2017-00085
`Patent 7,358,174 B2
`
`5 (PTAB Oct. 12, 2016) (Paper 28) (“IPR2016-00865 Dec.”). However,
`Petitioner included Fay in the record. IPR2016-00865, Ex. 1006. On
`October 12, 2016, we instituted a review of claims 1, 4, 6, 8, 13–15, and 19.
`IPR2016-00865, Dec. 29.
`In IPR2016-00863, Petitioner challenged claims 1–4, 6, 8–15, and 17–
`31, the same claims challenged in the present Petition, based on the
`following grounds, both of which include Fay:
`Reference(s)
`Basis
`Claim(s) Challenged
`Fay and IBM
`§ 103
`1–3, 6, 8–15, and 17–31
`
`Fay, IBM, and Delco
`
`§ 103
`
`4
`
`
`Synaptics Inc. v. Amkor Tech., Inc., Case IPR2016-00865, slip op. 5 (PTAB
`Oct. 12, 2016) (Paper 27) (“IPR2016-00863 Dec.”). On October 12, 2016,
`we instituted review of claims 1–3, 6, 8–15, and 17–31 as unpatentable
`under 35 U.S.C. § 103(a) over Fay and/or Fay and IBM. IPR2016-00863
`Dec. 32. We denied review of claim 4 over the combination of Fay, IBM,
`and Delco. IPR2016-00863 Dec. 29–32.
`
`Two days later, on October 14, 2016, Petitioner filed the instant
`Petition, IPR2017-00085, challenging the same claims challenged in its
`IPR2016-00863 petition. On October 27, 2016, Petitioner filed its Motion
`requesting joinder of the present proceeding with IPR2016-00863. During a
`teleconference, we denied Petitioner’s request to accelerate the Preliminary
`Response in the present proceeding.
`B. Application of 35 U.S.C. § 325(d)
`The standard for instituting an inter partes review is set forth in
`35 U.S.C. § 314(a) as follows:
`
`6
`
`
`
`IPR2017-00085
`Patent 7,358,174 B2
`
`
`THRESHOLD -- The Director may not authorize an inter
`partes review to be instituted unless the Director determines that
`the information presented in the petition filed under section 311
`and any response filed under section 313 shows that there is a
`reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`
`As set forth in 35 U.S.C. § 325(d), the Director, and by extension the Board,
`has discretion to deny a petition that raises substantially the same prior art or
`arguments previously presented to the Office. That statutory provision
`provides as follows:
`In determining whether to institute or order a proceeding
`under this chapter, chapter 30, or chapter 31, the Director may
`take into account whether, and reject the petition or request
`because, the same or substantially the same prior art or
`arguments previously were presented to the Office.
`
`The overlap between the present proceeding and IPR2016-00863 is
`substantial. As Petitioner itself acknowledges:
`The issues with respect to Claims 1-3, 6, 8-15 and 17-31
`already instituted in IPR2016-000863 and those at issue in
`IPR2017-00085 substantially overlap. In particular, the two
`petitions involve (1) the same two parties (Synaptics and
`Amkor); (2) the same '174 Patent; (3) the same Fay reference; (4)
`substantially the same ground of challenges; and (5) the same
`expert (Dr. Ivey). For example, the Board instituted trial on
`Claims 1-3, 6, 8-15 and 17-31 in IPR2016-000863 based on Fay
`and/or Fay and IBM. IPR2016-00863, Institution Decision at 32.
`IPR2017-00085 alleges that these claims either are obvious over
`Fay and the state of the art or are anticipated by Fay. Pet. 5-6.
`Thus, both the already instituted ground and the grounds raised
`by IPR2017-00085 would involve comparing the disclosure of
`Fay to each claim element.
`
`Further, Petitioner admits that the grounds asserted in the present proceeding
`correspond to the same grounds asserted in IPR2016-00863:
`
`7
`
`
`
`IPR2017-00085
`Patent 7,358,174 B2
`
`
`Ground 1 of IPR2017-00085 corresponds to the ground of
`institution in IPR2016-00863. Further, because "anticipation is
`the epitome of obviousness" (e.g., In re McDaniel, 293 F.3d
`1379, 1385 (Fed. Cir. 2002)), Ground 2 of IPR2017-00085
`would also correspond to the instituted ground.
`
`Mot. 2. As noted above, we did not institute a review of claim 4 in
`IPR2016-00863 as having been obvious over the combination of Fay, IBM,
`and Delco.
`As justification, for reasserting Fay, albeit in combination with the
`“current state of the art” or as anticipatory, against the same claims it
`challenged in IPR2016-00863, Petitioner states:
`This petition relies on the same reference as IPR2016-
`00863, and addresses issues raised by Amkor. This petition also
`provides additional explanation, in light of the Board's institution
`decision in IPR2016-00863, as to why Claim 4 would have been
`obvious.
`
`Pet. 1. Petitioner further states in its Motion for Joinder:
`
`Synaptics could not have brought IPR2017-00085 at the
`time that it filed IPR2016-00863 because it did not know the
`arguments that Amkor would have raised in its IPR2016-00863
`preliminary responses, Amkor's apparent claim interpretation as
`gleaned from its infringement contentions in the district court
`action (which were not served until August 15, 2016) or the
`Board's interpretation of certain disclosures.
`
`Mot. 3–4; see Mot. 6.
`
`Patent Owner responds that Petitioner could have requested to file a
`
`Reply to the Preliminary Response in IPR2016-00863.4 Prelim. Resp. 3–4.
`
`
`4 Petitioner filed a Reply to the Preliminary Response in IPR2016-00863
`concerning only the real party in interest. IPR2016-00863, Paper 25.
`
`8
`
`
`
`IPR2017-00085
`Patent 7,358,174 B2
`
`Patent Owner argues that Petitioner is trying to expand its arguments in
`IPR2016-00863 and the present Petition is “crafted as a reply to the POPR in
`IPR2016-00863 with new arguments and evidence not presented in
`IPR2016-00863, including a 260-page declaration by Professor Ivey, and
`several new exhibits.” Id. at 4. Patent Owner further asserts that “[t]he
`proper way to challenge [the institution decision in IPR2016-00863] is by
`filing a motion for rehearing, not by filing a new petition.” Id. at 5.
`We exercise our discretion and “reject the petition” because “the
`same” prior art, namely Fay, previously was “presented to the Office” in the
`IPR2016-00863 and IPR2016-00865 proceedings. 35 U.S.C. § 325(d); see
`Unilever, Inc. v. The Procter & Gamble Co., Case IPR2014-00506, slip op.
`6 (PTAB July 7, 2014) (Paper 17) (Informative Opinion); ZTE Corp. v.
`ContentGuard Holdings, Inc., Case IPR2013-00454, slip op. 5 (PTAB Sep.
`25, 2013) (Paper 12) (Informative Opinion).
`Furthermore, we are persuaded that the instant Petition uses our prior
`Decision on Institution in IPR2016-00863 as a “roadmap” to address
`challenges that were advanced, unsuccessfully, in the IPR2016-00863
`Petition. Specifically, as Petitioner itself contends the present Petition
`“provides additional explanation, in light of the Board’s institution decision
`in IPR2016-00863, as to why claim 4 would have been obvious.” Pet. 1.
`We denied institution of claim 4 in IPR2016-00863 because we were not
`persuaded at the institution stage of that proceeding that Delco teaches the
`limitation of claim 4, as argued by Petitioner. IPR2016-00863 Dec. 31–32.
`In present proceeding, IPR2017-00085, which was filed after Petitioner had
`the benefit of reviewing Patent Owner’s Preliminary Response and our
`institution decision in IPR2016-00863, Petitioner now argues that Fay
`
`9
`
`
`
`IPR2017-00085
`Patent 7,358,174 B2
`
`teaches the limitation of claim 4, and anticipates and/or renders obvious the
`remaining challenged claims. Pet 40–41, 19–64; Mot. 9.
`We disfavor allowing follow-on petitions that attempt to fix
`deficiencies in a previous petition that were explained in a previous decision
`on institution. Unilever, Inc., Case IPR2014-00506, slip op. at 8 (“Based on
`the information presented, we are persuaded that the instant Petition uses our
`prior Decision on Institution to bolster challenges that were advanced,
`unsuccessfully, in the 505 Petition.”); Conopco, Inc. v. The Procter &
`Gamble Co., Case IPR2014-00506 slip op. at 4–5 (PTAB Dec. 10, 2014)
`(Paper 25) (Informative Opinion Denying Pet’s Request for Rehearing).
`Such an approach “would allow petitioners to unveil strategically their best
`prior art and arguments in serial petitions, using our decisions on institution
`as a roadmap, until a ground is advanced that results in review—a practice
`that would tax Board resources, and force patent owners to defend multiple
`attacks.” Id. “The Board is concerned about encouraging, unnecessarily, the
`filing of petitions which are partially inadequate.” ZTE Corp.,
`IPR2013-00454, slip op. at 5–6. Here, Petitioner was aware of Fay and
`could have made the present arguments in IPR2016-00863, before having
`the benefit of reviewing Patent Owner’s Preliminary Response and our
`decision on institution in IPR2016-00863.
`Petitioner has not presented considerations for its follow-on Petition
`that tip the balance in favor of review. For example, considering the present
`fourth Petition challenging claims of the ’174 patent would tax the Board’s
`finite resources. The Board would be required to address additional grounds
`(Fay in combination with the “state of the art” and Fay alone) challenging
`claims of the ’174 patent for which the Board has already instituted review.
`
`10
`
`
`
`IPR2017-00085
`Patent 7,358,174 B2
`
`More importantly, the prejudice to Patent Owner is far outweighed by any
`factor in favor of reviewing the present Petition. Based on the present facts,
`we determine that it would be fundamentally unfair to require Patent Owner
`to defend a challenge to the ’174 patent based on Fay to the same claims
`Petitioner previously challenged based on a combination that included Fay,
`while Petitioner had the benefit of adjusting its position based on Patent
`Owner’s Preliminary Response and our institution decision in
`IPR2016-00863.
`Institution of inter partes review is discretionary. See 35 U.S.C.
`§ 314(a); 37 C.F.R. § 42.108(a); Harmonic Inc v. Avid Tech., Inc., 815 F.3d
`1356, 1367 (Fed. Cir. 2016 (“T]he PTO is permitted, but never compelled, to
`institute an IPR proceeding.”). Based on the facts of this case, we exercise
`our discretion under §§ 314(a) and 325(d) to deny the request for an inter
`partes review. We also deny Petitioner’s Motion for Joinder as moot.
`
`III. ORDER
`
`It is
`ORDERED that the Petition is denied at to all challenged claims of
`the ’174 patent;
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2016-00863 is denied as moot.
`
`
`
`11
`
`
`
`IPR2017-00085
`Patent 7,358,174 B2
`
`For PETITIONER:
`
`Hong Zhong
`Michael Fleming
`Benjamin Hattenbach
`IRELL & MANELLA LLP
`hzhong@irell.com
`SynapticsIPR@irell.com
`
`For PATENT OWNER:
`
`Justin Boyce
`Robert Ashbrook
`DECHERT LLP
`justin.boyce@dechert.com
`robert.ashbrook@dechert.com
`
`12
`
`
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