Trials@uspto.gov
`571-272-7822
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` Paper 9
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`Date: August 16, 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 IPR2017-00931
`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
`35 U.S.C. § 325(d)
`
`
`
`
`
`
`571-272-7822
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` Paper 9
`
`Date: August 16, 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 IPR2017-00931
`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
`35 U.S.C. § 325(d)
`
`
`
`
`
`
`
`IPR2017-00931
`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 1 (“Pet.”). Patent Owner, Godo
`Kaisha IP Bridge 1, filed a Preliminary Response under 35 U.S.C. § 313.
`Paper 8 (“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). We deny the Petition
`under 35 U.S.C. § 325(d).
`
`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.
`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. 72; Paper 3, 2.
`Petitioner has previously petitioned for two inter partes reviews of the
`’980 patent. Those petitions were denied. IPR2016-01331, Paper 9;
`IPR2016-01367, Paper 8.
`
`2
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`IPR2017-00931
`Patent RE41,980 E
`
`
`B. The ’980 Patent
`
`The ’980 patent “relates to a semiconductor device having a metal
`wire layer and a passivation film in the uppermost 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
`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.
`
`
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`3
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`IPR2017-00931
`Patent RE41,980 E
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`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.
`18. A semiconductor device comprising:
`a
`semiconductor
`substrate bearing
`semiconductor
`elements;
`an interlayer insulating film formed on said 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
`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
`
`4
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`IPR2017-00931
`Patent RE41,980 E
`
`
`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.
`
`II. ANALYSIS
`
`There is no right to an inter partes review. See 35 U.S.C. § 314
`(governing institution of inter partes reviews but not mandating institution
`
`
`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 et al. 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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`IPR2017-00931
`Patent RE41,980 E
`
`under any circumstances); Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356,
`1367 (Fed. Cir. 2016) (“the PTO is permitted, but never compelled, to
`institute an IPR proceeding”). In determining whether to institute an inter
`partes review, we “may take into account whether, and reject the petition . . .
`because, the same or substantially the same prior art or arguments previously
`were presented to the Office.” 35 U.S.C. § 325(d).
`The instant Petition presents the same art, Ting and Jeng, that was
`previously presented to the Office in a prior petition to institute an inter
`partes review of the ’980 patent. Compare Pet. 20, with IPR2016-01331,
`Paper 2, 19. For that reason alone, we “reject” the Petition pursuant to
`35 U.S.C. § 325(d).
`Further, the instant Petition presents substantially the same arguments
`as those presented in the prior petition. In that regard, the instant Petition
`includes the same two grounds of unpatentability: (1) Ting anticipates
`claims 18, 19, 30–36, and 47–51; and (2) Ting and Jeng render obvious
`claims 18, 19, 30–36, and 47–51. Compare Pet. 27–67, with IPR2016-
`01331, Paper 2, 20–64. Although Petitioner now relies on a different feature
`of Ting to meet the “interlayer insulating film” limitation than it did
`previously (see Pet. 1–2), its arguments nonetheless are substantially the
`same as those it previously presented. For this additional reason, we “reject”
`the instant Petition pursuant to 35 U.S.C. § 325(d).
`
`6
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`IPR2017-00931
`Patent RE41,980 E
`
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`III. CONCLUSION
`
`The Petition is denied because the same prior art and substantially the
`same arguments were presented to the Office previously in IPR2016-01331.
`See 35 U.S.C. § 325(d).
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that the Petition is denied.
`
`7
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`
`
`IPR2017-00931
`Patent RE41,980 E
`
`For Petitioner:
`
`E. Robert Yoches
`Stephen Kabakoff
`Joshua Goldberg
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`bob.yoches@finnegan.com
`stephen.kabakoff@finnegan.com
`joshua.goldberg@finnegan.com
`
`
`For Patent Owner:
`
`Michael Fink
`Neil Greenblum
`Arnold Turk
`GREENBLUM & BERNSTEIN P.L.C.
`mfink@gbpatent.com
`ngreenblum@gbpatent.com
`aturk@gbpatent.com
`
`
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`8
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