Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper No. 8
`Entered: September 11, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MIPOX CORPORATION,
`Petitioner,
`
`v.
`
`INTERNATIONAL TEST SOLUTIONS, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00938
`Patent 6,777,966 B1
`____________
`
`
`Before JO-ANNE M. KOKOSKI, JEFFREY W. ABRAHAM, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper No. 8
`Entered: September 11, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MIPOX CORPORATION,
`Petitioner,
`
`v.
`
`INTERNATIONAL TEST SOLUTIONS, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00938
`Patent 6,777,966 B1
`____________
`
`
`Before JO-ANNE M. KOKOSKI, JEFFREY W. ABRAHAM, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2017-00938
`Patent 6,777,966 B1
`
`
`I. INTRODUCTION
`
`A. Background
`Mipox Corporation1 (“Petitioner”) filed a Petition (Paper 1, “Pet.”) to
`institute inter partes review of claims 26 and 28 of U.S. Patent
`No. 6,777,966 B1 (Ex. 1001, “the ’966 patent”). International Test
`Solutions, Inc. (“Patent Owner”) filed a Preliminary Response (Paper 7,
`“Prelim. Resp.”).
`Upon consideration of the Petition and Preliminary Response, we are
`persuaded, under 35 U.S.C. § 314(a), that Petitioner has demonstrated a
`reasonable likelihood that it would prevail in showing the unpatentability of
`claims 26 and 28 of the ’966 patent. Accordingly, we institute an inter
`partes review of these claims.
`
`B. Related Matters
`Petitioner identifies the following as a matter that could affect, or be
`affected by, a decision in this proceeding: Int’l Test Solutions, Inc. v. Mipox
`Int’l Corp., Case No. 3:16-cv-00791 (N.D. Cal.). Pet. 1. Patent Owner
`identifies the same matter. Paper 3, 2.
`
`C. Evidence Relied Upon
`
`Reference
`
`Okubo
`
`Angell
`
`Date2
`
`Exhibit
`
`US 2002/0028641 A1 Feb. 16, 1999 Ex. 1006
`
`US 6,019,663
`
`Feb. 20, 1998 Ex. 1007
`
`
`1 Petitioner further identifies Mipox International Corporation and MGN
`International, Inc. as real parties-in-interest. Pet. 1.
`2 All dates refer to the filing date of the respective references.
`
`2
`
`
`
`IPR2017-00938
`Patent 6,777,966 B1
`
`
`Reference
`
`Yamasaka
`
`Date2
`
`Exhibit
`
`US 5,968,282
`
`Nov. 5, 1998
`
`Ex. 1008
`
`Yamasaka ’104
`
`US 6,130,104
`
`Apr. 6, 1998
`
`Ex. 1009
`
`
`Petitioner also relies on the Declaration of Ira M. Feldman. Ex. 1013.
`
`
`D. The Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`Claims
`Challenged
`26 and 28
`
`Basis
`
`§ 102(e)
`
`Reference(s)
`
`Okubo
`
`Okubo and Angell
`
`Yamasaka and Angell
`
`Yamasaka ’104 and Angell
`
`
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`26 and 28
`
`26 and 28
`
`26 and 28
`
`II. ANALYSIS
`
`A. The ’966 Patent
`The ’966 patent relates to a cleaning device for cleaning probe
`elements of a probe testing card for testing semiconductor wafers. Ex. 1001,
`Abstract. Figure 4 of the ’966 patent is reproduced below.
`
`3
`
`
`
`
`
`IPR2017-00938
`Patent 6,777,966 B1
`
`Figure 4 is a cross-sectional view of a schematic illustration of a cleaning
`device according to the invention described in the ’966 patent. Id. at 4:18–
`19. Cleaning device 20 includes substrate 22 and pad 24 adhered to surface
`25 of substrate 22. Id. at 4:67–5:2.
`Substrate 22 can be any material having sufficient strength to resist
`breaking when probes contact pad 24, including plastic, metal, glass, silicon,
`or ceramic. Ex. 1001, 5:2–7. Preferably, substrate 22 is a semiconductor
`wafer having a flat mirror finish or a slightly abrasive finish capable of
`burnishing the testing probe tips. Id. at 5:7–13. Pad 24 can be any material
`with predetermined properties that contribute to the cleaning of the testing
`probe tips, such as pads with appropriate abrasiveness, density, elasticity, or
`tackiness. Id. at 5:14–18. Pad 24 is preferably made of an elastomeric
`material such as a natural or synthetic rubber or polymer having a
`predetermined elasticity, density, and surface tension that allows the testing
`probe tips to penetrate the elastomeric material and be cleaned by it without
`being damaged. Id. at 5:27–37.
`Cleaning device 20 preferably has the same size and shape as a
`semiconductor wafer undergoing testing, and is placed in a wafer cleaning
`tray. Ex. 1001, 5:60–63. When cleaning of the testing probes is needed, the
`testing apparatus loads cleaning device 20 from the wafer cleaning tray and
`mounts it on the same chuck on which semiconductor wafers undergoing
`testing are mounted. Id. at 6:6–8.
`Petitioner challenges the patentability of independent claims 26 and
`28 of the ’966 patent. Claim 26, which is representative, is reproduced
`below.
`
`4
`
`
`
`IPR2017-00938
`Patent 6,777,966 B1
`
`
`26. A cleaning device for cleaning the probe
`elements in a semiconductor testing apparatus, the
`cleaning device comprising:
`
`a substrate having a configuration to be introduced
`into the testing apparatus during the normal testing
`operating of the testing apparatus, wherein the
`substrate comprises a semiconductor wafer having
`a surface; and
`
`a pad, secured to the substrate, the pad having
`predetermined characteristics that cause the pad to
`clean debris from the probe elements when the
`probe elements contact the pad so that the probe
`elements are cleaned, without modification or
`damage, during the normal operation of the testing
`machine, wherein the semiconductor wafer surface
`has microroughness which burnishes the probe
`elements.
`
`
`Ex. 1001, 10:23–37. Claim 28 is substantially similar in scope to claim 26,
`but differs in two respects. First, claim 28 does not require the substrate to
`be configured to be introduced into the testing apparatus during normal
`testing operations, but does require the substrate to have a predetermined
`configuration appropriate for particular cleaning probe elements. Compare
`id. at 10:26–29, with id. at 10:56–59. Second, claim 28 does not require the
`cleaning pad to clean the probe elements without modification or damage
`during normal operation of the testing machine. Compare id. at 10:30–37,
`with id. at 10:60–65.
`B. Claim Construction
`The Board interprets claims of an unexpired patent using the broadest
`reasonable interpretation in light of the specification of the patent in which
`
`5
`
`
`
`IPR2017-00938
`Patent 6,777,966 B1
`
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2142–46 (2016). Consistent with the rule of broadest
`reasonable interpretation, claim terms are generally given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art in the context of the entire disclosure. See In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007).
`Petitioner and Patent Owner agree that “no specific claim
`constructions are necessary” for this proceeding. Pet. 5; Prelim. Resp. 4.
`We agree, and for purposes of this Decision, we find no need to explicitly
`construe any terms in claims 26 and 28.
`C. Anticipation of Claims 26 and 28 by Okubo
`Petitioner argues claims 26 and 28 of the ’966 patent are anticipated
`by Okubo. Pet. 8–20. Patent Owner argues Petitioner fails to demonstrate
`that Okubo discloses a substrate having a microroughness. Prelim. Resp. 7–
`12. Upon review of Petitioner’s arguments and evidence, and Patent
`Owner’s arguments regarding the insufficiency of that evidence, and for the
`reasons discussed below, we determine that Petitioner fails to demonstrate a
`reasonable likelihood of showing claims 26 and 28 are anticipated by
`Okubo.
`1. Overview of Okubo (Ex. 1006)
`Okubo discloses “a probe end cleaning sheet for removing foreign
`matter adhered to the end of a probe.” Ex. 1006 ¶ 2. Figure 1 of Okubo is
`reproduced below.
`
`6
`
`
`
`IPR2017-00938
`Patent 6,777,966 B1
`
`
`
`
`Figure 1 is a cross-sectional schematic illustration of cleaning sheet 100 used
`to clean testing probes 211 of a semiconductor testing apparatus known as a
`prober. Id. ¶ 14. Cleaning sheet 100 is a laminated structure formed in the
`same size and shape as a semiconductor wafer undergoing prober testing,
`and comprises cleaning film 110, elastic sheet 120, and board 130. Id. ¶ 38.
`Cleaning film 110 is a fine, abrasive powder made from a material and
`having a granularity that depends upon the size of testing probe 211. Id.
`¶¶ 28–29. Elastic sheet 120 is made from a silicone or urethane rubber
`having an elasticity that allows it to be dented by the load supplied when
`testing probe 211 is lowered onto cleaning sheet 100. Id. ¶¶ 32–34. Board
`130 is made from a sufficiently rigid material that it is free from the effects
`of deformation caused when elastic sheet 120 is dented by testing probe 211.
`Id. ¶ 37. Board 130 can be made, for example, from a metal, ceramic, or
`silicon plate or wafer.3 Id.
`
`
`3 Although Okubo literally discloses board 130 can be made from a silicone
`wafer, we interpret this as a typographical error because Okubo discloses
`elastic sheet 120 can be made from silicone, and board 130 “is required to
`have enough rigidity to be free from effects of deformation of the elastic
`
`7
`
`
`
`IPR2017-00938
`Patent 6,777,966 B1
`
`Okubo discloses loading cleaning sheets 100 at a given rate into a
`
`cassette that holds semiconductor wafers to be tested (e.g., 1 cleaning sheet
`per 20 semiconductor wafers) to automatically clean probe 211 on a periodic
`basis. Ex. 1006 ¶ 40. When probe 211 is cleaned, the prober loads cleaning
`sheet 100 from the wafer cassette, mounts it on a suction table, and
`repeatedly presses probe 211 against cleaning sheet 100. Id. ¶¶ 48–49. This
`removes foreign matter adhered to the end of probe 211 without scraping off
`or wearing down the end of probe 211. Id. ¶ 52. When the cleaning is
`complete, cleaning sheet 100 is removed from the suction table, and a new
`semiconductor wafer is retrieved from the wafer cassette, mounted on the
`suction table, and tested. Id. ¶ 53.
`2. Comparison of Claims 26 and 28 to Okubo
`Claim 26 recites a cleaning device, and requires a semiconductor
`wafer substrate “wherein the semiconductor wafer surface has
`microroughness which burnishes the probe elements.” Ex. 1001, 10:23–29,
`10:35–37. Claim 28 recites a cleaning device that also requires “the
`semiconductor wafer surface has microroughness which burnishes the probe
`elements.” See id. at 10:54–59, 10:64–65.
`Petitioner argues Okubo meets this limitation by disclosing “cleaning
`thin film 110 with abrasive particles and a metal thin film 140 with a
`roughened surface mounted on board 130 (or silicon wafer) that clean or
`polish the probe elements” because Patent Owner, in the underlying district
`
`
`sheet 120.” Ex. 1006 ¶¶ 32, 37. Both Petitioner and Petitioner’s declarant,
`Mr. Feldman, note this typographical error and argue for the interpretation
`we have applied for the same reason we have applied that interpretation. See
`Pet. 12 n.8 (citing Ex. 1013 ¶ 21 n.4).
`
`8
`
`
`
`IPR2017-00938
`Patent 6,777,966 B1
`
`court litigation, contends that a cleaning sheet applied to a wafer or coated
`with abrasive particles and applied to a base material meets the limitation.
`Pet. 14–15 (citing Ex. 1010, App’x A, 3); see also id. at 19 (citing Ex. 1010,
`App’x A, 4) (discussing the same limitation in claim 28). Patent Owner
`argues Petitioner fails to demonstrate claims 26 and 28 are anticipated by
`Okubo because Okubo does not disclose “that board 130 or a surface of the
`board 130 has any microroughness.” Prelim. Resp. 9–10.
`We agree with Patent Owner. Although Okubo discloses board 130
`may be a semiconductor wafer, Petitioner does not demonstrate where
`Okubo discloses the surface of board/semiconductor wafer 130 has
`microroughness to burnish probe elements. Indeed, Petitioner’s expert,
`Mr. Feldman, testifies that semiconductor wafers can have either mirrored or
`roughened surfaces. See Pet. 15 (citing Ex. 1013 ¶ 26).
`Accordingly, on the record before us, and for the reasons discussed
`above, we find Petitioner fails to demonstrate a reasonable likelihood of
`showing claims 26 and 28 are anticipated by Okubo.
`D. Obviousness of Claims 26 and 28 over Okubo and Angell
`Petitioner argues the subject matter of claims 26 and 28 of the ’966
`patent would have been obvious over the combined teachings of Okubo and
`Angell. Pet. 20–36. Patent Owner argues Petitioner fails to demonstrate the
`combination of Okubo and Angell teaches all the limitations required by
`claims 26 and 28, or that it would have been obvious to combine the
`teachings of Okubo and Angell. Prelim. Resp. 12–16. Upon review of
`Petitioner’s arguments and evidence, and Patent Owner’s arguments
`regarding the insufficiency of that evidence, and for the reasons discussed
`below, we are persuaded on this record that Petitioner has demonstrated a
`
`9
`
`
`
`IPR2017-00938
`Patent 6,777,966 B1
`
`reasonable likelihood of showing claims 26 and 28 would have been
`unpatentable as obvious over the combined teachings of Okubo and Angell.
`1. Overview of Angell (Ex. 1007)
`Angell discloses “[a] system and method for cleaning probe pins on a
`probe card used in testing a semiconductor device during fabrication thereof.
`A ceramic cleaning wafer is utilized to clean the probe pins without having
`to remove the probe card from a production line.” Ex. 1007, Abstract. The
`same apparatus that is used to test production wafers “also handles the
`cleaning wafer during a probe cleaning cycle.” Id. The cleaning wafer can
`be made “of any abrasive material that has a suitable grain size for cleaning
`the probe pins,” including silicon carbide, a semiconducting material. Id. at
`3:34–41. “The rough surface on the wafer acts as an abrasive to clean off
`the probe pin tips.” Id. at 3:36–37. Angell also teaches the cleaning wafer
`can be formed in the shape of a flat, circular disk, where both sides of the
`wafer are abrasive. Id. at 47–49.
`2. Comparison of Claims 26 and 28 to the Combined Teachings of
`Okubo and Angell
`Claim 26 recites a cleaning device, and requires a semiconductor
`wafer substrate configured to be introduced into the testing apparatus during
`the normal testing operation of the testing apparatus. Ex. 1001, 10:23–29.
`Petitioner demonstrates a reasonable likelihood of showing Okubo teaches
`this limitation. See Pet. 24–26 (citing Ex. 1006 ¶¶ 27, 37, 39–40, 48–49,
`Fig. 1).
`In particular, Petitioner points to Okubo’s disclosure of laminated
`cleaning sheet 100 comprising cleaning film 110, elastic sheet 120, and
`
`10
`
`
`
`IPR2017-00938
`Patent 6,777,966 B1
`
`board 130, which can be a silicon wafer.4 Pet. 24; see Ex. 1006 ¶¶ 27, 37.
`Petitioner further notes that Okubo discloses cleaning sheet 100 can have the
`same size and shape as the semiconductor wafers tested by prober 200, and
`can be loaded into a cassette together with the semiconductor wafers at a
`fixed rate so that testing probe 211 can be automatically cleaned on a
`periodic basis. Pet. 25 (citing Ex. 1006 ¶¶ 39–40, 48–49).
`Patent Owner argues Okubo fails to disclose a substrate because
`Petitioner identifies the cleaning pad required by claim 26 as cleaning film
`110, elastic sheet 120, and board 130. Prelim. Resp. 9, 13 (citing Pet. 13).
`We are not persuaded by Patent Owner’s argument on this record. First, the
`argument is based on a statement Petitioner made in support of its contention
`that the subject matter of claim 26 is anticipated by Okubo, rather than its
`contention that the subject matter of claim 26 would have been obvious over
`the combined teachings of Okubo and Angell. See Pet. 8–20. In its
`contention that the subject matter of claim 26 would have been obvious over
`Okubo and Angell, Petitioner states “Okubo teaches a cleaning device (the
`probe end cleaning sheet 100) with a substrate (the board 130 or silicon
`wafer).” Id. at 24. Second, Petitioner made the identical statement mapping
`board 130 to the required substrate in its contention that claim 26 is
`anticipated by Okubo. See id. at 10. Although Petitioner does refer to board
`130 when mapping Okubo to the pad required by claim 26, Petitioner does
`so because the full limitation requires the pad to be secured to a substrate,
`and Petitioner refers to board 130 to demonstrate the pad is “secured to a
`
`
`4 See supra note 3.
`
`11
`
`
`
`IPR2017-00938
`Patent 6,777,966 B1
`
`substrate.” See id. at 13 (“Okubo teaches a pad, secured to the substrate
`(e.g., board 130 or silicon wafer) . . . .”).
`Claim 26 further requires the surface of the semiconductor wafer to
`have a microroughness capable of burnishing the probe elements. Ex. 1001,
`10:35–37. Petitioner demonstrates a reasonable likelihood of showing
`Angell teaches a cleaning device that includes a semiconductor substrate
`having an abrasive surface with a microroughness to clean and burnish the
`probe tips. Pet. 29–30 (citing Ex. 1007, 3:34–49). In that regard, Petitioner
`contends that Angell discloses a cleaning wafer to clean probe pins on a
`probe card in a production setting. Id. at 26 (citing Ex. 1007, 3:17–27.
`Petitioner further contends that Angell’s cleaning wafer can be made of any
`abrasive material having a suitable grain size to clean the probe pins,
`including silicon carbide, a semiconducting material. Id. at 29–30 (citing
`Ex. 1007, 3:34–46).
`Relying on the testimony of Mr. Feldman, Petitioner argues a person
`of ordinary skill in the art would have understood from these teachings that
`Okubo’s semiconductor substrate could have been textured to have the
`abrasive surface of Angell’s cleaning wafer or could have simply been
`replaced with Angell’s cleaning wafer in order to have surface
`microroughness that burnishes the probe elements. Pet. 30 (citing Ex. 1013
`¶ 51). Petitioner, further relying on the testimony of Mr. Feldman, argues
`the proposed combination of Okubo and Angell would have been a simple
`combination or substitution of known elements, with each element
`performing its known function to achieve a predictable result, and that a
`person skilled in the art would have made the combination to more
`efficiently clean the probe elements and to improve adhesion between the
`
`12
`
`
`
`IPR2017-00938
`Patent 6,777,966 B1
`
`substrate and cleaning layers of Okubo. Id. at 22–23 (citing Ex. 1013 ¶¶ 38–
`40).
`Patent Owner argues Petitioner’s reasons for combining Okubo and
`Angell are conclusory, and that the teachings of Okubo and Angell teach
`away from the combination. Prelim. Resp. 14–16. Relying on the testimony
`of its declarant, Dr. Joseph Bernstein, Patent Owner argues that Angell’s
`cleaning device is a single ceramic substrate and Okubo’s cleaning device is
`a multi-layered device that is dented during the cleaning process, and “[i]f
`Angell’s single ceramic layer were placed on Okubo’s system, the ceramic
`layer would not get dented, and would not clean as Okubo teaches.” Id. at
`15 (citing Ex. 2001 ¶ 62). We are not persuaded, on this record, by Patent
`Owner’s arguments.
`Petitioner, relying on the testimony of Mr. Feldman, argues the reason
`for combining Okubo and Angell is to more efficiently clean the probe
`elements and to improve adhesion between Okubo’s substrate and cleaning
`layers. See Pet. 22–23 (citing Ex. 1013 ¶¶ 38–40). We do not find this
`reasoning conclusory, as the prior art confirms Mr. Feldman’s opinion that a
`semiconductor substrate having a roughened surface improves adhesion
`between the substrate and an elastic cleaning layer such as Okubo’s. See Ex.
`1009, 9:62–66. Moreover, Petitioner’s proposed combination is to either
`roughen the surface of Okubo’s semiconductor substrate or to replace it with
`Angell’s roughened semiconductor substrate. See Pet. 30 (citing Ex. 1013
`¶ 51). This would allow testing probe 211 to continue to penetrate and dent
`Okubo’s cleaning film 110 and elastic layer 120, which would be placed
`over the surface of Okubo’s roughened or replaced semiconductor substrate
`130. See Ex. 1006 ¶ 27, Fig. 1.
`
`13
`
`
`
`IPR2017-00938
`Patent 6,777,966 B1
`
`
`Claim 26 further requires a pad, secured to the substrate, having
`predetermined characteristics that cause the pad to clean debris from the
`probe elements when the probe elements contact the pad without modifying
`or damaging the probe elements during the normal operation of the testing
`machine. Ex. 1001, 10:30–35. Petitioner demonstrates a reasonable
`likelihood of showing Okubo teaches this limitation. See Pet. 26–28 (citing
`Ex. 1006 ¶¶ 9–11, 38–40, 48–52, 60–63, Figs. 1–2).
`Petitioner points to Okubo’s teaching of “a probe end cleaning sheet
`capable of removing foreign matter without deforming the end of the probe.”
`Pet. 27 (citing Ex. 1006 ¶¶ 9–11, 52). The cleaning sheet is a laminated
`structure that includes a cleaning film 110 and elastic sheet 120 (which
`Petitioner identifies as the pad), secured to a board 130 (which Petitioner
`identifies as the semiconductor substrate). Ex. 1006 ¶ 38. The cleaning
`sheet is loaded in a cassette together with semiconductor wafers to be tested
`in a prober so that the testing probe can be automatically cleaned at a
`periodic rate. Id. ¶¶ 39–40, 48–52. The cleaning film 110 is made of a fine
`abrasive powder that is chosen based on the material and size of testing
`probe 211, and the elastic sheet 120 is made sufficiently pliable so that when
`testing probe 211 is lowered unto the cleaning sheet it is “wrapped in the
`cleaning thin film 120 [sic, 110] by the dent in the elastic sheet 120,” so that
`“the end of the probe 211 is not scraped off at all.” Id. ¶¶ 29, 50–52, 60–61.
`Claim 28 recites a cleaning device that is substantially similar in
`scope to claim 26. Compare Ex. 1001, 10:23–37, with 10:54–65. Claim 28
`does not require the substrate to be configured to be introduced into the
`testing apparatus during normal testing operations, and does not require the
`cleaning pad to clean the probe elements without modification or damage
`
`14
`
`
`
`IPR2017-00938
`Patent 6,777,966 B1
`
`during normal operation of the testing machine. Id. Claim 28, however,
`does require the substrate to have a predetermined configuration appropriate
`for particular cleaning probe elements. Id. at 10:56–57.
`Petitioner provides the same analysis, discussed above, to demonstrate
`a reasonable likelihood of showing the combination of Okubo and Angell
`teaches all of the limitations that are common to claims 26 and 28. Pet. 33–
`36. Petitioner further argues Okubo teaches a substrate having a
`predetermined configuration appropriate for particular cleaning probe
`elements by disclosing a round and substantially planar substrate having a
`thickness that can be used to clean vertical or cantilevered probe elements.
`Id. at 31–32 (citing Ex. 1006 ¶¶ 39, 40, 59, Figs. 1, 6A–C).
`Patent Owner argues Petitioner fails to demonstrate a reasonable
`likelihood of showing claim 28 would have been obvious over the
`combination of Okubo and Angell for the same reasons as claim 26. See
`Prelim. Resp. 12–16. For the reasons discussed above, we do not find Patent
`Owner’s arguments to be persuasive on this record.
`Accordingly, on the record before us, having considered Petitioner’s
`arguments and evidence, and Patent Owner’s arguments regarding the
`insufficiency of that evidence, we find Petitioner has demonstrated a
`reasonable likelihood of showing claims 26 and 28 would have been
`unpatentable over the combination of Okubo and Angell.
`E. Obviousness of Claims 26 and 28 over Yamasaka and Angell
`Petitioner argues claims 26 and 28 of the ’966 patent would have been
`unpatentable as obvious over the combined teachings of Yamasaka and
`Angell. Pet. 36–49. Patent Owner argues Petitioner fails to demonstrate the
`obviousness of these claims over these references. Prelim. Resp. 16–21.
`
`15
`
`
`
`IPR2017-00938
`Patent 6,777,966 B1
`
`Upon review of Petitioner’s arguments and evidence, and Patent Owner’s
`arguments regarding the insufficiency of that evidence, and for the reasons
`discussed below, we are persuaded that Petitioner has failed to demonstrate a
`reasonable likelihood of showing claims 26 and 28 would have been obvious
`over Yamasaka and Angell.
`1. Overview of Yamasaka (Ex. 1008)
`Yamasaka discloses
`[a] cleaning mechanism and method for cleaning the probe
`needles of a probe card used for the inspection of the electric
`characteristics of a Wafer W. This mechanism is provided with
`a soft cleaner and a brush cleaner. The soft cleaner has a cleaner
`layer formed of rubber and inorganic filler.
`Ex. 1008, Abstract. Figure 1 of Yamasaka is reproduced below.
`
`
`Figure 1 is a partially-cutaway perspective view of a cleaning apparatus and
`mechanism according to Yamasaka’s invention. Id. at 3:33–35. Figure 1
`discloses prober 10 provided with loader chamber 11 through which wafers
`W to be tested are loaded from cassette C. Id. at 4:1–4. Prober 10 includes
`
`16
`
`
`
`IPR2017-00938
`Patent 6,777,966 B1
`
`main chuck 19 for testing wafers W, and cleaning mechanism 30 consisting
`of soft cleaner 31 provided at one position and brush cleaners 32/33
`provided at second and third positions. Id. at 4:41–44. A more detailed
`view of cleaning mechanism 30 is provided in Figure 2, which is reproduced
`below.
`
`
`
`Figure 2 is a cross-sectional view of Yamasaka’s cleaning mechanism 30.
`Id. at 3:36–38. Cleaning mechanism 30 includes support base 34 for
`supporting soft cleaner 31 and brush cleaners 32/33 as one body, air cylinder
`35, rod 35A, and base 36. Id. at 4:45–48. Soft cleaner 31 includes soft
`cleaner layer 31A supported by container 31B having projection 31C into
`support base 34. Id. at 5:3–8. Cleaning layer 31A is made from a natural or
`synthetic rubber (e.g., silicone) having an inorganic filler of grinding
`particles such as silica sand, glass, alumina, or ceramic particles. Id. at 5:8–
`14. During a cleaning operation, soft cleaner 31 and brush cleaners 32/33
`are alternately raised to contact probe needles 21A to remove debris that has
`adhered to probe needles 21A. Id. at 5:61–7:12.
`
`17
`
`
`
`IPR2017-00938
`Patent 6,777,966 B1
`
`
`2. Comparison of Claims 26 and 28 to the Combined Teachings of
`Yamasaka and Angell
`Claim 26 recites a cleaning device that requires a substrate having a
`configuration to be introduced into the testing apparatus during the normal
`testing operation of the testing apparatus. Ex. 1001, 10:23–28.
`Petitioner argues Yamasaka teaches this limitation by disclosing “a
`cleaning mechanism 30 with a substrate (e.g., container section 31B and/or
`projection 31C) that is included within the test apparatus and thus used in the
`normal testing operating procedure.” Pet. 40–41 (citing Ex. 1008, 5:3–41,
`5:62–6:65, 7:13–26, Fig. 2). Petitioner thus argues that any testing apparatus
`having a cleaning device with a substrate “included” in the testing apparatus
`has a cleaning device with “a substrate having a configuration to be
`introduced into the testing apparatus” as required by claim 26. Id. at 40.
`Petitioner further argues that “Angell also teaches this element.” Id. at 41
`(citing Ex. 1007, 1:62–2:4, 3:25–27).
`Relying on the testimony of Mr. Feldman, Petitioner also argues a
`person having ordinary skill in the art would have found it obvious to
`combine the teachings of Yamasaka and Angell “by simply placing the
`cleaning layers of Yamasaka on the cleaning surrogate wafer substrate of
`Angell and using it on the main chuck of a testing apparatus,” or by
`replacing “the prior art substrate of Yamasaka with the semiconductor
`cleaning wafer with microroughness of Angell to more efficiently clean
`probe elements.” Pet. 38–39 (internal citations omitted) (citing Ex. 1013
`¶¶ 64–65). Petitioner further argues a person of ordinary skill in the art
`would have found this combination obvious because it “would produce a
`commercial advantage in that the cleaning methods and apparatuses
`
`18
`
`
`
`IPR2017-00938
`Patent 6,777,966 B1
`
`disclosed in Yamasaka could use the cleaning semiconductor wafer of
`Angell to more quickly and efficiently clean the probe pins.” Id. at 37
`(internal citations omitted) (citing Ex. 1013 ¶ 63).
`Patent Owner, relying on the testimony of Dr. Bernstein, argues
`“[t]here is no motivation to combine Yamasaka and Angell, and one of
`ordinary skill in the art would not have a reasonable expectation of success
`in doing so.” Prelim. Resp. 20 (citing Ex. 2001 ¶¶ 70–73). Patent Owner
`further argues Yamasaka teaches separate cleaning mechanisms that are
`located aside a chuck in a testing machine, Angell teaches a single layer
`ceramic wafer that is loaded as if it were a semiconductor wafer for testing,
`and “[i]t would not make sense . . . to attempt to combine two completely
`different components, one [of] which is fastened to a testing machine, and
`another [of] which is a separate wafer, into one product.” Id.
`We are persuaded by Patent Owner’s argument. As Patent Owner
`points out, Yamasaka’s cleaning mechanism is “located [within] the
`cleaning machine itself, to the side of the ‘main chuck 19’ where the wafer
`W is loaded.” Prelim. Resp. 17. Thus, container section 31B or projection
`31C of Yamasaka’s soft cleaner 31, which Petitioner identifies as the
`“substrate” required by claim 26, does not have “a configuration to be
`introduced into the testing apparatus” as also required by claim 26.
`Petitioner’s argument for combining Yamasaka and Angell by placing
`Yamasaka’s cleaning layers on Angell’s substrate and using it on the main
`chuck of the testing apparatus, or by simply replacing Yamasaka’s substrate
`with Angell’s cleaning wafer, fails to explain how the combination would
`result in “a substrate having a configuration to be introduced into the testing
`apparatus” as required by claim 26. (emphasis added).
`
`19
`
`
`
`IPR2017-00938
`Patent 6,777,966 B1
`
`
`Although claim 28 does not require a substrate configured to be
`introduced into the testing apparatus, Petitioner relies on the same rationale
`for combining the teachings of Yamasaka and Angell for the purpose of
`demonstrating the unpatentability of both claim 26 and claim 28. See Pet.
`36–39. We find this rationale unpersuasive for the reasons discussed above.
`Accordingly, on the record before us, we find Petitioner fails to
`demonstrate a reasonable likelihood of showing claims 26 and 28 would
`have been obvious over the combination of Yamasaka and Angell.
`F. Obviousness of Claims 26 and 28 over Yamasaka ’104 and Angell
`Petitioner alleges claims 26 and 28 of the ’966 patent would have
`been unpatentable as obvious over the combined teachings of Yamasaka
`’104 and Angell. Pet. 49–63. Patent Owner argues Petitioner fails to
`demonstrate the obviousness of these claims over these references. Prelim.
`Resp. 21–23. Upon review of Petitioner’s arguments and evidence, and
`Patent Owner’s arguments regarding the insufficiency of that evidence, and
`for the reasons discussed below, we are persuaded that Petitioner has
`demonstrated a reasonable likelihood of showing claims 26 and 28 would
`have been unpatentable as obvious over the combined teachings of
`Yamasaka ’104 and Angell.
`1. Overview of Yamasaka ’104 (Ex. 1009)
`Yamasaka ’104 discloses “a cleaner for inspecting projections [that]
`removes any substance, e.g., aluminum oxide, which attaches to needle
`points of probe needles, when the probe needles pierce into the cleaner. The
`cleaner has a cleaner layer and a substrate.” Ex. 1009, Abstract. The
`cleaner is disclosed in Figure 1B of Yamasaka ’104, which is reproduced
`below.
`
`20
`
`
`
`IPR2017-00938
`Patent 6,777,966 B1
`
`
`
`Figure 1B is a cross-sectional schematic illustration of probe needle 17A
`piercing cleaning layer 4 of cleaning device 1 for cleaning the probe needle.
`Id. at 6:46–47. Cleaning layer 4 is made from an organic or inorganic
`rubber (e.g., silicone) embedded with an abrasive filler such as sand, glass,
`or alumina. Id. at 7:9–32. The particle size of the abrasive filler is large
`enough to remove unwanted material from probe needle 17A, yet small
`enough to avoid damaging the point of probe needle 17A. Id. at 7:32–38.
`Substrate 5 is made from a material to which cleaning layer 4 readily
`adheres, such as a silicon substrate. Id. at 7:38–43. Silicon substrate 5 can
`have a roughened surface to improve the adhesion of cleaning layer 4, and
`can be either integrated with the main chuck of the prober/tester or freely
`removabl
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
