Petition for Inter Partes Review of
`U.S. Patent No. 8,980,764
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________________
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`SPTS TECHNOLOGIES LTD.
`Petitioner
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`v.
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`PLASMA-THERM LLC
`Patent Owner
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`______________________
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,980,764
`UNDER 35 U.S.C. §§311-319 AND 37 C.F.R. §42.100 ET SEQ.
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`______________________
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`i
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`Case IPR2017-_________
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`Patent No. 8,980,764
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`Issued March 17, 2015
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`Filed February 11, 2013
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`Certificate of Correction issued June 23, 2015
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`______________________
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`U.S. Patent No. 8,980,764
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________________
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`SPTS TECHNOLOGIES LTD.
`Petitioner
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`v.
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`PLASMA-THERM LLC
`Patent Owner
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`______________________
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,980,764
`UNDER 35 U.S.C. §§311-319 AND 37 C.F.R. §42.100 ET SEQ.
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`______________________
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`
`
`i
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`Case IPR2017-_________
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`Patent No. 8,980,764
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`Issued March 17, 2015
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`Filed February 11, 2013
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`Certificate of Correction issued June 23, 2015
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`______________________
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,980,764
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`TABLE OF CONTENTS
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`INTRODUCTION ……………………………………………………… 1
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`STANDING……………………………………………………………… 3
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`FEE………………………………………………………………………. 3
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`I.
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`II.
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`III.
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`IV. MANDATORY NOTICES (37 C.F.R. §42.8(b)………………………..
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`V.
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`D.
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`Real Part in Interest (37 C.F.R. §42.8(b)(1))……………………... 4
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`Related Proceedings (37 C.F.R. §42.8(b)(2)) ……………………. 4
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`Lead and Back-up Counsel (37 C.F.R. §42.8(b)(1))……………… 4
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`Service Information (37 C.F.R. §42.8(b)(1))……………………... 5
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`Power of Attorney (37 C.F.R. §42.8(b)(1))………………………. 5
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`IDENTIFICATION OF CHALLENGE AND STATEMENT OF
`RELIEF REQUESTED…………………………………………………..
`A.
`Statement of Relief Requested…….. …………………………….. 5
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`5
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`B.
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`C.
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`Statutory Grounds and Claims …………………………………… 6
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`Evidence Relied on in Support of the Challenge………………… 6
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`VI. OVERVIEW OF THE ‘764 PATENT…………………………………... 6
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`A.
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`Effective Filing Date of the ‘764 Patent………………………….. 6
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`State of the Art and Applicable Technologies……………………. 7
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`1. Wafer Handling and Transfer.……………………………. 7
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`2.
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`Plasma Etching……………………………………………. 11
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`U.S. Patent No. 8,980,764
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`3. Wafer Dicing……………………………………………… 12
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`C.
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`Summary of the ‘764 Patent………………………………………. 15
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`1.
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`The Patent Owner’s Admitted Prior Art…………………... 15
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`2.
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`a.
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`b.
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`c.
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`d.
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`e.
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`Plasma dicing……………………………………… 15
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`Dicing frames……………………………………… 15
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`Plasma dicing in combination with dicing frames… 15
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`Etch chamber having plasma source adjacent wall... 16
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`Wafer handling with minimal wafer contact……… 16
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`Technical Overview of the Claims of the ‘764
`Patent………………………………………………………
`a.
`Independent Claim 1………………………………. 17
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`16
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`b.
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`Dependent Claims 2-5……………………………... 19
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`D.
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`Summary of Prosecution History…………………………………. 20
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`Preliminary Amendment………………………………….. 20
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`First (non-final) Office Action…………………………..... 20
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`Amendment in Response to First Office Action………….. 21
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`Second (final) Office Action……………………………… 21
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`Amendment After Final and RCE………………………… 21
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`Third (non-final) Office Action…………………………… 22
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`Amendment in Response to Third Office Action…………. 22
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`8.
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`9.
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`Telephone Interview and Allowance……………………… 24
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`Issuance…………………………………………………… 24
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`10.
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`Certificate of Correction………………………………….. 25
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`E.
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`Person of Ordinary Skill in the Art……………………………….. 25
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`VII. CLAIM CONSTRUCTION…………………………………………….. 25
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`A.
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`B.
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`C.
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`D.
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`E.
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`“plasma source”…………………………………………………... 26
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`“adjacent to the wall of the process chamber”……………………. 27
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`“lift mechanism”………………………………………………….. 27
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`“touching a portion of the work piece overlapped by the
`frame”….
`“mechanical partition”……………………………………………. 28
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`28
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`VIII. GROUND OF CHALLENGE……………………………………………
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`A.
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`Claim Chart……………………………………………………….. 29
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`28
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`B. Argument…………………………………………………………. 32
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`1.
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`2.
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`Summary………………………………………………….. 32
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`Brief Description of Elements……………………………. 34
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`a.
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`b.
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`d.
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`Element A…………………………………………. 35
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`Elements B, C, D, E and G………………………... 35
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`Element F…………………………………………. 37
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`Element H…………………………………………. 38
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,980,764
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`e.
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`f.
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`g.
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`Element I………………………………………….. 41
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`Combination of Elements A through I……………. 43
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`Elements J-M of the Dependent Claims…………... 44
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`3.
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`Obviousness Under the Framework of Graham…………... 44
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`a.
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`Scope and Content of the Prior Art……………….. 45
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`b.
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`c.
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`d.
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`i.
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`ii.
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`Sekiya ‘901 – What is discloses…………… 45
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`Sekiya ‘901 – What is does not disclose…... 48
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`iii.
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`Todorow et al. – What is discloses………… 49
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`iv.
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`v.
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`Sekiya ‘901 and Todorow et al. – What they
`do not disclose……………………………...
`Nisany et al. and Ogasawara et al. – What
`they disclose………………………………..
`Differences Between the Claims and Prior Art…… 57
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`52
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`53
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`Level of Skill in the Art…………………………… 57
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`Rationales Supporting the Legal Conclusion of
`Obviousness…………………………...…………...
`i.
`Rationale #1……………………………….. 58
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`58
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`ii.
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`iii.
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`Rationale #2……………………………….. 61
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`Rationale #3………………………………... 66
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`IX.
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`CONCLUSION………………………………………………………….. 69
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`X.
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`APPENDIX OF EXHIBITS……………………………………………... 70
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`XI.
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`CERTIFICATE OF WORD COUNT…………………………………… 72
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`XII. CERTIFICATE OF SERVICE………………………………………….. 73
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,980,764
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,980,764
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`INTRODUCTION
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`“… when a patent “simply arranges old elements with each
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`performing the same function it had been known to
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`perform” and yields no more than one would expect from
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`such an arrangement, the combination is obvious.” KSR
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`International Co. v Teleflex Inc. et al., 550 U.S. 398, 417
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`(2007), citing Sakraida v AG Pro, Inc., 425 U.S.
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`273(1976). (Emphasis added.)
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`The scenario Justice Kennedy references above is exactly the case with the
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`I.
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`claims of U.S. Patent No. 8,980,764 (“the ‘764 patent”) (Ex. 1001). This will
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`become readily apparent from the ground of challenge set forth later herein.
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`The ‘764 patent is one of twenty-five (25) U.S. patents and patent applications
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`known to Petitioner claiming priority to U.S. patent application no. 13/412,119 (see
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`the listing Ex. 1002), which issued as U.S. Patent No. 8,802,545 (Ex. 1003). And,
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`like its many siblings, the ‘764 patent never should have issued. The claimed
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`“invention” is merely a cut-and-paste melding of already existing technologies in a
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`way that is both expected and obvious. Nothing new is presented or even suggested,
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`and the claims would never pass muster under the scrutiny of a court challenge.
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`Nonetheless, even an unenforceable patent portfolio can have an unfair and
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,980,764
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`anti-competitive impact in the marketplace. That is the case here where the Patent
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`Owner’s representative recklessly sent a demand letter (Ex. 1004) to a customer of
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`the Petitioner (SPTS Technologies Ltd.) using the Petitioner’s equipment. The letter
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`suggests that the mere act of “plasma dicing substrates that are taped to dicing
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`frames” is enough for the Patent Owner to threaten an infringement action. This
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`Petition will demonstrate the absurdity of that suggestion.
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`In addition, the dubious patents are espoused by the Patent Owner in
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`competitive sales meetings and the like, with the apparent intent of intimating that
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`one simply can not dice wafers using the combination of plasma and dicing frames
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`without running afoul of their patents. That is a ludicrous notion given that the
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`inventors of the ‘764 patent and its siblings were not the first to invent plasma
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`dicing, they were not the first to invent dicing frames, and they were not the first to
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`invent plasma dicing of substrates that are taped to dicing frames. The ‘764 patent
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`even admits as much.
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`The ground for challenge presented herein is just one of a seemingly endless
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`number of possible combinations of the prior art that render the claims of the ‘764
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`patent invalid. Every claimed element was well known at the time of the
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`“invention”, and the combinations of these elements provide no unexpected benefits
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`and are manifestly obvious.
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`Petitioner therefore petitions for inter partes review of claims 1-5 of the ‘764
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`patent’ pursuant to the provisions of 35 U.S.C. §§311-319 and 37 C.F.R. §42.
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,980,764
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`This Petition demonstrates that there is a reasonable likelihood that Petitioner
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`will prevail in establishing that at least one of claims 1-5 of the ‘764 patent is
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`unpatentable under the provisions of “pre-AIA” 35 U.S.C. §102(b) and §103.
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`U.S. Patent and Trademark Office records show that the ‘764 patent is
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`assigned to Plasma-Therm LLC, and accordingly, Plasma-Therm LLC is believed to
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`be the “Patent Owner” in this Petition.
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`II.
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`STANDING
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`Petitioner certifies that the '764 patent is eligible for inter partes review
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`and further certifies that Petitioner is not barred or otherwise estopped from
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`challenging the identified claims on the ground identified within the present
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`Petition. The ‘764 patent has an effective filing date before March 16, 2013
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`(i.e., the patent was filed under the pre-AIA “first-to-invent” patent system),
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`and, as of the filing of this Petition, the Patent Owner has not served a
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`complaint for infringement of the ‘764 patent on the Petitioner, real party in
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`interest or privy of the Petitioner.
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`III. FEE
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`The inter partes review fee under 37 C.F.R. §42.15(a) has been submitted
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`concurrently with the filing of this Petition. The undersigned further authorizes
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`payment for any additional fees that might be due in connection with this Petition
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,980,764
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`to be charged to the undersigned’s deposit account 50-0238.
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`IV. MANDATORY NOTICES (37 C.F.R. §42.8(b))
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`A. Real Party in Interest (37 C.F.R. §42.8(b)(1))
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`The real parties in interest are SPTS Technologies Limited and Orbotech
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`Ltd.
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`SPTS Technologies Limited (“SPTS”) is the Petitioner and is located at
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`Ringland Way, Newport, Wales, United Kingdom, NP18 2TA.
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`SPTS is a wholly-owned subsidiary of Orbotech Ltd., located at Shderot
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`Hasanhedrin, Yavne 8110101, Israel.
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`B. Related Proceedings (37 C.F.R. §42.8(b)(2))
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`There are no related proceedings.
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`C.
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`Lead and Back-up Counsel (37 C.F.R. §42.8(b)(3))
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`Petitioner designates the following as lead and back-up counsel:
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`LEAD COUNSEL
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`Adam C. Volentine
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`Reg. No. 33289
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`BACK-UP COUNSEL
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`Josh Povsner
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`Reg. No. 42086
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`Volentine & Whitt PLLC
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`Volentine & Whitt PLLC
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,980,764
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`11951 Freedom Dr., Suite 1300
`Reston, VA 20190
`Tel: (571) 283-0721
`Fax: (571) 283-0740
`avolentine@volentine.com
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`11951 Freedom Dr., Suite 1300
`Reston, VA 20190
`Tel: (571) 283-0722
`Fax: (571) 283-0740
`swhitt@volentine.com
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`Service Information (37 C.F.R. §42.8(b)(4))
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`D.
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`Counsel for Petitioner can be reached at Volentine & Whitt, PLLC,
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`11951 Freedom Drive, Suite 1300, Reston, Virginia, 20190; Tel.
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`571.283.0720; Fax 571.283.0740.
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`Petitioner consents to service by electronic mail to:
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`avolentine@volentine.com
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`iplaw@volentine.com
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`E.
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`Power of Attorney (37 C.F.R. §42.8(b)(1))
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`A Power of Attorney has been submitted concurrently with this Petition.
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`V.
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`IDENTIFICATION OF CHALLENGE AND STATEMENT OF
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`RELIEF REQUESTED
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`A. Statement of Relief Requested
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`Petitioner requests cancellation of claims 1-5 of the ‘764 patent for the
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`reasons set forth herein.
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,980,764
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`B.
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`Statutory Ground of Challenge and Claims
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`Ground of Challenge: Claims 1-5 are unpatentable under 35 U.S.C.
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`§§102(b)/103 as being obvious over U.S. Patent Publication No. 2004/0015901
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`(“Sekiya ‘901” (Ex. 1005)), in view of U.S. Patent Publication No. 2006/0000805
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`(“Todorow et al.” (Ex. 1006)), U.S. Patent Publication No. 2009/0183583
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`(“Nisany et al.” (Ex. 1007)) and U.S. Patent No. 7,411,384 (“Ogasawara et al.”
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`(Ex. 1008)).
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`C.
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`Supporting Evidence Relied Upon for the Challenged Claims
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`The evidence to support the above challenge and the identification of where
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`each claim limitation is found is the prior art references is provided herein. The
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`evidence is in the form of patent and printed publications discussed in detail
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`throughout this Petition, together with the Declaration of Dr. John E. Spencer
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`submitted herewith (Ex. 1009). In particular, the Petition and Declaration explain
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`where each claim element is found in the prior art and why the claims would have
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`been obvious to a person of ordinary skill in the art (“POSITA”) before the
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`alleged invention of the ‘764 patent.
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`VI. OVERVIEW OF THE '764 PATENT
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`A.
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`Effective Filing Date of the ‘764 Patent
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`The ‘764 patent is a divisional of U.S. patent application no. 13/412,119, filed
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`March 5, 2012, which issued as U.S. 8,802,545, on August 12, 2014 (Ex. 1003).
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`Petition for Inter Partes Review of
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`The ‘764 patent also purports to make a claim of priority to U.S. provisional
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`application no. 61/452,450, filed March 14, 2011 (Ex. 1010).
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`March 14, 2011, thus constitutes the earliest alleged effective filing date of the
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`‘764 patent. All references relied on in the ground of challenge of this Petition were
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`published more than one year before that date, i.e., all references constitute prior art
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`under pre-AIA 35.U.S.C. §102(b).
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`B. State of the Art and Applicable Technologies
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`As Dr. Spencer explains in his Declaration, the ‘764 patent is generally
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`directed to three process categories commonly utilized in the fabrication of
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`semiconductor devices, namely, (1) wafer handling and transfer, (2) plasma etching,
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`and (3) wafer dicing. (Ex. 1009, ¶17)
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`1. Wafer Handling and Transfer
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`As testified by Dr. Spencer, robotic arms and lift devices were commonly used
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`long before the alleged invention of the ‘764 patent to transfer a substrate such as a
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`wafer into and out of a substrate processing chamber, and to place the substrate on a
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`substrate support within the chamber. (Ex. 1009, ¶18). As an example, Dr. Spencer
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`points to FIGS. 1 and 2 of U.S. Patent No. 5,669,977 (“Shufflebotham et al.” (Ex.
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`1011)).
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`Petition for Inter Partes Review of
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` In the example of FIGS. 1 and 2 above, Shufflebotham et al. teach that a wafer
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`2 is supported on a robotic arm 4 and transferred under vacuum from an entrance
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`load lock 12 to a processing chamber 14. Lift pins 6 of a lift pin mechanism 8 are
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`extended to lift the wafer 2 off the robotic arm 4, and the robotic arm 4 is withdrawn
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`from the chamber 14, with the wafer remaining in the chamber 14 and resting atop
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`the lift pins 6. The lift pins are then lowered to place the wafer 2 on a substrate
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`8
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`support within the chamber 14. After processing, the lift pins 6 are again extended to
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,980,764
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`elevate the processed wafer 2 for placement onto another robotic arm 6 to thereby
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`transfer the processed wafer 2 under vacuum into an exit load lock 16. (Ex 1009,
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`¶19) and (Ex 1011, 1:37-51)
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`Dr. Spencer further testifies that a design consideration in wafer handling
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`systems is the avoidance of damage to the wafer being handled, and in particular
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`circuit carrying regions the wafer being handled. As a consequence of this, it was
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`known to engage the periphery of the wafer during handling. (Ex. 1009, ¶20)
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`Indeed, Dr. Spencer agrees with the observation of the prior art in the ‘764 patent
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`that underside contact close to the wafer edge was known (1009, ¶20):
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`“[Robotic wafer] Handlers are designed to support the
`wafers with minimal contact, to minimize possible
`contamination and reduce the generation of particulates.
`Edge contact alone, or underside contact close to the wafer
`edge at only a few locations (typically within 3-6 mm of
`the wafer edge) is generally employed.” (Ex. 1001, 2:6-
`11.)
`Dr. Spencer further testifies that, in keeping with these design considerations
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`of wafer handling, a variety of lift mechanism designs contacting the wafer close to
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`the wafer edge were generally known in the art before the alleged invention of the
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`‘764 patent. (Ex. 1009, ¶21) As examples, Dr. Spencer points to the lift mechanism
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`9
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`shown at FIG. 2 of U.S. Patent No. 6,935,466 (“Lubomirsky et al.” (Ex. 1012)), the
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,980,764
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`lift mechanism shown at FIG. 11 of U.S. Patent No. 6,951,821 (“Hamelin et al.” (Ex.
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`1013)), and the lift mechanism shown at FIG. 8 of U.S. Patent 7,449,071 (“Aggarwal
`
`et al.” (Ex. 1014)), illustrated below:
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`10
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,980,764
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`In the example of FIG. 2 of Lubomirsky et al., Dr. Spencer testifies that the lift
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`pins are located outside the outer periphery of a wafer 106, and each is configured
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`with a lift finger 170. Each finger 170 in turn has a finger tip 172 which is
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`positioned to engage the underside of the perimeter of the wafer 106 as the wafer 106
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`is lowered to and raised from a support 108 within a processing chamber. (Ex. 1009,
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`¶22) (Ex. 1012, 4:61 to 5:9)
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`
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`In the example of FIG. 5 of Aggarwal et al., Dr. Spencer testifies a lift
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`mechanism is configured by a lift ring 54 that is beveled so that its outer radial edge
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`82 is slightly higher than its inner radial edge 84. As such, the lift ring 54 only
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`touches a wafer 16 at its outer edge 17. In this way, contact between the wafer 16
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`and lift ring 54 is advantageously minimized. (Ex. 1009, ¶23) (Ex. 1014, 11:6-14)
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`
`
`In the example of FIG. 11 of Hamelin et al., Dr. Spencer testifies that a lift
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`mechanism is configured by a blade 500 having three or more tabs 510 and a drive
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`system 530 for permitting vertical translation of the blade 500 within a processing
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`chamber. The tabs 510 are configured to grasp a substrate as the substrate is lowered
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`to and raised from a substrate holder within the processing chamber. (Ex. 1009, ¶24)
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`(Ex. 1013, 12:32-41)
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`2.
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`Plasma Etching
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`Dr. Spencer testifies that he is in agreement with the admitted prior art
`
`observations made at column 1, lines 25-63, of the ‘764 patent. That is, plasma
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`11
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,980,764
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`etching (also called dry etching) is used extensively in the production of
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`semiconductor devices. Etching equipment generally includes a device for
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`producing plasma from a process gas introduced into a plasma chamber that contains
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`a substrate support therein, such as an electrostatic chuck (ESC). According to Dr.
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`Spencer, design factors considered in plasma processing include gas composition,
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`power, pressure, thermal budgets, and so on. (Ex. 1009, ¶25)
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`
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`The ‘764 patent (at 1:38-40) makes references to inductively coupled plasma
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`(ICP). Dr. Spencer testifies that ICP is generated from an RF (radio frequency)
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`powered magnetic field which is typically sourced by a coil arrangement positioned
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`outside a wall of the chamber. Other types of plasma generation for etching are also
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`well known, such as reactive ion etching (RIE) systems (Ex. 1009, ¶26)
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`
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`3. Wafer Dicing
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`As testified by Dr. Spencer, semiconductor fabrication generally includes a
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`process known as dicing in which a wafer is separated into individual semiconductor
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`chips. (Ex. 1009, ¶27)
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`Dicing technologies vary, and include scribing of the wafer to separate the
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`wafer into chips, sawing of the wafer into chips, laser cutting of the wafer into chips,
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`and/or plasma dicing of the wafer into chips. (Ex. 1009, ¶28)
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`Dr. Spencer testifies that an example of plasma dicing is found in U.S. Patent
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`No. 6,642,127 (“Kumar et al.”) (Ex. 1015), which is cited at column 3, lines 22-35,
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`12
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`of the ‘764 patent. Kumar et al. teaches a method and apparatus for dicing a
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,980,764
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`semiconductor wafer using a plasma etch process that takes place within an etch
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`chamber or reactor. (Ex. 1009, ¶29) (Ex. 1015, Abstract)
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`Dr. Spencer is in agreement with the observation made by Kumar et al. that
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`plasma dicing of a wafer is not limited by the type of etching equipment being
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`utilized (Ex. 1009, ¶30) (Ex. 1015, 3:58-61):
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`“In one embodiment of the invention, the etching process is
`accomplished using a decoupled plasma source (DPS)
`plasma etch chamber manufactured by Applied Materials,
`Inc. of Santa Clara, Calif. However, any plasma etch
`chamber capable of etching silicon may be used.”
`(Emphasis added.)
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`
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`Regardless of the particular dicing technology adopted, Dr. Spencer testifies
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`that the use of so-called “dicing frames” have long been known in the art. Dicing
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`frames generally consist of a hoop-shaped frame having an inner diameter greater
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`than a diameter of a wafer to be diced, and dicing tape adhered to one side of the
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`frame and overlapping the open interior of the frame. Generally, the adhesive side of
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`the dicing tape is oriented upwardly through the opening in the dicing frame. The
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`wafer is adhered to the dicing tape within the opening of the frame during dicing.
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`The dicing frame and tape function to secure the individual chips in place during and
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`13
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`upon completion of the dicing process. (Ex. 1009, ¶30)
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,980,764
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`As an example of a conventional dicing frame being using in plasma dicing,
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`Dr. Spencer points to the dicing frame shown in FIG. 1 of U.S. Patent No. 6,465,158
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`(“Sekiya ‘158”) (Ex. 1016):
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`
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`In the example of FIG. 1 of Sekiya ‘158, Dr. Spencer testifies that a work
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`
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`piece (or wafer assembly) is formed by the combination of a wafer 4, a frame 6 and a
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`mounting tape 8. The mounting tape 8 extends across the opening 18 of the frame 6
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`and is adhered to the back of the frame 6. The wafer 4 is mounted on the tape 8
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`within the opening 18 of the frame 6. After plasma etching, the separated chips of
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`the wafer are retained by the tape 8 adhered to the frame 6. (Ex. 1009, ¶¶31-32) (Ex.
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`1015, 2:59 to 3:17; 4:17-26 and 44-48)
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`14
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,980,764
`
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`Summary of the ‘764 Patent
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`1.
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`The Patent Owner’s Admitted Prior Art
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`C.
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`Although not relied on as a reference for the challenge presented herein,
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`Petitioner contends and Dr. Spencer agrees that the prior art admissions of the
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`‘764 patent are instructive as to the level of ordinary skill in the art before the
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`alleged invention of the ‘764 patent. (Ex. 1009, ¶33)
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`Among others, the ‘764 patent admits the following as being prior art:
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`
`
`
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`a.
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`Plasma dicing
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`
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`The ‘764 patent admits and Dr. Spencer agrees that plasma wafer dicing for
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`“overcoming some … limitations” of mechanical wafer dicing is prior art. See Ex.
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`1001, col. 2, lines 49-67 (a portion of which is copied below), and col. 3, lines 22-
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`27 (referencing Ex. 1015, U.S. patent no. 6,642,127). (Ex. 1009, ¶34)
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`
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`b.
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`Dicing frames
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`
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`The ‘764 patent admits and Dr. Spencer agrees that dicing frames are prior
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`art. As described therein, a dicing (rigid) frame having an adhesive tape at its
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`interior is applied to the wafer prior to wafer dicing for the advantage that it “holds
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`the separated die” (or “chips”) produced as a result of the dicing. (Ex. 1009, ¶35)
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`(Ex. 1001, col. 3, lines 5-9.)
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`
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`
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`c.
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`Plasma dicing in combination with dicing frames
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`The ‘764 patent admits and Dr. Spencer agrees that mounting a wafer to a
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`15
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`dicing frame during plasma dicing is prior art. (Ex. 1009, ¶36) (Ex. 1001, 3:36-38)
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,980,764
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`d. Etch chambers having a plasma source adjacent a
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`chamber wall
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`
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`The ‘764 patent admits and Dr. Spencer agrees that plasma etching of
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`semiconductor substrates (e.g., wafers) in a process chamber fitted adjacent its
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`chamber wall with a plasma source is prior art, such as an Inductively Coupled
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`Plasma (ICP) source, as “necessary for cost-effective manufacturing”. (Ex. 1009,
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`¶37) (Ex. 1001, 1:25-41)
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`e. Wafer handlers designed to minimally contact wafer
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`The ‘764 patent admits and Dr. Spencer agrees wafer handlers were known
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`in the art. Particularly, the ‘764 admits and Dr. Spencer agrees that known wafer
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`handlers were “designed to support the wafers with minimal contact” and
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`comprise fixtures disposed within a process chamber (i.e., the chamber in which
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`the wafer is processed) and including an electrostatic chuck (ESC). (Ex. 1009,
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`¶38) (Ex. 1001, 2:4-15)
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`
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`2.
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`Technical Overview of the claims of the ‘764 Patent
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`The FIELD OF THE INVENTION of the ‘764 patent provides an appropriate
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`statement of the technical overview of the claims of the patent. Basically, the alleged
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`invention of the ‘764 patent resides in “the use of an apparatus for the formation of
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`individual device chips from a semi-conductor wafer”. (Ex. 1009, ¶39) (Ex. 1001,
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`16
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,980,764
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`1:18-21)
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`a.
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`Independent claim 1
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`
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`Dr. Spencer testifies that the following annotated FIG. 6 of the ‘764 patent is
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`representative of an apparatus to which the highlighted limitations of claim 1 are
`
`applied:
`
`
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`Particularly in the context of independent claim 1, the apparatus of FIG. 6 includes a
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`process chamber 10 having a wall, a plasma source 12 adjacent to the wall of the
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`process chamber 10 for generating a plasma in the process chamber 10, a work piece
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`17
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`support 13 within the process chamber 10 and having an electrostatic chuck (ESC)
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,980,764
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`16, a lifting mechanism 17 within the work piece support 13 for lowering a work
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`piece onto and raising a work piece off of the work piece support 13, and a
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`mechanical partition 25 positioned below the plasma source 12 and above the work
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`piece support 13. (Ex. 1009, ¶¶40-41) (Ex. 1001, 9:61 to 10:8; 12:4-18 and 29-38)
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`
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` According to the disclosure (but not the claims) of the ‘761 patent, the
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`mechanical partition functions to “reduce ion bombardment on the substrate (1).”
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`(Ex. 1009, ¶42) (Ex. 1001, 12:29-34)
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`Dr. Spencer further testifies that the following annotated FIGS. 3 and 7 of the
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`‘764 patent is representative of the work piece, and the operative relationship
`
`between the work piece and the lifting mechanism, according to independent claim
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`1:
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`18
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,980,764
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`As shown in FIG. 3 above, a work piece is formed by placing a substrate 1 onto a
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`support film 5 which is located on a frame 6. And, as shown in FIG. 7 above, the
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`work piece (1/5/6) is placed on the work piece support 13 using the lifting
`
`mechanism 17. The lifting mechanism 17 touches a portion of the work piece (1/5/6)
`
`overlapped by the frame 6. (Ex. 1009, ¶¶43-44) (Ex. 1001, 9:33-48; 12:4-18)
`
`Referring collectively to annotated FIGS. 6, 3 and 7 above, independent claim
`
`1 recites that the work piece (1/5/6) is etched through the generated plasma from the
`
`plasma source 12 with the mechanical partition 25 being positioned below the
`
`plasma source 12 and above the work piece (1/5/6). (Ex. 1009, ¶45)
`
`
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`
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`b. Dependent claims 2-5 of the ‘764 patent
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`The dependent “method” claims 2-5 do not recite any further steps, and
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`
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`19
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`instead recite additional structural features of the mechanical partition 25, as are
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,980,764
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`described at col. 12, lines 29-38. These structural features include the partition 25
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`being conductive, coated with a plasma resistant coating, having holes, and being
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`mounted to walls of the chamber 10. (Ex. 1009, ¶46) (Ex. 1001, 12:29-38)
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`
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`D.
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`Summary of the Prosecution History of the '764 Patent
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`A copy of the filed history retrieved from Public PAIR is submitted herewith
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`as Exhibit 1017.
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`The Application was filed on February 11, 2013, claiming priority as a
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`purported divisional application to U.S. Patent Application No. 13/412,119, which
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`was filed on March 5, 2012, and to U.S. Provisional Patent Application No.
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`61/452,450 (the “Provisional Application”), which was filed on March 14, 2011.
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`(Ex. 1001, cover page the ‘764 patent).
`
`
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`1.
`
`Preliminary Amendment
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`
`
`In a Preliminary Amendment filed with the application on February 11,
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`2013, the Patent Owner replaced the claims of the original specification with new
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`claims 33-42. (Ex. 1017, pp. 489-498).
`
`
`
`2.
`
`First (non-final) Office Action
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`
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`On July 18, 2013, the Examiner issued a first Office Action rejecting all of
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`claims 33-42. (Ex. 1017, pp. 300-309) The Examiner’s rejections included a
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`rejection of claims 33-34, 37-39 and 41-42 under 35 U.S.C. §102(b) as being
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`20
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`anticipated by U.S. Patent Publication No. 2010/0048001 (“Harikai et al.” (Ex.
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,980,764
`
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`1018)), and a rejection of claims 34-38 and 40-42 under 35 U.S.C. §102(b) as
`
`being obvious over Harikai et al. in view of U.S. Patent No. 6,339,206 (“Johnson”
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`(Ex. 1019)).
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`3.
`
`Amendment in Response to First Office Action
`
`On October 18, 2013, the Patent Owner filed an Amendment (Ex. 1017, pp.
`
`278-290) in which dependent claim 34 was cancelled, claims 33, 38, 39 and 42
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`were amended, and new claims 43-44 were added.
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`
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`With respect to amended independent claim 33, the Patent Owner argued
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`that defining the plasma source as an “inductively coupled plasma source
`
`generating a high density plasma” removed the claim from the teachings of
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`Harikai et al. (Ex. 1017, pp. 289-290).
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`4.
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`Second (final) Office Action
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`On January 29, 2014, the Examiner issued a final Office Action rejecting all
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`claims pending at the time (i.e., claims 33 and 35-44). The Examiner’s rejections
`
`included a rejection of claims 33 and 35-44 under 35 U.S.C. §103 as being obvious
`
`over Johnson in view of Harikai et al., both of which were relied on in the
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`rejections put forth by the Examiner in the first Office Action. (Ex. 1017, pp. 217-
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`226).
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`5.
`
`Amendment After Final and RCE
`21
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,980,764
`
`
`On March 27, 2014, the Patent Owner filed an Amendment after the final
`
`rejection (Ex. 1017, pp. 205-212), which was denied entry by the Examiner. (Ex.
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`1017, pp. 201-203). Applicants responded on April 28, 2014, by filing an RCE.
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`(Ex. 1017, pp. 193-194). As a result, amendments to claims 33, 38, 39, 42, 43 and
`
`44 were entered into the record. (Ex. 1017, pp. 207-210)
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`
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`With respect to amended independent claim 33, the Patent Owner argued that
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`“neither Harikai et al. or Johnson teach or suggest a mechanical partition that is
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`positioned below the plasma source and above the work piece in a plasma
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`processing system.” (Ex. 1017, p. 211)
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`6.
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`Third (non-final) Office Action
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`
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`On June 6, 2014, the Examiner issued a non-final Office Action rejecting all
`
`claims pending at the time (i.e., claims 33 and 35-44). (Ex. 1017, pp. 138-146).
`
`Among the rejections, claims 33, 35 and 37-44 were rejected under 35 U.S.C. §103
`
`as being obvious over U.S. Patent Publication No. 2002/0185226 (“Lea et al. (Ex.
`
`1020)) in view of Harikai et al., and claim 36 was rejected under 35 U.S.C. §103 as
`
`being obvious over Lea et al. in view of Harikai et al. and further in view of
`
`Johnson.
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`7.
`
`Amendment in response to Third Office Action
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`On August 27, 2014, the Patent Owner filed an Amendment in which claims
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`33 and 44 were amended, and claims 39-43 were cancelled. (Ex. 1017, pp. 128
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