Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 33
`Entered: November 15, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`PROMOS TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01417
`Patent 7,375,027 B2
`____________
`
`
`Before JAMESON LEE, KEVIN F. TURNER, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`
`
`
`

`

`IPR2017-01417
`Patent 7,375,027 B2
`
`
`A.
`
`INTRODUCTION
`I.
`Background and Summary
`Petitioner1 filed a Petition (Paper 1, “Pet.”) to institute inter partes
`review of claims 1–10 of U.S. Patent No. 7,375,027 B2 (Ex. 1001, “the ’027
`patent”). We instituted review of claims 1–10 on all grounds asserted in the
`Petition. Paper 7 (“Decision on Institution”). Patent Owner2 filed a Patent
`Owner Response.3 Paper 13. Petitioner filed a Reply.4 Paper 20. Oral
`hearing was held on August 16, 2018. A copy of the transcript for the oral
`hearing has been entered as Paper 32.
`We determine that Petitioner has shown by a preponderance of the
`evidence that each of claims 1–10 is unpatentable.
`
`B.
`
`Related Matters
`Both Petitioner and Patent Owner have identified the following action
`as involving the ’027 patent: ProMOS Technologies, Inc. v. Samsung
`Electronics Co., Ltd., No. 1:16-cv-00335-SLR (D. Del.). Pet. 1; Paper 4.
`Petitioner identifies these inter partes review proceedings between the
`parties that involve other patents: IPR2017-00032; IPR2017-00033;
`IPR2017-00035; IPR2017-00036; IPR2017-00037; IPR2017-00038;
`
`1 Samsung Electronics Co., Ltd.
`2 ProMOS Technologies, Inc.
`3 Patent Owner also filed a declaration of Mr. Ron Maltiel in support of the
`Patent Owner Response. Ex. 2002.
`4 Patent Owner filed a Motion for Observations on Cross-Examination.
`Paper 26. Petitioner filed a Response to Patent Owner’s Motion for
`Observations on Cross-Examination. Paper 28. We have considered both
`submissions.
`
`
`2
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`IPR2017-01417
`Patent 7,375,027 B2
`
`IPR2017-00039; and IPR2017-00040. Pet. 1–2. Patent Owner additionally
`identifies these inter partes review proceedings between the parties that
`involve other patents: IPR2017-01412, IPR2017-01413, IPR2017-01414,
`IPR2017-01415, IPR2017-01416, IPR2017-01418, and IPR2017-01419.
`Paper 4.
`C.
`The ’027 Patent
`
`The ’027 patent is directed to the field of manufacturing
`semiconductor devices, and more particularly to opening a contact via to a
`surface of a material in a semiconductor device. Ex. 1001, 1:6–9. The
`’027 patent explains that a problem with preexisting methods of opening a
`contact via to a surface of a material in a semiconductor device is that the
`semiconductor material at the bottom of the contact via is etched twice, thus
`subjecting that material to damage. Id. at 1:13–30. Specifically, the
`’027 patent describes that in the prior art, a first etching step is applied
`which goes through a photoresist layer down to the surface of the
`semiconductor material, subjecting the surface to the effects of etching once.
`Id. at 1:19–21. After the first etching step, a liner material is applied to the
`via and the surface of the semiconductor material within the via. Id. at 1:21–
`23. Then, an anisotropic etching step is performed to remove the liner
`material at the bottom of the aperture, which has the undesirable effect of
`subjecting the surface of the semiconductor material within the via to the
`effects of etching a second time. Id. at 1:23–37.
`The ’027 patent discloses a method of providing a contact via to a
`surface of a material that avoids the damaging effects of the second etching
`step in prior art techniques. Id. at 1:38–48. Specifically, the ’027 patent
`describes:
`
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`IPR2017-01417
`Patent 7,375,027 B2
`
`
`In one aspect of the invention, a contact via to a surface of a
`material is performed by forming a first dielectric layer on the
`surface, forming a second dielectric layer on the first dielectric
`layer, providing a first aperture which extends from a surface of
`the second dielectric layer toward the contact surface area of the
`material for a distance which is less than a combined technique
`of the first and second dielectric layers. Next, a third dielectric
`layer is provided covering a surface of the aperture and an
`exposed surface of the first dielectric layer. A portion of the third
`dielectric layer and a portion of the first dielectric layer are
`removed to expose a portion of the contact surface area of the
`material.
`Id. at 1:48–59.
`Of all challenged claims, claim 1 is the only independent claim.
`Claim 1 is reproduced below:
`1.
`A method of providing a contact via to a surface of
`a substrate, the method comprising:
`forming a first dielectric layer on the surface;
`forming a second dielectric layer on the first dielectric
`
`layer;
`
`providing a first aperture which extends from a surface of
`the second dielectric layer toward the surface of the substrate
`for a distance which is less than a combined thickness of the
`first and second dielectric layers;
`providing a third dielectric layer covering a surface of the
`first aperture and an exposed surface of the first dielectric layer;
`and
`
`removing a portion of the third dielectric layer and a
`portion of the first dielectric layer to expose a portion of the
`surface of the substrate.
`Ex. 1001, 4:17–32.
`Notably, in the “providing a first aperture” step, the aperture does not
`extend all the way to the surface of the substrate because it starts at the
`
`4
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`IPR2017-01417
`Patent 7,375,027 B2
`
`surface of the second dielectric layer and extends for a distance that is less
`than the combined thickness of the first and second dielectric layers. The
`surface of the substrate is not exposed until the step of “removing a portion
`of the third dielectric layer and a portion of the first dielectric layer.”
`Figure 3 of the ’027 patent is reproduced below:
`
`
`Figure 3 illustrates a cross-section of the semiconductor structure in the
`midst of contact via formation. Ex. 1001, 2:19–27. Protective layer 8
`constitutes a first dielectric layer. Id. at 2:55–57. Reference numeral 9
`designates a second dielectric layer that has been applied over first dielectric
`layer 8. Id. at 2:66–67. Initial via 11 has been etched through second
`dielectric layer 9 but does not extend through to the surface of
`semiconductor substrate 1. Id. at 3:3–6.
`
`
`
`5
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`IPR2017-01417
`Patent 7,375,027 B2
`
`
`Figure 5 of the ’027 patent is reproduced below:
`
`
`Figure 5 illustrates the deposition of third dielectric layer 15 over the initial
`aperture and the exposed surface of the first dielectric layer. Id. at 2:30–32;
`3:35–45.
` Figure 6 of the ’027 patent is reproduced below:
`
`
`Figure 6 illustrates the results of an anisotropic etching step that completes
`the contact via by removing the portion of third dielectric layer 15 that sits
`atop dielectric layer 9 and the portion of dielectric layer 15 that sits atop first
`dielectric layer 8. Id. at 3:46–50. In addition, the portion of first dielectric
`layer 8 that covers source region 6. Id. at 3:50–53. Contact via 18,
`extending to the surface of substrate 1, has been formed. Id. at 3:58–60.
`
`6
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`IPR2017-01417
`Patent 7,375,027 B2
`
`D.
`
`Evidence Relied Upon by Petitioner
`Petitioner relies on the following references5:
`
`
`
`Koyama
`
`Ngo
`
`Ono
`
`Date
`Reference
`U.S. Pat. Pub. 2003/0049920 A1 March 13, 2003
`
`U.S. Pat. No. 6,060,393
`
`May 9, 2000
`
`Exhibit
`Ex. 1005
`
`Ex. 1012
`
`Jap. Pat. App. Pub. H10-144788 May 29, 1998
`
`Ex. 10096
`
`U.S. Pat. No. 5,654,238
`
`Aug. 5, 1997
`
`Ex. 1008
`
`Cronin
`
`Petitioner also relies on the Declarations of Gary Rubloff, Ph.D.
`(Exs. 1002, 1026).7
`E.
`The Asserted Grounds
`Petitioner asserts the following grounds of unpatentability (Pet. 3–4):
`Claim(s) Challenged
`Basis
`Reference(s)
`1, 2, 4, 6–8, and 10
`§ 102(b)
`
`Ono
`
`3 and 5
`
`9
`
`§ 103(a)
`
`§ 103(a)
`
`Ono and Ngo
`
`Ono and Cronin
`
`1, 2, 4, 6–8, and 10
`
`§ 102(b)
`
`Koyama
`
`3 and 5
`
`9
`
`§ 103(a)
`
`§ 103(a)
`
`Koyama and Ngo
`
`Koyama and Cronin
`
`
`5 The application leading to the ’027 patent was filed on October 12, 2004
`and does not claim priority to any earlier application. Ex. 1001, [22].
`6 Exhibit 1009 is includes Ono (pages 9–16), an English translation of Ono
`(pages 1–8), and an affidavit certifying the translation (page 17). Pet. 3 n.1.
`7 Exhibit 1026 was filed in support of Petitioner’s Reply.
`
`7
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`

`IPR2017-01417
`Patent 7,375,027 B2
`
`
`A.
`
`II. ANALYSIS
`The Law on Anticipation and Obviousness
`To establish anticipation, each and every element in a claim, arranged
`as recited in the claim, must be found in a single prior art reference.
`Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008);
`Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
`2001). While the elements must be arranged in the same way as is recited in
`the claim, “the reference need not satisfy an ipsissimis verbis test.” In re
`Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831,
`832–33 (Fed. Cir. 1990)). Identity of terminology between the anticipatory
`prior art reference and the claim is not required. “A reference anticipates a
`claim if it discloses the claimed invention ‘such that a skilled artisan could
`take its teachings in combination with his own knowledge of the particular
`art and be in possession of the invention.’” In re Graves, 69 F.3d 1147,
`1152 (Fed. Cir. 1995). Prior art references must be “‘considered together
`with the knowledge of one of ordinary skill in the pertinent art.’” In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Also, “it is proper to take into account not only specific teachings of
`the reference but also the inferences which one skilled in the art would
`reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826
`(CCPA 1968). As the Court of Appeals for the Federal Circuit recently
`explained, the dispositive question for anticipation is whether one skilled in
`the art would reasonably understand or infer from a prior art reference that
`every claim element is disclosed in that reference. Eli Lilly v. Los Angeles
`Biomedical Research Inst., 849 F.3d 1073, 1074–1075 (Fed. Cir. 2017).
`
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`IPR2017-01417
`Patent 7,375,027 B2
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`
`The question of obviousness is resolved on the basis of underlying
`factual determinations including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`One seeking to establish obviousness must articulate sufficient reasoning to
`support the conclusion of obviousness. See In re Magnum Oil Tools Int’l,
`Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (“To satisfy its burden of proving
`obviousness, a petitioner . . . must . . . articulate specific reasoning, based on
`evidence of record, to support the legal conclusion of obviousness.” (citing
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007))).
`B.
`Level of Ordinary Skill in the Art
`Petitioner proposes that a person of ordinary skill in the art at the time
`of the alleged invention of the ’027 patent “would have had a master’s
`degree or higher in a field relating to the semiconductor manufacturing
`process like materials science, physics, electrical engineering, or other
`related subjects, and three to four years of experience in the design and
`fabrication of semiconductor devices. (Ex. 1002, ¶¶ 19-20.)” Pet. 4–5
`(footnote omitted).
`Patent Owner states, however,
`Patent Owner believes a Bachelor’s degree in a field
`relating to the semiconductor manufacturing process like
`materials science, physics, chemistry, or other related subjects,
`along with at least four to five years of experience in the field,
`would meet the level of ordinary skill in the art.
`PO Resp. 17 (see also the testimony of Mr. Ron Maltiel (Ex. 2002 ¶ 19)).
`We find Petitioner’s proposal vague in its reliance on the term “or
`higher” to describe the level of education. This qualifier introduces a range
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`IPR2017-01417
`Patent 7,375,027 B2
`
`that is too broad to provide a meaningful indication of what knowledge and
`skills would have been possessed by one with ordinary skill in the art. The
`same is true with Patent Owner’s use of the qualifier “at least” with regard to
`the amount of work experience.
`By definition, the level of ordinary skill is less than that of an expert.
`A “master degree or higher” is an advanced degree. Without Petitioner
`explaining why the level of “ordinary skill” is reflected by an advanced
`degree, and where Patent Owner disputes that an advanced degree reflects
`the level of ordinary skill, we are not persuaded by Petitioner’s articulation
`of the level of ordinary skill. Therefore, with regard to the education level
`of ordinary skill, we credit the testimony of Mr. Maltiel (Ex. 2002 ¶ 19) over
`the testimony of Dr. Rubloff (Ex. 1002 ¶ 19). However, we find Patent
`Owner’s reference to experience in any related field to be too general, and
`we credit Dr. Rubloff’s testimony over that of the testimony of Mr. Maltiel
`insofar as the level of experience is concerned. We also eliminate the
`qualifier “at least” to eliminate vagueness.
`For the foregoing reasons, we find the level of ordinary skill is
`reflected by a bachelor’s degree in a field relating to a semiconductor
`manufacturing process like materials science, physics, chemistry, or other
`related subjects, along with three to four years of experience in the design
`and fabrication of semiconductor devices.
`C.
`Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b)
`(2016); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142–46 (2016).
`
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`Patent 7,375,027 B2
`
`Consistent with that standard, claim terms are generally given their ordinary
`and customary meaning, as would have been 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). There are, however, two
`exceptions to that rule: “1) when a patentee sets out a definition and acts as
`his own lexicographer,” and “2) when the patentee disavows the full scope
`of a claim term either in the specification or during prosecution.” Thorner v.
`Sony Comp. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
`It is likewise not enough [for disavowal] that the only
`embodiments, or all of the embodiments, contain a particular
`limitation. We do not read limitations from the specification into
`claims; we do not redefine words. Only the patentee can do that.
`To constitute disclaimer, there must be a clear and unmistakable
`disclaimer.
`Id. at 1366–67; see also EPOS Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d
`1338, 1341 (Fed. Cir. 2014).
`
`If an inventor acts as his or her own lexicographer, the definition must
`be set forth in the specification with reasonable clarity, deliberateness, and
`precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243,
`1249 (Fed. Cir. 1998). Disavowal can be effectuated by language in the
`specification or the prosecution history. Poly-America, L.P. v. API Indus.,
`Inc., 839 F.3d 1131, 1136 (Fed. Cir. 2016). “In either case, the standard for
`disavowal is exacting, requiring clear and unequivocal evidence that the
`claimed invention includes or does not include a particular feature.” Id.
`Neither party contends that the Specification of the ’027 patent specially
`defined any term or that the inventors of the ’027 patent acted as their own
`lexicographer. We have no reason to determine otherwise.
`
`11
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`IPR2017-01417
`Patent 7,375,027 B2
`
`
`“In determining the meaning of the disputed claim limitation, we look
`principally to the intrinsic evidence of record, examining the claim language
`itself, the written description, and the prosecution history, if in evidence.”
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
`(Fed. Cir. 2006). However, claim construction does not mean importing
`limitations into the claims in the name of construction, if the limitations are
`not otherwise there. As the Federal Circuit explained,
`
`It is a “bedrock principle” of patent law that “the claims of
`a patent define the invention to which the patentee is entitled the
`right to exclude.” Innova, 381 F.3d at 1115; see also Vitrionics,
`90 F.3d at 1582 (“we look to the words of the claims themselves
`. . . to define the scope of the patented invention”); Markman, 52
`F.3d at 980 (“The written description part of the specification
`itself does not delimit the right to exclude. That is the function
`and purpose of claims.”). . . . Because the patentee is required to
`“define precisely what his invention is,” the [Supreme Court]
`explained, it is “unjust to the public, as well as an evasion of the
`law, to construe it in a manner different from the plain import of
`its terms.” White v. Dunbar, 119 U.S. 47, 52, 7 S.Ct. 72, 30 L.Ed.
`303 (1886); see also Cont’l Paper Bag Co. v. E. Paper Bag Co.,
`210 U.S. 405, 419, 28 S.Ct. 748, 52 L.Ed. 1122 (1908) (“the
`claims measure the invention”); McCarty v. Lehigh Valley R.R.
`Co., 160 U.S. 110, 116, 16 S.Ct. 240, 40 L.Ed. 358 (1895) (“if
`we once begin to include elements not mentioned in the claim, in
`order to limit such claim . . ., we should never know where to
`stop”); Aro Mfg. Co. v. Convertible Top Replacement Co., 365
`U.S. 336, 339, 81 S.Ct. 599, 5 L.Ed.2d 592 (1961) (“the claims
`made in the patent are the sole measure of the grant”).
`Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005).
`Only terms which are in controversy need to be construed, and only to
`the extent necessary to resolve the controversy. See Wellman, Inc. v.
`Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`12
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`IPR2017-01417
`Patent 7,375,027 B2
`
`
`1.
`“forming a first dielectric layer on the surface”
`Independent claim 1 recites a step of “forming a first dielectric layer
`
`on the surface.” Ex. 1001, 4:19. The term “the surface” draws antecedent
`basis from “a surface of a substrate” as recited in the preamble of claim 1.
`Id. at 4:17–18. According to Petitioner, nothing in the language of the
`claims or the specification of the ’027 patent requires formation of layers
`“on the surface” to be interpreted to mean formation of a layer “directly on
`the surface of the substrate, and thus depositing a layer on the surface of the
`substrate does not necessarily require depositing a layer directly on the
`surface of the substrate. Pet. 24–25. Patent Owner asserts, however, that
`“forming a first dielectric layer on the surface” should be construed to
`require that the first dielectric layer be formed “directly on the substrate
`surface.” PO Resp. 10 (emphasis added).
`We need not determine whether forming a layer “directly on” the
`surface of the substrate is required by the claim, because even assuming that
`a layer must be formed “directly on” the substrate surface, Petitioner has
`shown that the prior art in each alleged ground of unpatentability discloses
`forming a first dielectric layer “directly on” the surface of a substrate.
`Nevertheless, because Patent Owner contends, to the contrary, that the prior
`art does not disclose any dielectric layer formed “directly on” the surface of
`a substrate, we resolve the issue of claim construction to provide an alternate
`answer to Patent Owner’s arguments. For reasons discussed below, we
`determine that the “directly on” restriction is not required under the rule of
`broadest reasonable interpretation. Patent Owner’s proposed construction is
`rejected.
`
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`IPR2017-01417
`Patent 7,375,027 B2
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`
`The plain and ordinary meaning of “forming a dielectric layer on the
`surface” does not specify whether the layer is formed directly on the surface
`of the substrate, or indirectly on the surface of the substrate, i.e., with
`presence of some material between them. Thus, the plain and ordinary
`meaning of the phrase is sufficiently broad to cover both forming the layer
`directly on the surface and indirectly on the surface.8 Patent Owner does not
`represent that the inventors of the ’027 patent acted as their own
`lexicographer and redefined, in the Specification of the ’027 patent, the plain
`and ordinary meaning of any term, and we do not find any such special
`definition in the Specification. Also, Patent Owner does not identify any
`express disavowal in the Specification of the ’027 patent with regard to
`whether the first dielectric layer must be formed directly on the surface of
`the substrate, and we find none.
`Although the only disclosed embodiment in the ’027 patent forms the
`first dielectric layer directly on the surface of the substrate, that does not
`constitute an express disavowal of forming the dielectric layer indirectly on
`the surface of the substrate. We must be careful not to read limitations from
`the specification into the claims. “It is a ‘bedrock principle’ of patent law
`that ‘the claims of a patent define the invention to which the patentee is
`entitled the right to exclude.’” Phillips, 415 F.3d at 1312 (citations omitted).
`Patent Owner argues that the prosecution history of the ’027 patent
`supports its proposed claim construction to require forming the first
`
`8 The word “on” is generic and itself sets forth no requirement of a specific
`manner in which one object is deemed to be “on” another. One of the
`dictionary meanings of “on” is to indicate “a source of attachment or
`support.” Merriam-Webster Online Dictionary (November 14, 2018),
`https://www.merriam-webster.com/dictionary/on (Ex. 3001).
`
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`IPR2017-01417
`Patent 7,375,027 B2
`
`dielectric layer “directly on” the surface of the substrate. For reasons
`discussed below, we disagree.
`Patent Owner argues that during prosecution of the ’027 patent, the
`claims were amended “to make clear that the first dielectric layer is formed
`directly on the surface of the semiconductor substrate.” PO Resp. 10.
`Patent Owner argues,
`As filed, original claim 1 did not use the word “substrate”,
`instead using the word “material.” Thus, the preamble of claim
`one read: “a method of providing a contact via to a surface of a
`material, the method comprising.” Ex. 1004 (’027 File History)
`at p. 112. This claim was rejected as anticipated by U.S. Patent
`No. 6, 441,418 (“Shields” or the “’418 patent”). Id. at p. 119.
`To support the rejection, the examiner stated that “Shields et al.
`discloses forming a via including forming a first dielectric layer
`(16) on a surface . . . .
`Shields discloses a method of forming a contact in an
`integrated circuit. Ex. 2005 (’418 patent) at Abstract. Shields,
`however, discloses that the first dielectric layer (etch stop layer
`16) is “located intermediate first oxide layer 14 and second oxide
`layer 18.” Id. at 3:64–65. The first dielectric layer of Shields is
`thus not deposited on the surface of the substrate, but rather the
`surface of the oxide layer 14, as shown in Fig. 1 from Shields:
`
`Ex. 2005 (’418 patent) Figure 1 (annotated).
`
`
`
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`IPR2017-01417
`Patent 7,375,027 B2
`
`
`In response to the examiner’s rejection of then pending
`
`claims 1–10, the claims of the ’027 patent were amended as
`follows: [footnote omitted]
`
`1. (Currently Amended) A method of providing a
`contact via to a surface of a material substrate, the method
`comprising:
`
`forming a first dielectric layer on the surface;
`
`forming a second dielectric layer on the first dielectric
`layer;
`
`providing a first aperture which extends from a surface of
`the second dielectric layer toward the surface of the material
`substrate for a distance which is less than a combined thickness
`of the first and second dielectric layers;
`
`providing a third dielectric layer covering a surface of the
`first aperture and an exposed surface of the first dielectric layer;
`and
`removing a portion of the third dielectric layer and a
`
`portion of the first dielectric layer to expose a portion of the
`surface of the substrate material.
`Ex. 1004 at p. 112.
`
`After the amendment, claims 1–10 were allowed. As
`shown above, the only change to the claim was to replace the
`term “material” with “substrate.” In this case, given Shield’s
`structure, the purpose of the amendment was to distinguish
`structures, such as Shields, where the etch stop was deposited on
`a previously deposited intermediate layer.
`PO Resp. 11–13.
`Patent Owner’s explanation of the purpose and significance of the
`amendment, had it been presented by the patent applicant during the
`examination process, may well have constituted an express disavowal
`regarding forming the first dielectric layer directly or indirectly on the
`surface of the substrate. However, no such remarks appeared in the
`prosecution history. The patent applicant made no representation focused on
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`IPR2017-01417
`Patent 7,375,027 B2
`
`whether “directly on” is required. The characterization by Patent Owner, as
`noted above, is just one of many potential explanations that are consistent
`with the prosecution history.
`The patent applicant merely stated “Shields does not disclose:
`‘forming a first dielectric layer on the surface [of the substrate] . . . and
`removing a portion of the third dielectric layer and a portion of the first
`dielectric layer to expose a portion of the surface of the substrate.’”
`Ex. 1004, 114. The generic explanation also is consistent with a position
`that Shields does not disclose forming a dielectric layer on the surface of the
`substrate, either directly or indirectly, or a position that Shields does not
`disclose removing a portion of the third dielectric layer and a portion of the
`first dielectric layer to expose a portion of the substrate.
`Based on the generality of the patent applicant’s remark, we agree
`with Petitioner that a general allegation that a combination of limitations are
`not met by the prior art is insufficient to constitute a disclaimer or disavowal
`of claim scope with respect to whether the first dielectric layer has to be
`formed directly on the surface of the substrate. As we discussed above, “the
`standard for disavowal is exacting, requiring clear and unequivocal evidence
`that the claimed invention includes or does not include a particular feature.”
`Poly-America, 839 F.3d at 1136. To constitute disavowal, the disavowal
`must be clear and unmistakable. See Thorner, 669 F.3d at 1367. The
`generic remark of the patent applicant does not satisfy this standard. Patent
`Owner’s present characterization of the intent and significance of the patent
`applicant’s remark reflects hindsight characterization to yield a result that
`fits a desired litigation position, and is not adequately supported by the
`record.
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`Based on the foregoing, we find no disavowal of anything by the
`applicant for patent either in the Specification of the ’027 patent or in the
`prosecution history with regard to whether the first dielectric layer must be
`formed “directly on” the surface of the substrate. To satisfy the recitation
`“forming a first dielectric layer on the surface,” the dielectric layer may be
`formed either directly or indirectly on the surface of the substrate. Direct
`contact between the first dielectric layer and the surface of the substrate is
`not required.
`
`2.
`“the first dielectric layer”
`Independent claim 1 recites a step of “forming a first dielectric layer
`
`on the surface.” Ex. 1001, 4:19.
`
`Petitioner reads “the first dielectric layer” onto a combination or
`composite of two layers in Ono, i.e., silicon oxide gate electrode coating
`insulation film 21 and semiconductor coating layer 22. Pet. 11; Ex. 1002
`¶ 60. Implicit in that position is that the “first dielectric layer” is not limited
`to a single layer to the exclusion of the presence of any internal sub-layer.
`Petitioner correctly states that because the plain meaning of “dielectric
`layer” is not limited to a single layer of a single material, there must be some
`special definition or express disavowal to limit the “first dielectric layer” to
`a single layer of a single material. We agree with Petitioner that the plain
`and ordinary meaning of “first dielectric layer” does not exclude internal
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`sub-layers,9 and that there is no special definition or disavowal to limit the
`claims by excluding internal sub-layers.10
`
`Patent Owner asserts
`[Petitioner’s reading of “first dielectric layer”] should be
`rejected, because it is inconsistent with the ’027 patent
`specification. Indeed, every mention of a “first dielectric layer”
`in the ’027 patent refers to a single layer made of one material
`such as silicon nitride, or silicon oxynitride. Ex. 1001 at 1:60–
`65, 2:1–3, 2:55–57, 3:54–60, Table 1. There is no disclosure,
`teaching, or suggestion in the ’027 patent that the first dielectric
`layer should be a multi-layer structure.
`PO Resp. 14. The argument is misplaced. A properly construed claim may
`cover other embodiments even when only one embodiment is disclosed so
`long as the Specification does not expressly exclude such other
`embodiments. There is no such disclaimer or disavowal. For instance, the
`Specification does not state that the only embodiments covered by the claims
`
`
`9 U.S. Patent 6,849,897 B2 (Ex. 1027), cited by Dr. Rubloff (Ex. 1026 ¶ 3),
`refers to a dielectric layer comprising multiple internal layers. Ex. 1027,
`8:21–25. Also, as is noted by Dr. Rubloff (Ex. 1026 ¶ 3), Ono itself
`indicates that each of its semiconductor coating layer 22, interlayer
`insulation film 23, and mask layer 33 can include multiple sublayers of
`different materials. Ex. 1009 ¶ 47. We credit Dr. Rubloff’s testimony that
`the plain meaning of “layer” is not limited to a single layer of a single
`material, because the testimony is supported by the cited evidence. Ex. 1026
`¶ 3.
`10 Neither party contends that the inventors of the ’027 patent acted as
`lexicographers and provided in the Specification a special definition for
`“dielectric material” or “first dielectric material” that would exclude internal
`sub-layers. We also find no such special definition in the Specification.
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`are those expressly described or suggested in the Specification, or that a
`dielectric layer necessarily excludes internal sub-layers.
`Although the only disclosed embodiment in the ’027 patent describes
`a first dielectric layer that is a layer comprised of just one material without
`internal sub-layers, that does not constitute an express disavowal of a
`dielectric layer including internal sub-layers of dielectric material. Patent
`Owner argues “[t]he fact that every reference, including Table 1, in the
`’027 patent refers to a ‘first dielectric layer’ as being a single layer requires a
`departure from ‘a first dielectric layer’ being construed as being ‘one or
`more’ layers.”11 PO Resp. 15–16. We disagree.
`We must be careful not to read limitations from the specification into
`the claims. “It is a ‘bedrock principle’ of patent law that ‘the claims of a
`patent define the invention to which the patentee is entitled the right to
`exclude.’” Phillips, 415 F.3d at 1312 (citations omitted). “[I]f we once
`begin to include elements not mentioned in the claim, in order to limit such
`claim . . . , we should never know where to stop.” McCarty, 160 U.S. at
`116. It is not enough that the only embodiments, or all of the embodiments,
`contain a particular limitation to limit a claim term beyond its ordinary
`meaning. Aria Diagnostics, Inc. v. Sequenom, Inc., 726 F.3d 1296, 1301
`(Fed. Cir. 2013). Even if a specification has only one embodiment, its
`claims will not be confined to that example unless t