Trials@uspto.gov
`571-272-7822
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` Paper No. 7
`Entered: January 11, 2018
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SPTS TECHNOLOGIES LTD.,
`Petitioner,
`
`v.
`
`PLASMA-THERM LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01674
`Patent 8,802,545 B2
`____________
`
`
`
`Before WILLIAM V. SAINDON, ELIZABETH M. ROESEL, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
` Paper No. 7
`Entered: January 11, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SPTS TECHNOLOGIES LTD.,
`Petitioner,
`
`v.
`
`PLASMA-THERM LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01674
`Patent 8,802,545 B2
`____________
`
`
`
`Before WILLIAM V. SAINDON, ELIZABETH M. ROESEL, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2017-01674
`Patent 8,802,545 B2
`
`
`I. INTRODUCTION
`
`A. Background
`SPTS Technologies Limited (“Petitioner”) filed a Petition requesting
`an inter partes review of claims 1, 2, 4, and 5 (“the challenged claims”) of
`U.S. Patent No. 8,802,545 B2 (Ex. 1001, “the ’545 patent”). Paper 1
`(“Pet.”). Plasma-Therm LLC (“Patent Owner”) filed a Preliminary
`Response. Paper 6 (“Prelim. Resp.”).
`We have authority under 35 U.S.C. § 314, which provides that an
`inter partes review may not be instituted unless the information presented in
`the Petition and the Preliminary Response shows that “there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” 35 U.S.C. § 314; see also 37 C.F.R
`§ 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Taking
`into account the arguments presented in the Preliminary Response, we
`conclude that the information presented in the Petition establishes a
`reasonable likelihood that Petitioner would prevail with respect to
`challenged claims 1, 2, 4, and 5.
`Our factual findings and conclusions at this stage of the proceeding
`are based on the evidentiary record developed thus far. This is not a final
`decision as to the patentability of claims for which an inter partes review is
`instituted. Our final decision will be based on the record as fully developed
`during trial.
`
`B. Related Proceedings
`The parties identify no related litigation matters pursuant to 37 C.F.R.
`§ 42.8(b)(2). Pet. 3–4; Paper 3, 1.
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`
`The parties identify the following PTAB proceedings related to
`“sibling patents” of the ’545 patent: IPR2017-01314 and IPR2107-01457.
`Pet. 3–4; Paper 3, 1.
`
`C. The ’545 Patent
`The ’545 patent is titled “Method and Apparatus for Plasma Dicing a
`Semi-Conductor Wafer” and issued August 12, 2014 from U.S. Application
`No. 13/412,119, filed March 5, 2012. Ex. 1001, (21), (22), (54).
`The ’545 patent discloses a method for plasma dicing a semiconductor
`wafer. Id. at (54). Dicing is a process by which individual semiconductor
`devices (die or chips) are separated from each other after they have been
`fabricated on a substrate, such as a silicon wafer. Id. at 1:23–26, 2:12–14.
`Dicing can be carried out by mechanical means, such as breaking along
`scribe lines or sawing, or by plasma etching. Id. at 2:14–20, 2:45–47.
`According to the ’545 patent, plasma dicing has a number of benefits over
`mechanical dicing, but current plasma etching equipment is not suitable for
`processing substrates that are “fixtured for dicing.” Id. at 2:55–63, 3:1–16.
`The ’545 patent aims to provide a plasma etching method that is “compatible
`with the established wafer dicing technique of handling a substrate mounted
`on tape and supported in a frame.” Id. at 3:44–46.
`Figure 3 of the ’545 patent is reproduced below:
`
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`Figure 3 of the ’545 patent is a cross-sectional view of work piece 1A,
`including substrate 1 adhered to tape 5, which is mounted in rigid frame 6.
`Ex. 1001, 9:27–29. Substrate 1 has device structures 2 separated by street
`areas 3. Id. at 8:62–9:7; see also id. at Fig. 1. Device structures 2 are
`covered with protective material 4, such as photoresist, while street areas 3
`remain unprotected. Id. During processing, unprotected street areas 3 of
`substrate 1 are etched away using a reactive plasma etch process to separate
`devices 2 into individual die. Id. at 9:63–66.
`More specifically, the ’545 patent discloses an exemplary method for
`separating devices 2 into individual die. Id. at 7:6–38. The method includes
`first and second plasma etch processes, each of which can be a time division
`multiplexed (“TDM”) etch process. Id. at 7:16–32. According to the ’545
`patent, a “Bosch or TDM” process “alternates between a high rate silicon
`etch step with a passivation step to control the etch sidewall, [and] is
`commonly used to etch deep features into silicon.” Id. at 1:56–59. In the
`first plasma etch process, a “work piece is exposed to a first plasma etch
`process using a first etchant gas.” Id. at 7:16–17; see also id. at 4:11–20.
`This first plasma etch process “terminate[s] after the die are singulated . . .
`using a standard endpoint technique.” Id. at 7:21–25. The second plasma
`etch process uses a second etchant gas and is “a lower etch rate process
`designed to reduce undercut.” Id. at 7:25–28; see also id. at 13:41–67
`(explaining that undercutting occurs at the substrate-insulator interface and
`affects performance of the singulated die).
`
`D. Illustrative Claim
`The ’545 patent includes five claims, four of which are challenged.
`Claims 1, 4, and 5 are independent claims. Claim 1 is reproduced below,
`
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`reformatted and with bracketed letters [A] – [L] added to correspond to
`Petitioner’s identification of the claim elements:
`1.
`[A] A method for plasma dicing a substrate, the method
`comprising:
`[B] providing the substrate having a top surface and
`a bottom surface, the top surface having a plurality of
`device structures and street areas;
`[C] applying photoresist to the plurality of device
`structures and the street areas on the top surface of the
`substrate;
`[D] patterning the applied photoresist to allow the
`street areas to be unprotected;
`[E] placing the bottom surface of the substrate on a
`carrier support to form a work piece;
`[F] loading the work piece into a plasma processing
`chamber;
`[G] exposing the unprotected street areas on the top
`surface of the substrate of the work piece in the plasma
`processing chamber to a first plasma time division
`multiplex process using a first etchant gas;
`[H] terminating the first plasma time division
`multiplex process at a time at which an interface between
`the bottom surface of the substrate and the carrier support
`is reached,
`[I] said time being determined using an endpoint
`technique; and
`in the plasma
`[J] exposing the work piece
`processing chamber to a second plasma time division
`multiplex process using a second etchant gas,
`[K] said exposure of the work piece to the second
`plasma time division multiplexed process occurring after
`the termination of the first plasma time division multiplex
`process and without breaking vacuum
`from
`the
`termination of the first plasma time division multiplex
`process,
`[L] said second etchant gas having a different gas
`composition from said first etchant gas.
`
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`Ex. 1001, 15:14–44; see also Pet. 28–31. Independent claims 4 and 5
`contain similar limitations. See Ex. 1001, 15:51–16:54; Pet. 17–18.
`
`E. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1, 2, 4, and 5 of the ’545 patent are
`unpatentable under 35 U.S.C. § 103(a)1 as obvious over the following
`references:
`
`Reference
`
`U.S. Patent No.
`
`Issue Date
`
`Exhibit
`
`Fischer
`
`U.S. 6,406,979 B2
`
`June 18, 2002
`
`Donohue
`
`U.S. 6,071,822
`
`June 6, 2000
`
`Ex. 1005
`
`Ex. 1006
`
`
`Pet. 5. Petitioner supports its challenge with a Declaration of Dr. John E.
`Spencer (Ex. 1009, “the Spencer Declaration”).
`Patent Owner supports its Preliminary Response with a Declaration of
`Dr. Stanley Shanfield, Ph.D. (Ex. 2001, “the Shanfield Declaration”).
`
`I. DISCUSSION
`
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable interpretation in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Tech.,
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
`which was enacted on September 16, 2011, made amendments to 35 U.S.C.
`§§ 102, 103. AIA § 3(b), (c). Those amendments became effective eighteen
`months later on March 16, 2013. Id. at § 3(n). Because the application from
`which the ’545 patent issued was filed before March 16, 2013, any citations
`herein to 35 U.S.C. § 103 are to its pre-AIA version.
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`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under that standard, we
`generally give claim terms their ordinary and customary meaning, as
`understood by a person of ordinary skill in the art in the context of the entire
`patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
`Cir. 2007).
`Petitioner proposes constructions for the following claim terms: “time
`division multiplex process”; “without breaking vacuum”; and “the second
`etchant gas having a different gas composition from said first etchant gas.”
`Pet. 24–27. Patent Owner responds with a construction for only the phrase
`“said second etchant gas having a different gas composition from said first
`etchant gas.” Prelim. Resp. 13–14.
`We determine that no claim term requires express construction for
`purposes of this Decision. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999); see also Pet. 23 (“Petitioner’s ground of
`challenge is not believed to be reliant upon any particular construction.”).
`
`B. Principles of Law
`
`A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). 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 skill in the art; and (4) objective evidence of nonobviousness.
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
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`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016). The burden of persuasion never shifts to Patent Owner.
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`(Fed. Cir. 2015).
`
`C. Level of Ordinary Skill in the Art
`
`Petitioner contends that a person of ordinary skill in the art
`(“POSITA”) would have had a Bachelor’s or Master’s degree in electrical
`engineering, chemical engineering, physics, chemistry, materials science, or
`a similar field, and three to four years of work experience in the
`development of plasma etching or chemical vapor deposition or related
`fields, or alternatively, a PhD in electrical engineering, chemical
`engineering, physics, chemistry, materials science, or a similar field. Pet. 22
`(citing Ex. 1009 ¶ 49).
`Patent Owner contends that a POSITA would have had at least a
`Master’s degree in electrical engineering, chemical engineering, materials
`science, physics or chemistry, or a similar field, and at least four years of
`experience in process development or process engineering related to plasma
`etching. Prelim. Resp. 12 (citing Ex. 2001 ¶ 21). Alternatively, this person
`would have a Ph.D. in physics, chemistry, electrical engineering, materials
`science or a similar field, along with two years of experience with process
`development or process engineering related to plasma etching. Id.
`The parties’ definitions of a POSITA are similar, except for the two
`respects discussed below:
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`First, Petitioner contends that a POSITA would have had work
`experience “in the development of plasma etching or chemical vapor
`deposition or related fields” (Pet. 22), whereas Patent Owner contends that a
`POSITA’s work experience would have been in “process development or
`process engineering related to plasma etching” (Prelim. Resp. 12). Chemical
`vapor deposition is not mentioned in the ’545 patent, and Petitioner does not
`explain how chemical vapor deposition relates to the subject matter of the
`’545 patent. Plasma etching, on the other hand, is precisely the field to
`which the ’545 patent relates. See Ex. 1001, 1:16–19. Accordingly, we find
`that Patent Owner’s description of a POSITA’s work experience more
`closely aligns with the subject matter of the ’545 patent than does
`Petitioner’s.
`Second, Patent Owner contends that a POSITA would have had a
`higher level of education and a longer period of work experience than does
`Petitioner. Compare Pet. 22, with Prelim. Resp. 12. On the question of
`obviousness, a higher level of skill in the art favors Petitioner. Accordingly,
`Petitioner is not prejudiced if we accept the higher level of education and
`length of work experience as proposed by Patent Owner.
`Accordingly, for purposes determining whether to institute review, we
`accept Patent Owner’s definition of a POSITA.
`
`D. Obviousness over the Combined Teachings of
`Fischer and Donohue
`Petitioner contends that claims 1, 2, 4, and 5 of the ’545 patent are
`unpatentable as obvious in view of Fischer and Donohue. Pet. 27–64.
`Patent Owner opposes. Prelim. Resp. 15–30. For reasons that follow, we
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`determine Petitioner has demonstrated a reasonable likelihood of prevailing
`as to the challenged claims.
`
`1. Overview of Fischer (Ex. 1005)
`
`Fischer is a U.S. Patent titled “Method for Sectioning a Substrate
`Wafer into a Plurality of Substrate Chips,” which discloses a plasma dicing
`method. Ex. 1005, (54), (57). Fischer explains that prior art mechanical
`techniques for sectioning a wafer were time consuming and inflexible. Id. at
`1:51–62. Fischer’s disclosed dicing method purports to save time and allow
`flexibility with respect to the shape of the sectioned die. Id. at 2:21–29.
`Fischer discloses plasma etching as a method for sectioning substrate
`wafer 6 into a plurality of substrate chips 20, each of which carries
`electronic components 19. Id. at 5:18–23, Figs. 2, 3. According to Fischer,
`substrate wafer 6 is prepared for sectioning by coating it with material for
`components 19, with lateral separating lines 24 between them, and by
`mounting the wafer to carrier film 28, which is fixed within frame 30. Id. at
`5:41–48, 5:57–58, Fig. 4. Components 19 are then covered by etching
`mask 32, and subsequently patterned to form exposed regions 38. Id. at
`5:61–6:11, Figs. 4, 5.
`The prepared wafer is placed within etching chamber 2 for sectioning.
`Id. at 6:12–14, Fig. 1. Fischer discloses that working gas A etches exposed
`regions 38 of the substrate. Id. at 6:14–22. Specifically, Fischer discloses
`that “an etching step and a polymerization step are carried out in an
`alternating manner,” such that in the polymerization step “the surfaces
`cleared in the previous etching step, i.e., particularly the surfaces of
`regions 38 as well as their lateral surfaces, are uniformly covered with a
`polymer.” Id. at 6:32–33, 6:44–47. This “polymer layer forms an effective,
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`provisional etch stop for the subsequent etching step. In the following
`etching step, the polymer is removed again, the polymer from the surface of
`regions 38 being deposited in the immediate vicinity, i.e., on the lateral
`surfaces or the etching edge, thereby protecting them.” Id. at 6:47–52.
`Finally, Fischer discloses that “the etching operation is first stopped on the
`boundary surface to carrier film 28,” so that substrate wafer 6 is sectioned
`into individual substrate chips 20. Id. at 6:55–61.
`
`2. Overview of Donohue (Ex. 1006)
`
`Donohue is a U.S. Patent titled “Etching Process for Producing
`Substantially Undercut Free Silicon on Insulator Structures,” which
`discloses a plasma etching method. Ex. 1006, [54], [57]. Donohue explains
`that conventional methods for etching layers of a semiconductor chip often
`resulted in undesirable undercutting at the silicon-insulator interface. Id. at
`1:15–21, 1:61–65, Fig. 4. Therefore, Donohue discloses an etching method
`that reduces undercut. Id. at 3:19–40.
`More specifically, Donohue discloses a two-phase etching method in
`which “the bulk of the etching is performed by any etching technique known
`to one skilled in the art, wherein the present reduced ion plasma etching
`technique is then utilized to provide a clearing etch.” Id. at 4:10–13. The
`initial etching phase may be a Bosch process comprising cyclic etching and
`polymerizing deposition, which is terminated using “a suitable endpoint
`detector.” Id. at 4:45–47, 9:31–32, 9:65–67. The second, clearing etching
`phase also may also involve “a cyclic etch and polymerizing deposition
`process.” Id. at 9:43–53, 12:24–28. According to Donohue, the disclosed
`etching method substantially eliminates undercutting, although it results in a
`slower etch rate. Id. at 4:14–17.
`
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`3. Analysis of Independent Claim 1
`
`We have considered the Petition and the Preliminary Response, and
`we determine that Petitioner’s arguments and evidence are sufficient to
`establish a reasonable likelihood of prevailing with respect to challenged
`claim 1.
`Petitioner contends that Fischer discloses elements A through H of
`claim 1, but does not disclose elements I through L. Pet. 28–30 (chart), 38–
`43. According to Petitioner, elements I through L are taught by Donohue.
`Id. at 30–31 (chart), 43–51. Patent Owner does not dispute Petitioner’s
`contentions regarding the respective teachings of Fischer and Donohue.
`Prelim. Resp. 15–18; but see id. at 19–30 (arguing that the references would
`not have been combined).
`On this record, we are persuaded that Petitioner’s contentions
`regarding Fischer are adequately supported. Fischer discloses a method for
`plasma dicing a substrate. Ex. 1005, (57) (“A method for sectioning a
`substrate wafer.”). Specifically, Fischer provides substrate 6 with top and
`bottom surfaces (id. at Fig. 2), where the top surface includes device
`structures 19 and street areas 24. Id. at 5:18–23, 5:33–35, 5:44–48, Fig. 4.
`Fischer applies and patterns photoresist 32 such that structures 19 are
`protected and street areas 24 are unprotected. Id. at 5:61–6:2, 6:21–22,
`Fig. 4. Fischer places substrate 6 on carrier support 28 to form a work piece,
`which is loaded into plasma processing chamber 2. Id. at 5:57–58, 6:12–14,
`Figs. 1, 4. Fischer exposes the work piece to a first plasma time division
`multiplex process using first etchant gas A. Id. at 6:14–21, 6:32–35 (“[An]
`etching step and a polymerization step are carried out in an alternating
`manner.”). Finally, Fischer terminates the process when an interface
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`between the bottom surface and the carrier support is reached. Id. at 6:55–
`59 (“[T]he etching operation is first stopped on the boundary surface to the
`carrier film 28.”).
`Also, on this record, we are persuaded that Petitioner’s contentions
`regarding Donohue are adequately supported. Donohue discloses a plasma
`etching process in which a first plasma time division multiplex process is
`terminated, using an endpoint technique, when an interface is reached.
`Ex. 1006, 9:65–67 (terminating a Bosch process based on “a suitable
`endpoint detector”). After termination, the work piece is exposed to a
`second plasma time division multiplex process using a second etchant gas.
`Id. at 4:10–17 (two etches), 9:31–43 (initial TDM etch), 9:43–53 (second
`TDM etch). Petitioner contends that Donohue implicitly teaches
`transitioning from a first TDM process to a second TDM process “without
`breaking vacuum.” Pet. 49. On this record, Petitioner’s contention is
`adequately supported by Dr. Spencer’s testimony and Donahue’s express
`disclosures. Ex. 1009 ¶ 81 (opining that breaking vacuum would be
`unwarranted, especially when using an endpoint detector, as suggested by
`Donohue); Ex. 1006, 11:44–48 (first process at 5–100 mT), 12:30–32
`(second process at 1–200 mT). Finally, Donohue teaches that the second
`etchant gas may have a different gas composition than a first etchant gas. Id.
`at 11:45–52 (first etch with various gases), 12:24–28 (second TDM etch
`with various differing gases); see also Ex. 1009 ¶ 80.
`Additionally, Petitioner contends that a POSITA would have found it
`obvious to combine Fischer’s disclosed plasma dicing method with the cited
`teachings of Donohue. Pet. 37–38, 51. Petitioner provides two rationales
`for this contention. First, Petitioner asserts that a desire to avoid
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`undercutting would have led a POSITA to combine Fischer’s plasma dicing
`method with Donahue’s teaching of sequential first and second TDM etch
`processes. Id. at 52–55. Second, Petitioner asserts that the proposed
`combination is merely a combination of known techniques, with no change
`in their functions and no unexpected results. Id. at 56–58; see also id. at 58–
`61. Patent Owner disagrees and argues that a “POSITA would not have
`combined Fischer and Donohue” because the references relate to different
`aspects of semiconductor processing, the combination would have rendered
`Fischer unsuitable for dicing, and undercutting is not a significant problem
`in Fischer’s process. Id. at 19–28.
`At this stage in the proceeding, we are persuaded that Petitioner’s
`evidence is sufficient to support its contention that a desire to avoid
`undercutting would have led a POSITA to modify Fischer in view of
`Donahue. Petitioner’s evidence includes, among other things, the express
`teachings of Donahue and the testimony of Petitioner’s declarant,
`Dr. Spencer. For example, Donohue teaches a plasma etching method that
`avoids undesired “undercutting when etching down to [a] silicon-insulator
`interface.” Ex. 1006, 1:20–22, 1:61–65; see also id. at 5:38–48.
`Dr. Spencer testifies that a POSITA would have expected Fischer’s carrier
`film 28 to include an insulator material, which Donohue explains contributes
`to the undercutting problem. Ex. 1009 ¶¶ 88–90; Ex. 1006, 5:44–48
`(undercutting occurs at “an insulator, e.g., SiO2, [because] there is no place
`for the ion charge to leak or bleed off”); Ex. 1020, 3:16–17 (disclosing a
`plastic mounting tape). Furthermore, Dr. Spencer testifies that the
`undercutting problem was not limited to plasma etching of chip components,
`as taught by Donohue, but also was known to occur in plasma dicing.
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`Ex. 1009 ¶ 87; see also Ex. 1021, 5:11–26 (using isotropic etching to dice a
`substrate results in undercutting).
`We have considered Patent Owner’s argument that Fischer and
`Donohue “relate to completely different aspects of the semiconductor
`process,” wherein undercutting “is much more problematic in Donohue than
`it is in Fischer,” such that a POSITA would not look to Donohue to modify
`Fischer’s dicing process. Prelim. Resp. 20–23, 26–28; Ex. 2001 ¶¶ 37–39
`(comparing Fischer and Donohue), 40–41 (explaining that any undercutting
`in dicing would be “far removed” from the electronic components).
`However, on this record, Petitioner’s evidence is sufficient to establish a
`reasonable likelihood that it will prevail on its contention. First, both
`Fischer and Donohue are directed to plasma etching of semiconductor
`components, i.e., they are analogous art. Compare Ex. 1005, (57) (“A
`method for sectioning a substrate wafer into a plurality of substrate chips . . .
`[by] plasma etching.”), with Ex. 1006, [57] (“A method of anisotropically
`plasma etching a silicon on insulator substrate.”). Second, as discussed
`above, Petitioner presents evidence supporting the contention that a POSITA
`would have expected undercutting to occur in Fischer’s plasma dicing
`method. Ex. 1009 ¶ 87. Even if Patent Owner is correct that undercutting
`would be less problematic in Fischer, this does not eliminate the Petition’s
`stated rationale for considering Donohue in solving this problem. See, e.g.,
`Ex. 1009 ¶¶ 90–91 (“[T]he POSITA would expect undercut to occur in the
`silicon at the interface carrier film 28 of Fischer for the same reasons that
`Donohue describes undercut occurring in the silicon at its oxide interface . . .
`[and] would look to the solution proposed by Donohue.”); see also Ex. 1006,
`1:20–22, 1:61–65, 5:38–48.
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`We have considered Patent Owner’s additional argument that the
`proposed modification would render Fischer’s process too slow to be
`economically practicable. Prelim. Resp. 21–26 (citing Ex. 2001 ¶¶ 37–39,
`60–61). For example, Dr. Shanfield testifies that plasma etching at the SOI
`interface and plasma etching to dice a wafer involve markedly different
`etching depths, which in turn require markedly different etching durations.
`Ex. 2001 ¶¶ 37–38 (stating that “the etching depths through silicon for the
`processes of Donohue and Fischer differ by a factor of 1000,” requiring a
`corresponding difference in etching time), 60–61. Dr. Shanfield further
`testifies that these differences impact both device performance (e.g.,
`temperature control) and the economic feasibility of the process. Id. ¶¶ 39,
`61. In contrast, Dr. Spencer testifies that the combination of Fischer and
`Donohue would have “dice[d] the substrate as expected, and . . . avoid[ed]
`undercut as expected.” Ex. 1009 ¶¶ 96, 98. At this stage of the proceeding,
`disputed issues of material fact created by Dr. Shanfield’s testimony must be
`viewed in a light most favorable to Petitioner. 37 C.F.R. § 42.108(c).
`Accordingly, we decline to resolve the factual disputes created by
`Dr. Shanfield’s testimony, particularly in the absence of further development
`of the record regarding: (1) whether it was within the skill of a POSITA to
`adjust etching rates and durations as needed to accommodate various
`materials and thicknesses to be etched; and (2) whether a POSITA would
`have made such adjustments if Fischer’s plasma dicing method were
`combined with Donahue’s teaching of sequential first and second TDM
`processes.
`Finally, with respect to Patent Owner’s argument that Petitioner
`improperly shifts to Patent Owner the burden of proving non-obviousness,
`
`16
`
`
`
`IPR2017-01674
`Patent 8,802,545 B2
`
`see Prelim. Resp. 28–30, we are mindful that it remains Petitioner’s burden
`to demonstrate the obviousness of the challenged claims. Harmonic Inc.,
`815 F.3d at 1363; Dynamic Drinkware, LLC , 800 F.3d at 1378. As such,
`taken alone, Petitioner’s contention that “the ’545 patent is entirely devoid
`of any detailed description of how the claimed combination yields some sort
`of unexpected and non-obvious result” is insufficient to demonstrate
`obviousness. Pet. 58; see also Ex. 1009 ¶¶ 99–103. In this case and on this
`record, however, Petitioner cites adequate evidence—including the
`references themselves and Dr. Spencer’s testimony—sufficient to establish a
`reasonable likelihood of prevailing, at this stage of the proceeding.
`
`4. Analysis of Dependent Claim 2
`
`We have reviewed Petitioner’s contentions and evidence regarding
`dependent claim 2. Pet. 31 (chart). Based on the record before us, we
`determine that Petitioner has established a reasonable likelihood of
`prevailing on its contention that the combined teachings of Fischer and
`Donohue would have rendered obvious claim 2. See, e.g., Ex. 1005, 5:57–
`58 (“Substrate wafer 6 . . . is mounted or laminated on a carrier film 28,
`which is fixed in a frame 30.”).
`
`5. Analysis of Independent Claims 4 and 5
`
`Independent claims 4 and 5 recite limitations substantially similar to
`those of claim 1. Compare Ex. 1001, 15:16–44, with id. at 15:51–16:53.
`However, claims 4 and 5 differ from claim 1 in the following respects:
`claims 4 and 5 omit steps related to “applying” and “patterning” photoresist;
`claim 4 recites “the plurality of device structures having an integrated
`protective material while the street areas remain unprotected”; and claim 5
`
`17
`
`
`
`IPR2017-01674
`Patent 8,802,545 B2
`
`recites “the plurality of device structures having a protective material while
`the street areas remain unprotected.” Id. at 15:55–16:3, 16:30–32; see also
`Pet. 17–18.
`We have reviewed Petitioner’s contentions and evidence regarding
`independent claims 4 and 5. Pet. 32–35 (chart), 62–64. Based on the record
`before us, and for substantially the same reasons discussed above regarding
`claim 1, we determine that Petitioner has established a reasonable likelihood
`of prevailing on its contention that the combined teachings of Fischer and
`Donohue would have rendered obvious claims 4 and 5. See, e.g., Ex. 1005,
`6:3–11 (bond pads 36 are located under cut-outs in central region 34 of
`etching masks 32), Fig. 5.
`
`III. CONCLUSION
`For the foregoing reasons, we determine Petitioner has demonstrated a
`reasonable likelihood it would prevail in establishing the unpatentability of
`challenged claims 1, 2, 4, and 5 of the ’545 patent, and we institute an inter
`partes review of those claims.
`At this stage of the proceeding, we have not made a final
`determination as to the patentability of any challenged claim or as to the
`construction of any claim term.
`
`IV. ORDER
`For the reasons given, it is:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is hereby instituted as to claims 1, 2, 4, and 5 of the ’545 patent on
`the following asserted ground:
`Claims 1, 2, 4, and 5 under 35 U.S.C. § 103(a) as
`unpatentable over Fischer and Donohue;
`
`18
`
`
`
`IPR2017-01674
`Patent 8,802,545 B2
`
`
`FURTHER ORDERED that the trial is limited to the ground identified
`above, and no other grounds are authorized;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial, the trial
`commencing on the entry date of this Decision.
`
`
`
`PETITIONER:
`
`Adam C. Volentine
`Josh Povsner
`Volentine, Whitt & Francos PLLC
`avolentine@volentine.com
`jpovsner@volentine.com
`
`PATENT OWNER:
`
`Harvey S. Kauget
`Ryan M. Corbett
`Burr & Forman LLP
`hkauget@burr.com
`rcorbett@burr.com
`
`
`
`19
`
`
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