Trials@uspto.gov
`571-272-7822
`
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`Paper No. 29
`Entered: March 7, 2019
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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
`Denying Petitioner’s Request for Rehearing of Final Written Decision
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`Paper No. 29
`Entered: March 7, 2019
`
`
`
`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
`Denying Petitioner’s Request for Rehearing of Final Written Decision
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`IPR2017-01674
`Patent 8,802,545 B2
`
`
`I.
`
`INTRODUCTION
`
`SPTS Technologies Ltd. (“Petitioner”) filed a Request for Rehearing
`
`(Paper 28, “Request” or “Req.”) of our Final Written Decision (Paper 27,
`
`“Final Written Decision,” “Decision,” or “Dec.”), in which we determined
`
`that Petitioner had not shown by a preponderance of the evidence that
`
`challenged claims 1, 2, 4, and 5 of U.S. Patent No. 8,802,545 B2 (Ex. 1001,
`
`“the ’545 patent”) are unpatentable. Dec. 2. For the reasons that follow,
`
`Petitioner’s Request for Rehearing is denied.
`
`II. THE REQUEST FOR REHEARING
`
`In pertinent part, 37 C.F.R. § 42.71(d) states:
`
`The burden of showing a decision should be modified lies with
`the party challenging the decision. The request must specifically
`identify all matters the party believes the Board misapprehended
`or overlooked, and the place where each matter was previously
`addressed in a motion, an opposition, or a reply.
`
`Thus, a request for rehearing is not an opportunity merely to disagree with
`
`the Board’s assessment of the arguments or weighing of the evidence, or to
`
`present new arguments or evidence not presented previously.
`
`Petitioner argues that “the PTAB overlooked and/or misapprehended
`
`Petitioner’s evidence and argument” regarding five specific issues. Req. 3.
`
`We have reviewed Petitioner’s Request and carefully considered each
`
`argument presented. For the following reasons, we are not persuaded that
`
`we misapprehended or overlooked arguments or evidence, as asserted by
`
`Petitioner.
`
`
`
`2
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`IPR2017-01674
`Patent 8,802,545 B2
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`III. DISCUSSION
`
`A. Argument Regarding Sekiya (Exs. 1020, 2014)
`
`Petitioner argues that the Decision “largely rests on [the Board’s]
`
`conclusion that Petitioner has not demonstrated that the POSITA would
`
`expect undercutting to occur in Fischer,” wherein the Board improperly
`
`credited the testimony of Patent Owner’s declarant, Dr. Shanfield, over that
`
`of Petitioner’s declarant, Dr. Spencer. Req. 4. According to Petitioner, “the
`
`PTAB has not addressed Petitioner’s argument that Dr. Shanfield supports
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`his testimony on the back of a mischaracterization of the teachings of
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`Sekiya,” a prior art U.S. patent submitted into evidence by both Petitioner
`
`and Patent Owner. Id. Petitioner contends that “Dr. Shanfield relies on an
`
`alternative embodiment of Sekiya that runs counter to the notion of the
`
`carrier film being reached during etching. That is, in contrast to Fischer,
`
`Sekiya’s alternative embodiment stops etching before the carrier film is
`
`reached.” Id. (citing Pet. Reply 9–10 (quoting Dr. Shanfield’s testimony that
`
`Sekiya teaches “that a slight thickness of unetched region may remain,”
`
`which may be fractured by application of “a slight bending force”)).
`
`According to Petitioner, this “infects” Dr. Shanfield’s entire testimony
`
`regarding “residual material.” Id.
`
`Petitioner is correct that the Board found Dr. Shanfield’s testimony
`
`more persuasive than that of Dr. Spencer, in part because Dr. Spencer failed
`
`to support adequately his opinion and failed to account for Fischer’s
`
`disclosure that the etching process stops at the boundary surface to Fischer’s
`
`carrier film. Dec. 19–21; Ex. 1005, 6:55–59; Ex. 1009 ¶ 90. The Board
`
`credited Dr. Shanfield’s testimony that, when etching stops at the boundary
`
`to Fischer’s carrier film, undercutting is not likely to occur because charge
`
`
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`3
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`IPR2017-01674
`Patent 8,802,545 B2
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`will not build up on the surface of the film. Dec. 20 (citing Ex. 2010 ¶¶ 21–
`
`22, 25). Thus, the Board determined that Petitioner failed to establish that a
`
`build-up of ions would have been expected to occur on Fischer’s carrier
`
`film, and thus failed to establish that Fischer would have been perceived as
`
`suffering from an undercutting problem, motivating consideration of
`
`Donohue. The Board also found that “Dr. Shanfield further explains that
`
`even if some amount of interface undercutting might occur in Fischer, this
`
`still would not have motivated a POSITA to employ Donohue’s technique”
`
`because “any undercut associated with dicing is ‘far removed from the
`
`electronic devices, which all reside in the top 0.1 – 0.3 μm of the wafer . . .
`
`making even significant undercut from dicing inconsequential.’” Id. at 21
`
`(citing Ex. 2001 ¶ 41).
`
`Contrary to Petitioner’s assertion, the Board did not overlook
`
`Petitioner’s argument that Dr. Shanfield’s testimony was based, in part, on a
`
`mischaracterization of Sekiya’s teachings. Although the Decision does not
`
`mention Sekiya by name, the Board considered Sekiya’s discussion of an
`
`embodiment in which residual silicon may remain between chip
`
`components. Compare Req. 4, with Dec. 20–23. The Board first found that
`
`Dr. Shanfield consistently stated that Fischer’s etching process stops at the
`
`boundary of the carrier film. Dec. 22 (citing Ex. 2001 ¶ 48; Ex. 2010 ¶ 13).
`
`As discussed above, Fischer’s teaching is consistent with Dr. Shanfield’s
`
`testimony that a build-up of ions would not occur at the carrier film, such
`
`that undercutting would not have been expected. Ex. 2010 ¶¶ 21–22, 25.
`
`Second, and as related to Petitioner’s argument about Sekiya, the Board
`
`stated:
`
`
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`4
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`IPR2017-01674
`Patent 8,802,545 B2
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`
`Dr. Shanfield did not testify that residual silicon necessarily
`remains after Fischer’s etching operation stops, nor did he testify
`that residual silicon is the reason that undercutting is absent. . . .
`Dr. Shanfield’s discussion of residual silicon appears to explain
`that even if some small amount of silicon were to remain on a
`wafer, it is inconsequential, because it would simply be fractured
`by hand.
`
`Dec. 22–23.
`
`Thus, the Board considered Petitioner’s argument that Dr. Shanfield
`
`improperly relied upon Sekiya’s embodiment in which residual material
`
`remains, but simply found this argument unpersuasive to discredit
`
`Dr. Shanfield’s testimony. Dec. 19–23.
`
`B. Argument Regarding Dr. Shanfield’s “Admission”
`
`Petitioner argues that the Board overlooked Petitioner’s argument
`
`that, in Dr. Shanfield first declaration, he acknowledged that undercutting
`
`may occur in Fischer’s process, but that any such undercutting would have
`
`been acceptable. Req. 5 (citing Pet. Reply 8–9, 14–17).
`
`The Board expressly addressed this argument on pages 21–23 of the
`
`Decision. As discussed above, the Board credited Dr. Shanfield’s testimony,
`
`provided in his first declaration, that even if some undercutting occurred in
`
`Fischer’s process, it would be inconsequential because it would be far away
`
`from the functional chip components. Dec. 21; Ex. 2001 ¶ 41. As stated in
`
`the Decision, Dr. Shanfield’s testimony on this point “aligns with the
`
`different purposes of Fischer—a dicing technique—and Donohue—a chip
`
`fabrication technique.” Id. Additionally, the Board stated:
`
`Petitioner argues that Dr. Shanfield provides inconsistent
`explanations for the asserted absence of undercutting in Fischer,
`first testifying that Fischer discloses a process in which the chips
`
`
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`5
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`IPR2017-01674
`Patent 8,802,545 B2
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`are completely sectioned, and later testifying that residual un-
`etched silicon remains between the chips.
`
`We do not find Dr. Shanfield’s testimony to be
`inconsistent, or lacking credibility. In both declarations,
`Dr. Shanfield testified that Fischer discloses that the etching
`process stops at the boundary of the carrier film, and that the
`wafer is completely sectioned into individual chips. Petitioner is
`correct that Dr. Shanfield did not discuss residual silicon in his
`First Declaration. However, we do not agree with Petitioner’s
`characterization of Dr. Shanfield’s supplemental testimony.
`Dr. Shanfield did not testify that residual silicon necessarily
`remains after Fischer’s etching operation stops . . . .
`
`Dec. 22–23 (citations omitted); see supra Section III.A.
`
`To the extent Petitioner attempts to make the broader argument that
`
`Dr. Shanfield’s testimony lacks credibility because his first, pre-institution
`
`declaration (Ex. 2001) differs from his supplemental, post-institution
`
`declaration (Ex. 2010), we disagree. Req. 5. Dr. Shanfield’s original
`
`declaration assumes that interface undercutting might occur in Fischer and
`
`posits other reasons why a POSITA would not have combined Fischer and
`
`Donohue. See, e.g., Ex. 2001 ¶¶ 36–42. In his supplemental declaration,
`
`Dr. Shanfield challenges Petitioner’s assertion that undercutting would have
`
`been expected to occur in Fischer. See, e.g., Ex. 2010 ¶¶ 21–26. We do not
`
`see this difference as undermining Dr. Shanfield’s credibility. In his first
`
`declaration, submitted prior to institution of this proceeding, Dr. Shanfield
`
`was not required to challenge every fact asserted by Petitioner. Furthermore,
`
`as a general matter, a patent owner and/or its declarant do not lose credibility
`
`by advancing arguments during trial that differ from the arguments advanced
`
`at the pre-institution stage, as long as there is no inconsistency in the
`
`
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`6
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`IPR2017-01674
`Patent 8,802,545 B2
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`testimony offered at the different stages of the proceeding. Here, Petitioner
`
`points to no compelling inconsistency in Dr. Shanfield’s testimony.
`
`
`
`Thus, the Board considered Petitioner’s argument that Dr. Shanfield
`
`acknowledged that undercutting may occur in Fischer’s process, but simply
`
`found this argument unpersuasive to discredit Dr. Shanfield’s testimony,
`
`taken as a whole. Dec. 19–23.
`
`C. Argument Regarding the ’545 Patent’s “Admission”
`
`Petitioner argues that the Board “mistakenly interpret[ed] the ‘545
`
`patent as not admitting that undercutting was known to occur [at] the
`
`‘wafer/mounting tape interface,’” which Petitioner contends is incorrect, in
`
`view of the ’545 patent specification and Dr. Spencer’s testimony. Req. 5–6
`
`(citing Dec. 27; Ex. 1001, 14:31–47; Pet. Reply 12–13). Petitioner contends
`
`that the Board “overlooked that Dr. Spencer’s testimony conforms with the
`
`opinions of the inventors of the ‘545 patent as to the well known impact that
`
`charging has at the mounting tape interface.” Id. at 6.
`
`At the cited page of the Decision, the Board explained: “[t]he ’545
`
`patent states that undercutting was known to occur when etching a substrate
`
`down to a substrate/insulator interface, but it does not admit that interface
`
`undercutting was known to occur at the wafer/mounting tape interface
`
`during plasma dicing.” Dec. 27 (citing Ex. 1001, 13:41–47). This finding is
`
`supported by substantial evidence. The ’545 patent states:
`
`When etching a substrate material down to an insulating layer (in
`this instance the mounting tape), problems with the etch
`associated with charging of the insulating layer are well known.
`Such problems include localized severe undercutting at the
`substrate/insulator interface which is undesirable during die
`
`
`
`7
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`IPR2017-01674
`Patent 8,802,545 B2
`
`
`separation, since this affects the performance of the singulated
`die.
`
`Ex. 1001, 13:41–47. Contrary to Petitioner’s argument, the ’545 patent does
`
`not admit that undercutting was well-known to occur at the mounting tape
`
`interface. Rather, the parenthetical phrase that references a mounting tape—
`
`i.e., “(in this instance the mounting tape)”—appears to reference the
`
`invention disclosed in the ’545 patent, not what was well known in the prior
`
`art. Id. (“in this instance”). Similarly, the explanation that undercutting “is
`
`undesirable during die singulation” also appears directed to the aims of the
`
`’545 patent, i.e., dicing, not the state of the prior art. See also, e.g., id. at
`
`(54) (plasma dicing), 1:23–4:42 (summarizing “background” technology
`
`without referencing undercutting at a mounting tape).
`
`
`
`Petitioner has not pointed to any evidence that the Board overlooked
`
`or disregarded, nor shown that this interpretation of the ’545 patent is an
`
`abuse of discretion. Although Petitioner directs attention to Dr. Spencer’s
`
`testimony (see Req. 6 (citing Pet. Reply 12–13 (citing Ex. 1009 ¶ 87))), the
`
`cited testimony does not assert that charge build-up or undercutting were
`
`known to occur at a wafer/mounting tape interface. Instead, Dr. Spencer
`
`states that undercutting of silicon at an etch stop interface was known.
`
`Ex. 1009 ¶ 87 (“[T]he undercutting of silicon at an etch stop
`
`interface was encountered by persons of ordinary skill in the plasma etching
`
`art.”). Petitioner’s failure to point to prior art or expert testimony showing
`
`what it contends was well known underscores the correctness of our finding.
`
`Even more importantly, Petitioner’s arguments in this regard are
`
`misplaced. The thrust of this portion of the Decision (Dec. 27–28) explained
`
`that Petitioner’s reliance on the teachings of the challenged ’545 patent to
`
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`8
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`IPR2017-01674
`Patent 8,802,545 B2
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`support its proposed obviousness case was rooted in impermissible
`
`hindsight. Indeed, Petitioner’s counsel admitted that out of the many patents
`
`counsel reviewed, only one—Grivna (Ex. 1021)—discussed undercutting in
`
`the context of plasma dicing, and even Grivna did not concern the type of
`
`undercutting that Petitioner contends would have been experienced by
`
`Fischer (i.e., interface undercutting caused by the accumulation of positively
`
`charged ions). Dec. 27 (citing Tr. 16:19–23). As the Decision explains, it
`
`appears that Petitioner engaged in impermissible hindsight reasoning, using
`
`the challenged ’545 patent’s discussion of interface undercutting as a
`
`roadmap to piece together pieces of prior art in an attempt to satisfy the
`
`claims.
`
`Thus, the Board neither misapprehended the teachings of the ’545
`
`patent, nor overlooked Dr. Spencer’s testimony. Rather, the Board found
`
`that Petitioner’s reliance on the challenged patent itself as the basis for its
`
`proposed obviousness case involved impermissible hindsight.
`
`D. Argument Regarding Grivna (Ex. 1021)
`
`Petitioner argues that the Board “makes much of the process
`
`distinctions between Fischer and Grivna,” but explains that Grivna is relied
`
`upon “merely to corroborate [Dr. Spencer’s] testimony that the POSITA
`
`would prefer to avoid undercutting.” Req. 6. Thus, Petitioner contends that
`
`the Board misapprehended Grivna, and the Board’s discussion responds to
`
`“a position not taken by Petitioner.” Id. (citing Dec. 26; Pet. Reply 14).
`
`In the Petition, Petitioner contends that a person of ordinary skill in
`
`the art would have been motivated to apply Donohue’s teachings of
`
`sequential etch processes to Fischer’s plasma dicing technique, to avoid
`
`
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`9
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`IPR2017-01674
`Patent 8,802,545 B2
`
`interface undercutting, caused by the accumulation of charge at the
`
`substrate/wafer interface. Pet. 52–56. Petitioner contends that avoiding
`
`undercut “has long been a design consideration [of] the POSITA in the field
`
`of plasma etching, and to corroborate this testimony of Dr. Spencer in the
`
`context of plasma dicing, attention is directed to U.S. Patent No. 7,781,310
`
`([Grivna] (Ex. 1021)) at column 5, lines 11–26, where avoidance of
`
`undercutting is discussed.” Id. at 53. Thus, Petitioner cites to Grivna to
`
`support the contention that undercutting was a known problem in the context
`
`of plasma dicing, and that a POSITA would have sought to avoid it. Id.; see
`
`also Pet. Reply 14.
`
`Indeed, in the Decision, the Board agreed that Grivna addresses
`
`isotropic undercutting, wherein this type of undercutting may occur in
`
`isotropic dicing processes because the plasma is applied to the substrate in
`
`all directions, rather than anisotropically, i.e., in a near vertical direction.
`
`Dec. 16, 25. In the proposed combination, however, Petitioner contends that
`
`Fischer’s process would result in interface undercutting, not isotropic
`
`undercutting, due to the accumulation of charge at the wafer/substrate
`
`interface. Pet. 53–56; Dec. 15–16 (describing the different types of
`
`undercutting). Thus, the “process distinctions” to which Petitioner refers
`
`(Req. 6; Dec. 25–27) show that “although Grivna demonstrates that isotropic
`
`undercutting was a known problem in plasma dicing, it is not persuasive as
`
`to whether Fischer experienced an interface undercutting problem that would
`
`have motivated consideration of Donohue.” Dec. 26–27. In other words,
`
`even if Grivna is relied upon “merely to corroborate [Dr. Spencer’s]
`
`testimony that the POSITA would prefer to avoid undercutting,” that
`
`confirmation is irrelevant to the proposed combination of Fischer and
`
`
`
`10
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`IPR2017-01674
`Patent 8,802,545 B2
`
`Donohue, wherein Petitioner has not shown that any type of problematic
`
`undercutting would have been expected in Fischer, let alone the type of
`
`undercutting sought to be avoided in Grivna. Req. 6.
`
`Thus, the Board neither misapprehended Grivna nor Petitioner’s
`
`reliance upon it, but simply found that Grivna’s teachings are directed to a
`
`different type of undercutting not alleged to be present in the proposed
`
`combination.
`
`E. Argument Regarding Dr. Shanfield’s Credibility
`
`Petitioner argues that the “PTAB has overlooked Petitioner’s
`
`contention that Dr. Shanfield’s testimony is not credible as a whole,”
`
`because Dr. Shanfield originally testified that although undercutting could
`
`be prevented in Fischer, a POSITA would find it undesirable to slow the
`
`etch rate to avoid undercutting, and also testified that the dimensions of
`
`Donohue “were incompatible with the device being diced by Fischer.” Req.
`
`6–7 (citing Pet. Reply 8–9). Petitioner argues that Dr. Shanfield’s testimony
`
`was based upon an “incorrect ‘typical’ SOI thickness,” conflicted with
`
`Donohue, did not address other evidence (Ex. 1034, U.S. Patent Application
`
`No. 2007/0175856 A1, issued to Johnson et al.), and failed to address
`
`Donohue’s most pertinent embodiments. Id. at 7 (citing Pet. Reply 17).
`
`As discussed above, the Board considered Dr. Shanfield’s credibility.
`
`See, e.g., Dec. 22 (“We do not find Dr. Shanfield’s testimony to be
`
`inconsistent, or lacking credibility.”); see supra Section III.B. The Board
`
`credited Dr. Shanfield’s testimony that undercutting would not have been
`
`expected to occur in Fischer but, even if it did, it would have been “far
`
`removed from the electronic devices, which all reside in the top 0.1 – 0.3 μm
`
`
`
`11
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`IPR2017-01674
`Patent 8,802,545 B2
`
`of the wafer . . . making even significant undercut from dicing
`
`inconsequential.” Dec. 20–21 (citing Ex. 2010 ¶¶ 21–22, 25; quoting
`
`Ex. 2001 ¶ 41). The Decision also noted that “Petitioner has not drawn our
`
`attention to any persuasive evidence rebutting Dr. Shanfield’s testimony on
`
`this point.” Id.
`
`The arguments made in the Request, and the cited portions of the
`
`Reply, do not demonstrate that the Board misapprehended or overlooked any
`
`matter. These arguments are directed to purported errors in Dr. Shanfield’s
`
`evaluation of Donohue. Req. 7; Pet. Reply 17. For example, Petitioner
`
`argues that Donohue and Johnson teach trench depths of “more than 400
`
`times than the ‘typical’ depth attributed by Dr. Shanfield.” Pet. Reply 17.
`
`However, as the Decision explains, the Board concluded that neither
`
`Petitioner nor Dr. Spencer provided a sufficient evidentiary basis to
`
`conclude that a person of ordinary skill in the art would have expected
`
`undercutting to occur in Fischer, given Fischer’s teaching that the etching
`
`process stops at the boundary to the carrier film. Dec. 19–23. The Board
`
`credited Dr. Shanfield’s testimony that undercutting would not have been
`
`expected to occur in this circumstance because ions would not build up on
`
`Fischer’s carrier film. Dec. 20–21; contra Ex. 1009 ¶ 90. Thus, because
`
`Petitioner had not demonstrated by a preponderance of the evidence that
`
`undercutting would have been expected to occur in Fischer, Petitioner had
`
`not provided a sufficient rationale to consider Donohue’s teachings at all,
`
`regardless of the depth of Donohue’s device.
`
`In other words, even if the Board were to accept Petitioner’s criticisms
`
`of Dr. Shanfield’s testimony with respect to Donohue’s depths, these
`
`purported deficiencies do not relate to whether Petitioner’s evidence is
`
`
`
`12
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`IPR2017-01674
`Patent 8,802,545 B2
`
`sufficient to satisfy Petitioner’s affirmative burden to demonstrate that
`
`undercutting would have been expected to occur in Fischer, thus providing a
`
`reason for consideration of Donohue without the benefit of impermissible
`
`hindsight. Moreover, Petitioner did not identify any evidence to rebut
`
`Dr. Shanfield’s testimony that, if undercutting were to occur in Fischer, it
`
`would be “far removed from the electronic devices, which all reside in the
`
`top 0.1 – 0.3 μm of the wafer . . . making even significant undercut from
`
`dicing inconsequential.” Ex. 2001 ¶ 41. As noted above, Petitioner disputes
`
`the device thickness relied upon by Dr. Shanfield, but does not draw our
`
`attention to any non-hindsight based evidence demonstrating that, with other
`
`thicknesses thought by Petitioner to be more typical, interface undercutting
`
`would have been consequential in a dicing process. See Pet. Reply 8–9
`
`(discussing Ex. 2001 ¶ 41), 14–19 (discussing wafer thicknesses).
`
`Thus, the Board did not overlook Petitioner’s arguments regarding
`
`Dr. Shanfield’s credibility it, but simply found them unpersuasive.
`
`IV. CONCLUSION
`
`We have reviewed and considered the arguments in Petitioner’s
`
`Request and conclude that Petitioner has not carried its burden of
`
`demonstrating that the Board misapprehended or overlooked any matters in
`
`rendering the Final Written Decision, for the reasons discussed above.
`
`37 C.F.R. § 42.71(d). Rather, with respect to each matter discussed above,
`
`Petitioner simply disagrees with the findings of fact and conclusions of law
`
`set forth in our Decision. Mere disagreement is not a proper basis for
`
`rehearing.
`
`The Request for Rehearing is denied.
`
`
`
`13
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`IPR2017-01674
`Patent 8,802,545 B2
`
`
`
`PETITIONER:
`
`Adam Volentine
`avolentine@volentine.com
`
`Joshua Povsner
`jpovsner@volentine.com
`
`
`PATENT OWNER:
`
`Harvey Kauget
`hkauget@burr.com
`
`Ryan Corbett
`rcorbett@burr.com
`
`
`
`14
`
`
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