Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTELLECTUAL VENTURES MANAGEMENT, LLC
`
`Petitioner
`
`V.
`
`Patent of XILINX, INC.
`
`Patent Owner
`
`Case IPR2012-00018
`
`Patent 7,566,960
`
`Title: INTERPOSING STRUCTURE
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`PATENT OWNER’S SECOND SUBSTITUTE MOTION TO AMEND
`
`BY XILINX UNDER 37 C.F.R. § 42.121
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTELLECTUAL VENTURES MANAGEMENT, LLC
`
`Petitioner
`
`V.
`
`Patent of XILINX, INC.
`
`Patent Owner
`
`Case IPR2012-00018
`
`Patent 7,566,960
`
`Title: INTERPOSING STRUCTURE
`
`PATENT OWNER’S SECOND SUBSTITUTE MOTION TO AMEND
`
`BY XILINX UNDER 37 C.F.R. § 42.121
`
`
`
`Patent Owner’s Second Substitute Motion to Amend
`
`IPR2012-00018
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`TABLE OF CONTENTS
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`INTRODUCTION ..................................................................................................... l
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`I.
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`Claim Listing ..................................................................................................... 2
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`11. Written Description Support and Claim Construction ...................................... 6
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`III. Claims 14-26 are Patentably Distinct Over the Art ....................................... 13
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`A. Closest Prior Art ......................................................................................... 14
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`B.
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`C.
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`Patentable Distinction Over Chakrovorty and Siniaguine ......................... 15
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`Patentable Distinction Over Chakrovorty, Siniaguine, and Ma ................. 17
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`IV. Conclusion ..................................................................................................... 19
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`_i i_
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`INTRODUCTION
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`Patent Owner Xilinx, Inc. (“Xilinx”) moves to amend the claims of US.
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`Patent No. 7,566,960 (“the ’960 Patent”) under 35 U.S.C. § 316(a)(9) and 37
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`CPR. § 42.121 and provides a “claim-by-claim approach to specifying the
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`contingency of substitution,” as required by Idle Free Systems, Inc., v. Bergstrom
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`Inc., IPR2012-00027, Paper 26 (June 11, 2013) at 10. Specifically, Patent Owner
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`moves to cancel Claims 1-8 and to substitute Claims 14-21, contingent upon a
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`Board determination that Claim 1 is unpatentable, and similarly to cancel Claims
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`9-13 and to substitute Claims 22—26, contingent upon a Board determination that
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`Claim 9 is unpatentable.
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`Pursuant to Idle Free, “a substitute claim may not enlarge the scope of the
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`challenged claim by eliminating any feature.” Idle Free at 5. Further, a substitute
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`claim cannot “introduce[] new matter” and the patent owner must “show written
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`description support in the original disclosure of the patent.” Idle Free at 8; see
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`also 37 CPR. §§ 42.22 and 42.121.
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`Patent Owner submits that this motion fully complies with these
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`requirements. Specifically, Patent Owner submits that Claims 14—26 do not
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`introduce new matter and are fully supported by the originally filed specification of
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`the ’960 Patent as discussed below in the written description support section. Also,
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`it is submitted that each of Claims 14—26 includes the subject matter of the claim
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`Patent Owner’s Second Substitute Motion to Amend
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`IPR2012-00018
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`for which it substitutes and does not enlarge the scope of the challenged claim it
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`replaces.
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`Idle Free fiirther requires that any amendment be responsive to a ground of
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`unpatentability involved in the trial. Idle Free at 4-5; see also 37 C.F.R. §
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`42.121(2)(i). Here, the present amendments comply with this requirement because
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`they include each feature of the claims being replaced and then narrow the
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`interposer feature, which was a specific focus of Petitioner’s patentability
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`challenges. See, Petition at pp. 30-37 and 38-49.
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`I.
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`Claim Listing
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`Claims 1-8 (Canceled)
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`Claims 9-13 (Canceled)
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`Claim 14 (Proposed substitute for Claim 1) An assembly, comprising:
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`an integrated circuit die having an array of micro-bumps disposed on a
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`surface of the integrated circuit die in a first pattern;
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`an integrated circuit package having an array of landing pads disposed on an
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`inside surface of the integrated circuit package in a second pattern and an array of
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`solder balls disposed on an outside surface of the integrated circuit package,
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`wherein the first pattern and the second pattern are substantially identical
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`patterns; and
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`Patent Owner’s Second Substitute Motion to Amend
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`IPR2012-00018
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`an interposing structure comprising a plurality of tiled integposing structures
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`disposed inside the integrated circuit package between the integrated circuit die
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`and the inside surface of the integrated circuit package, the plurality of tiled
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`interposing structures being held together using an elastomer, the interposer
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`electrically coupling a first micro-bump in a first position in the array of micro-
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`bumps to a first landing pad located opposite to the first position and to a second
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`landing pad in the array of landing pads.
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`Claim 15 (Proposed substitute for Claim 2): The assembly of claim [[1]] _1_41,
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`wherein a line extending through the first micro—bump in a direction orthogonal to
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`the surface of the integrated circuit does not extend through the second landing pad
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`of the integrated circuit package.
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`Claim 16 (Proposed substitute for Claim 3): The assembly of claim [[2]] Q,
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`wherein the surface of the integrated circuit die is a major surface of the integrated
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`circuit die, and wherein the interposing structure has a major surface, and wherein
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`the major surface of the integrated circuit die and the major surface of the
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`interposing structure have roughly identical surface areas.
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`Claim 17 (Proposed substitute for Claim 4): The assembly of claim [[3]] l_6,
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`wherein the interposing structure includes no transistor and no PN junction.
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`Patent Owner’s Second Substitute Motion to Amend
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`IPR2012-00018
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`Claim 18 (Proposed substitute for Claim 5): The assembly of claim [[4]] 11,
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`wherein the interposing structure includes an array of micro—bumps, wherein the
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`array of micro-bumps of the interposing structure has a pattern that is substantially
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`identical to the second pattern of the landing pads on the inside surface of the
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`integrated circuit package.
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`Claim 19 (Proposed substitute for Claim 6): The assembly of claim [[5]] fl,
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`wherein the interposing structure includes a layer comprising epoxy and fiberglass.
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`Claim 20 (Proposed substitute for Claim 7): The assembly of claim [[5]] 18,
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`wherein the interposing structure includes a bypass capacitor.
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`Claim 21 (Proposed substitute for Claim 8): The assembly of claim [[5]] 1_8,
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`wherein the first micro-bump is coupled to the first landing pad at least in part by a
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`conductor disposed in interposing structure, wherein the conductor disposed in the
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`interposing structure extends in a direction parallel to the surface of the integrated
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`circuit.
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`Claim 22 (Proposed substitute for Claim 9): An assembly, comprising:
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`an integrated circuit die having an array of micro-bumps disposed on a
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`surface of the integrated circuit die in a first pattern;
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`an integrated circuit package having an array of landing pads disposed on an
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`inside surface of the integrated circuit package in a second pattern and an array of
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`_4_
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`Patent Owner’s Second Substitute Motion to Amend
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`IPR2012—00018
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`solder balls disposed on an outside surface of the integrated circuit package,
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`wherein the first pattern and the second pattern are substantially identical patterns;
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`and
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`means for electrically coupling a first micro-bump in a first position in the
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`array of micro-bumps to a first landing pad disposed opposite the first position and
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`to a second landing pad located in a different position in the array of landing pads,
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`the means comprising a plurality of tiled interposing structures electrically
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`coupling the array of landing pads and the array of solder balls, the means
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`including the plurality of tiled interposing structures being disposed inside the
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`integrated circuit package between the integrated circuit die and the inside surface
`
`of the integrated circuit package, the plurality of tiled interposing structures being
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`held together using an elastomer.
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`Claim 23 (Proposed substitute for Claim 10): The assembly of claim [[9]]
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`2, wherein the means is also for providing a bypass current to the integrated
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`circuit die.
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`Claim 24 (Proposed substitute for Claim 11): The assembly of claim [[9]]
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`2;, wherein the surface of the integrated circuit die is a major surface of the
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`integrated circuit die, and wherein the means has a major surface, and wherein the
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`Patent Owner’s Second Substitute Motion to Amend
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`IPR2012-00018
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`major surface of the integrated circuit die and the major surface of the means have
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`roughly identical surface areas.
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`Claim 25 (Proposed substitute for Claim 12): The assembly of claim [[9]]
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`Q, wherein means has a planar form and is less than 500 microns thick.
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`Claim 26 (Proposed substitute for Claim 13): The assembly of claim [[9]]
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`22, wherein the integrated circuit die is an application specific integrated circuit
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`(ASIC).
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`II. Written Description Support and Claim Construction
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`Pursuant to Idle Free, the patent owner must “show written description
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`support in the original disclosure of the patent.” Idle Free at 8. Further, Idle Free
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`requires that patent owner include “construction of new claim terms.” Idle Free at
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`7. The original disclosure of the ’960 Patent is included in Exhibit XLNX-2001
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`and claim construction for new claim terms is provided below as new claim terms
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`are introduced.
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`Claim 14 recites “an integrated circuit die having an array of micro—bumps
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`disposed on a surface of the integrated circuit die in a first pattern.” This claim
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`element is supported in the originally filed specification at least by Figs. 10-14 and
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`24 (XLNX-2001 at 379-381 and 387), and at least at W 89-92 and W 127-138
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`(XLNX—2001 at 344-345 and 356-361), as well as original Claim 1.
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`Patent Owner’s Second Substitute Motion to Amend
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`IPR2012-00018
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`The claim further recites “an integrated circuit package having an array of
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`landing pads disposed on an inside surface of the integrated circuit package in a
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`second pattern and an array of solder balls disposed on an outside surface of the
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`integrated circuit package.” This claim element is supported in the originally filed
`
`specification at least by Figs. 10-14 and 24 (XLNX—ZOOl at 379-381 and 387), and
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`at least at W 89—92 and W 127-138 (XLNX-ZOOl at 344-345 and 356-361).
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`The claim further recites that “the first pattern and the second pattern are
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`substantially identical patterns.” This claim element is supported in the originally
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`filed specification at least by Figs. 10-14 and 24 (XLNX—2001 at 379-381 and
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`387), and at least at W 89-92 and 1111 127-138 (XLNX-2001 at 344-345 and 356-
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`361), as well as original Claim 1.
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`The claim further recites “an interposing structure comprising a plurality of
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`tiled interposing structures disposed inside the integrated circuit package between
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`the integrated circuit die and the inside surface of the integrated circuit package.”
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`This claim element is supported in the originally filed specification at least by Figs.
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`8-14 and 24 (XLNX—ZOOl at 378-381 and 387), and at least at W 81-91 and 1M
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`127-138 (XLNX-ZOOI at 342—345 and 356-361). Regarding the “plurality of tiled
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`interposing structures,” Fig. 8 and accompanying text describe creating a larger
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`single interposing structure from a plurality of smaller tiles:
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`[0081] In some embodiments, several smaller interposers are
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`Patent Owner’s Second Substitute Motion to Amend
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`IPR2012-00018
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`used to mount a larger packaged IC to a PCB. When several
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`smaller interposers are used,
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`they can individually expand
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`and/or
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`contract over
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`several
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`smaller
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`areas,
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`rather
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`than
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`experiencing a larger expansion and/or contraction over a single
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`larger area. Thus, the structure can withstand greater variations
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`in temperature without failure.
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`[0082] FIG. 8 shows one such embodiment. In the pictured
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`embodiment,
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`the smaller interposers ("tiles") are separately
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`soldered to the packaged IC and to the lands of the PCB. In
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`other embodiments (not shown), the tiles are combined together
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`to form a
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`single
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`interposer device prior
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`to mounting.
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`(XLNX-2001 at 342; see also Neikirk, XLNX-2008, W 14—17.)
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`PACKAGED
`IC 802
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`TILED
`INTERFOSEH
`ace
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`
`
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`Pursuant to Idle Free ’s requirement for a construction of new claim terms,
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`Patent Owner submits that new claim term “plurality of tiled interposing
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`structures” should be construed as “a regular pattern of side by side interposing
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`structures.” (Neikirk, XLNX-ZOOS, 1i 13.)
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`The claim further recites “the plurality of tiled interposing structures being
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`—8—
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`Patent Owner’s Second Substitute Motion to Amend
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`IPR2012-00018
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`held together using an elastomer.” This claim element is supported in the originally
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`filed specification at least at 11 82 (XLNX-2001 at 342):
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`[0082] In one embodiment, an elastomer is used to hold the
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`tiles together, thus forming the single interposer device. The
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`elastomer also serves to absorb mechanical
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`stresses from
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`thermal expansion and/or contraction.
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`Pursuant to Idle Free ’5 requirement for a construction of new claim terms,
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`Patent Owner submits that new claim term “elastomer” should be construed
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`according to the ordinary meaning as “a polymer with elastic properties resembling
`
`those of natural rubber.” (XLNX-2011.)
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`The claim further recites “the interposer electrically coupling a first micro-
`
`bump in a first position in the array of micro-bumps to a first landing pad located
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`opposite to the first position and to a second landing pad in the array of landing
`
`pads.” This claim element is supported in the originally filed specification at least
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`by Figs. 8-14 and 24 (XLNX-2001 at 378—381 and 387), and at least at llll 81-91
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`and 111] 127-138 (XLNX—2001 at 342-345 and 356-361).
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`Claim 15 is supported in the originally filed specification at least by Figs.
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`13-14 and 24 (XLNX-2001 at 381 and 387), as well as original Claim 2.
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`Claim 16 is supported in the originally filed specification at least elements
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`by elements 1016 and 1024 ofFigs. 10-14 (XLNX-2001 at 379-381), as well as
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`Patent Owner’s Second Substitute Motion to Amend
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`IPR2012-00018
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`original Claim 3.
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`Claim 17 is supported in the originally filed specification at least by Figs.
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`10-14 (XLNX—2001 at 379-381), as well as original Claim 4.
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`Claim 18 is supported in the originally filed specification at least by Figs.
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`10-14 (XLNX-2001 at 379-381), as well as original Claim 5.
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`Claim 19 is supported in the originally filed specification at least by 11 146
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`(XLNX-2001 at 362-363), as well as original Claim 6.
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`Claim 20 is supported in the originally filed specification at least by element
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`1052 ofFig. l4 (XLNX-2001 at 381) and at least at fl 101 (XLNX-2001 at 348), as
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`well as original Claim 7.
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`Claim 21 is supported in the originally filed specification at least by element
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`1030 of Figs. 13-14 (XLNX-2001 at 381) and at least at 11 99 (XLNX-2001 at 348),
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`as well as original Claim 8.
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`Claim 22 recites “an integrated circuit die having an array of micro-bumps
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`disposed on a surface of the integrated circuit die in a first pattern.” This claim
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`element is supported in the originally filed specification at least by Figs. 10—14 and
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`24 (XLNX-2001 at 379-381 and 387), and at least at W 89—92 and 1111 127-138
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`(XLNX-2001 at 344—345 and 356-361), as well as original Claim 12.
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`The claim further recites “an integrated circuit package having an array of
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`landing pads disposed on an inside surface of the integrated circuit package in a
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`_10_
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`Patent Owner’s Second Substitute Motion to Amend
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`IPR2012-00018
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`second pattern and an array of solder balls disposed on an outside surface of the
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`integrated circuit package” This claim element is supported in the originally filed
`
`specification at least by Figs. 10—14 and 24 (XLNX-2001 at 379-381 and 387), and
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`at least at W 89—92 and M 127-138 (XLNX-2001 at 344-345 and 356—361).
`
`The claim further recites that “the first pattern and the second pattern are
`
`substantially identical patterns.” This claim element is supported in the originally
`
`filed specification at least by Figs. 10-14 and 24 (XLNX-2001 at 379-381 and
`
`387), and at least at W 89-92 and W 127-138 (XLNX-2001 at 344-345 and 356-
`
`361), as well as original Claim 12.
`
`The claim further recites “means for electrically coupling a first micro-bump
`
`in a first position in the array of micro-bumps to a first landing pad disposed
`
`opposite the first position and to a second landing pad located in a different
`
`position in the array of landing pads.” This limitation recites a means-plus—fiinction
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`limitation under 35 U.S.C. § 112, sixth paragraph. The function is “electrically
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`coupling a first micro-bump in a first position in the array of micro-bumps to a first
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`landing pad disposed opposite the first position and to a second landing pad located
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`in a different position in the array of landing pads” and the corresponding structure
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`is a plurality of caposers 1018 and 1082 in the side by side tiled arrangement of
`
`Figure 8. This claim element is supported in the originally filed specification at
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`least by Figs. 8-14 and 24 (XLNX-2001 at 378-381 and 387), and at least at W 81-
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`-11_
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`IPR2012-00018
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`Patent Owner’s Second Substitute Motion to Amend
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`91 and 111] 127-138 (XLNX—ZOOI at 342-345 and 356-361).
`
`The claim further recites “the means comprising a plurality of tiled
`
`interposing structures electrically coupling the array of landing pads and the array
`
`of solder balls.” This claim element is supported in the originally filed
`
`specification at least by Figs. 8-14 and 24 (XLNX-ZOOl at 378—381 and 387), and
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`at least at W 81-91 and M 127-138 (XLNX-ZOOl at 342-345 and 356-361).
`
`The claim further recites “the means including the plurality of tiled
`
`interposing structures being disposed inside the integrated circuit package between
`
`the integrated circuit die and the inside surface of the integrated circuit package.”
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`This claim element is supported in the originally filed specification at least by Figs.
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`8-14 and 24 (XLNX-ZOOI at 378-381 and 387), and at least at W 81-91 and 111]
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`127-138 (XLNX-2001 at 342-345 and 356-361). (Neikirk, XLNX-ZOOS, W 27-28.)
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`Pursuant to Idle Free ’s requirement for a construction of new claim terms,
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`Patent Owner submits that new claim term “plurality of tiled interposing
`
`structures” should be construed as “a regular pattern of side by side interposing
`
`structures.” (Neikirk, XLNX-2008, 1] 13.)
`
`The claim further recites “the plurality of tiled interposing structures being
`
`held together using an elastomer.” This claim element is supported in the originally
`
`filed specification at least at fl 82 (XLNX-ZOOI at 342).
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`_12_
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`Patent Owner’s Second Substitute Motion to Amend
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`IPR2012-00018
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`Pursuant to Idle Free ’5 requirement for a construction of new claim terms,
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`Patent Owner submits that new claim term “elastomer” should be construed
`
`according to the ordinary meaning as “a polymer with elastic properties resembling
`
`those of natural rubber.” (XLNX-2011.)
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`Claim 23 is supported in the originally filed specification at least at 1] 88
`
`(XLNX—200l at 344), as well as original Claim 13.
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`Claim 24 is supported in the originally filed specification at least by Figs.
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`10-14 and 24 (XLNX-2001 at 379-381 and 387), as well as original Claim 14.
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`Claim 25 is supported in the originally filed specification at least by Figs.
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`10-14 and 24 (XLNX-2001 at 379-381 and 387) and at least at fil 96 and 1ll47
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`(XLNX-2001 at 346-347 and 363), as well as original Claim 15.
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`Claim 26 is supported in the originally filed specification at least at 1i 134
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`(XLNX—2001 at 359), as well as original Claim 16.
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`III. Claims 14-26 are Patentably Distinct Over the Art
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`In Idle Free, the Board stated that “[fjor each proposed substitute claim, we
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`expect the patent owner: (1) in all circumstances, to make a showing of patentable
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`distinction over the prior art; (2) in certain circumstances, to make a showing of
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`patentable distinction over all other proposed substituted claims for the same
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`challenged claim; and (3) in certain circumstances to make a showing of patentable
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`distinction over a substitute claim for another challenged claim.” Idle Free at 6-7.
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`-13-
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`Patent Owner’s Second Substitute Motion to Amend
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`IPR2012-00018
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`In connection with scenario (1), Patent Owner provides the expert
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`declaration of Mr. Neikirk (XLNX-2008) and submits that Claims 14-26 are
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`patentably distinct over both the prior art of record and the prior art known to
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`Patent Owner. Regarding scenario (2), Patent Owner submits that this scenario
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`does not apply as the present motion requests a one-for-one claim substitution.
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`With respect to scenario (3), Patent Owner submits that this scenario does not
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`apply because only proposed substitute independent claims 14 and 22 have been
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`amended substantively.
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`A.
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`Closest Prior Art
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`Idle Free requires that “[s]ome representation should be made about the
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`specific technical disclosure of the of the closest prior art known to the patent
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`owner; and not just a conclusory remark that no prior art known to the patent
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`owner renders obvious the proposed substitute claims.” Idle Free at 7. In the
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`present proceeding, the Patent Owner is not aware of any circuit die assembly prior
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`art that discloses an interposer comprising “a plurality of tiled interposing
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`structures,” nor is the Patent Owner aware of any circuit die assembly prior art that
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`discloses a “plurality of tiled interposing structures being held together using an
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`elastomer.” The closest prior art of which the Patent Owner is aware is contained
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`in the prior art of record, namely US Patent No. 6,970,362 (“Chakravorty ’362”);
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`US. Patent No. 6,730,540 (“Siniaguine”); and US 6,423,570 (“Ma”). Provided
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`_14_
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`Patent Owner’s Second Substitute Motion to Amend
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`IPR2012-00018
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`below is a discussion of technical facts and reasoning, supported by declaration
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`testimony, that show patentable distinction of the substitute claims over these
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`references.
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`B.
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`Patentable Distinction Over Chakravorty and Siniaguine
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`Grounds 6 and 7 are obviousness rejections that rely on Chakravorty ’362 as
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`a primary reference and Siniaguine as a secondary reference.
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`Claims 14 and 22 are patentably distinct over Chakravorty ’362, Siniaguine
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`and the other obviousness references. (See Neikirk, XLNX-2008, 11 30.) Petitioner
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`IVM cited Chakravorty ’362’5 Fig. 3 and its interposer 310 as teaching the
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`interposing structure of Claim 1. Claims 14 and 22 recite a “plurality of tiled
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`interposing structures.” Chakravorty ’362 teaches using only a single interposer to
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`mount an integrated circuit die to a substrate. (See IVM-1007 at Fig. 3.) There is
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`no teaching or suggestion in Chakravorty ’362 of using more than one interposing
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`structure. (Neikirk, XLNX-2008, W 18-19.) And while Siniaguine teaches that
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`“several interposers are provided, with different parts of a clock distribution
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`network on different interposers,” there is no express teaching in Siniaguine
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`regarding the orientation of the several interposers or whether they are even used
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`with the same integrated circuit die. (See IVM-1004 at 2:59-61; 4:55-58; Neikirk,
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`XLNX-2008, 11 20.) At best, Siniaguine teaches that “multiple circuits 310 can be
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`bonded side by side to the top surface of interposer 320.” (See IVM-1004 at 4:54-
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`_15_
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`Patent Owner’s Second Substitute Motion to Amend
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`IPR2012-00018
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`55; Fig. 3; Neikirk, XLNX-2008, W 21-22.) Thus, Siniaguine does not remedy the
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`deficiencies of Chakravorty ’362.
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`The ’960 Patent describes potential drawbacks to packaging an integrated
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`circuit using a single interposing structure, such as physical stress induced by
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`differing thermal coefficients of expansion. (See IVM-1001 at 9:40—67; Neikirk,
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`XLNX-2008, 1] 23.) The prior art of Grounds 6 and 7 do not discuss, or even
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`appear to be aware of the need to reduce thermal stresses between the integrated
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`circuit die, interposer, and integrated circuit package. (See, e. g., IVM-1004 at
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`6:21-48 (recognizing thermal stress only in the context of metal layers in a trench);
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`Neikirk, XLNX-2008, fil 24.) Additionally, one of ordinary skill in the art would
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`not have been motivated to adopt a plurality of tiled interposing structures due to
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`the added manufacturing steps and the issues associated with aligning each of the
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`tiled interposing structures. (See Neikirk, XLNX-2008, W 25-26.) The references
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`do not teach or suggest the inventive solution of using a “plurality of tiled
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`interposing structures.” (See Neikirk, XLNX-2008, 1] 30.) The remaining prior art
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`of record also fails to disclose such structures. Further, Patent Owner is not aware
`
`of any circuit die assembly prior art that discloses an interposer comprising “a
`
`plurality of tiled interposing structures.”
`
`Claims 14 and 22 further recite “the plurality of tiled interposing structures
`
`being held together using an elastomer.” The ’960 Patent notes that using an
`
`—l6—-
`
`
`
`Patent Owner’s Second Substitute Motion to Amend
`
`IPR2012-00018
`
`elastomer as claimed is important because it provides the benefit of reducing
`
`mechanical stress from thermal expansion and/or compression.
`
`[0082] In one embodiment, an elastomer is used to hold the
`
`tiles together, thus forming the single interposer device. The
`
`elastomer also serves to absorb mechanical stresses from
`
`thermal expansion and/or contraction. (XLNX-2001 at 342)
`
`As noted above, the prior art of record does not disclose the claimed
`
`“plurality of tiled interposing structures.” Consequently, it cannot be argued that
`
`the prior art of record discloses that tiled interposing structures are “held together
`
`using an elastomer.” Further, Patent Owner is not aware of any circuit die
`
`assembly prior art that discloses holding together a plurality of tiled interposer
`
`structures using an elastomer. For at least these reasons, Patent Owner submits
`
`that Claims 14 and 22 are patentably distinct over the prior art.
`
`Claims 15-21 and 23—26 depend from independent Claims 14 or 22 and are
`
`distinguished over the prior art for at least that reason.
`
`C.
`
`Patentable Distinction Over Chakrovorty, Siniaguine, and Ma
`
`Grounds 8 and 9 are obviousness rejections that rely on Siniaguine as a
`
`primary reference and Ma and Chakravorty ’362 as secondary references.
`
`Petitioner IVM cited Siniaguine’s integrated circuit 320 as teaching the
`
`interposing structure of claim 1. Petitioner IVM also cited Chakravorty ’362’s
`
`-17_
`
`
`
`Patent Owner’s Second Substitute Motion to Amend
`
`IPR2012-00018
`
`interposer 310 as further teaching of the claimed interposing structure. (See
`
`Petition at 42.)
`
`Claims 14 and 22 recite a “plurality of tiled interposing structures.” For the
`
`reasons discussed above with respect to Grounds 6 and 7, neither Siniaguine nor
`
`Chakravorty ’362 teach or suggest using a plurality of tiled interposing structures
`
`between a single integrated circuit die and a single integrated circuit package. Ma
`
`is not able to remedy the deficiencies of Siniaguine and Chakravorty ’362 as Ma
`
`teaches only a single interposing structure. (See IVM-1008 at Figs. 1, 18; Neikirk,
`
`XLNX-2008,1l 18.)
`
`As noted above regarding Grounds 6 and 7, Siniaguine and Chakravorty
`
`’362 do not even acknowledge awareness of the potential drawbacks to using a
`
`single interposing structure. Similarly, Ma only recognizes thermal stress issues
`
`in the context of heat sinks. (See lVM-1008 at 6:35-45; Neikirk, XLNX-2008, 11
`
`24.) Accordingly, the prior art references do not teach or suggest the inventive
`
`solution of employing a “plurality of tiled interposing structures” as recited in
`
`proposed Claims 14 and 22. The remaining prior art of record also fails to disclose
`
`such structures. Further, Patent Owner is not aware of any circuit die assembly
`
`prior art that discloses an interposer comprising “a plurality of tiled interposing
`
`structures.”
`
`Claims 14 and 22 further recite “the plurality of tiled interposing structures
`
`—18—
`
`
`
`Patent Owner’s Second Substitute Motion to Amend
`
`IPR2012-00018
`
`being held together using an elastomer.” As noted above, the prior art of record
`
`does not disclose the claimed “plurality of tiled interposing structures” and
`
`consequently it cannot be argued that the prior art of record discloses that tiled
`
`interposing structures are “held together using an elastomer.” Further, Patent
`
`Owner is not aware of any circuit die assembly prior art that discloses holding
`
`together a plurality of tiled interposer structures using an elastomer. For at least
`
`these reasons, Patent Owner submits that Claims 14 and 22 are patentably distinct
`
`over the prior art.
`
`Claims 15-21 and 23-26 depend from independent Claims 14 or 22 and are
`
`distinguished over the prior art for at least that reason.
`
`Therefore, Patent Owner submits that Claims 14-26 are patentably distinct
`
`from the prior art because of the recited claim limitations of “a plurality of tiled
`
`interposing structures... held together using an elastomer.” (See also paragraph 30
`
`of Mr. Neikirk XLNX—2008, which states that “[i]t is my opinion that a person of
`
`ordinary skill in the art, after reviewing Siniaguine, Chakravorty ’362, Ma and
`
`Patel would not find proposed claims 14 and 22 obvious over any combination of
`
`Siniaguine, Chakravorty, Ma, and Patel”)
`
`IV. Conclusion
`
`The proposed amendments represent a reasonable number of substitute
`
`claims, are fully supported by the specification of the ’960 Patent, do not broaden
`
`_19_
`
`
`
`Patent Owner’s Second Substitute Motion to Amend
`
`IPR2012—0001 8
`
`the scope of the ’960 Patent, are responsive to the grounds in the petition, and
`
`obviate the grounds of rejection that led to this trial. Accordingly, if it is
`
`determined that Claim 1 is unpatentable, the Board should grant this motion and
`
`find Claims 14-21 patentable, and similarly if it is determined that Claim 9 is
`
`unpatentable, the Board should grant this motion and find Claims 22-26 patentable.
`
`Xilinx thanks the Board for granting a five page extension for this motion
`
`(Paper 20 at 2) and for granting Xilinx’s request to file a second substitute motion
`
`to amend for the purpose of complying with the Idle Free decision (Paper 24 at 2.)
`
`Respectfully submitted,
`
`. %:1\LN\QA
`
`David L. McCombs
`
`Registration No. 32,271
`HAYNES AND BOONE, LLP
`
`Customer No. 27683
`
`Telephone: 214/651-5116
`Facsimile: 214/200-0808
`Attorney Docket No.: 42299.44
`
`Dated: July 26, 2013
`R_329446_5
`
`_20__
`
`
`
`IPR2012-00018
`
`Intellectual Ventures Management, LLC v. Xilinx, Inc.
`
`Xilinx’s Exhibit List
`
`July 26, 2013
`
`XLNX-2001
`
`File History of US7566960
`
`XLNX-2002
`
`Tom Ewing & Robin Feldman, “The Giants Among Us,” 2012
`
`STAN. TECH. L. REV. l.
`
`XLNX-2003
`
`Docket from Xilinx, Inc. v. Invention Investment Fund I LP, Case
`
`No. 5-11-cv-00671 (ND. Cal.).
`
`XLNX-2004
`
`Declaration of Bradford J. Black, Xilinx, Inc. v. Invention
`
`Investment Fund I LP, Case No. 5-11-cv—00671, Dkt. 45-2 (N.D.
`
`Cal. Apr. 14, 2011).
`
`XLNX-2005
`
`Defendant’s [IVM’s] Certificate of Interested Entities or Persons
`
`Pursuant to Civil Local Rule 3-16 and F.R.C.P. 7.1, Case No. 5-
`
`11-cv-00671, Dkt. 60 (ND. Cal. May 16, 2011).
`
`XLNX-2006
`
`Order of Recusal, Xilinx, Inc. v. Invention Investment Fund I LP,
`
`Case No. 5—1 1-cv-00671, Dkt. 93 (ND. Cal. Mar. 14, 2012).
`
`XLNX-2007
`
`Declaration of Dean Niekirk under 37 CPR. § 1.68 (In Support
`
`of Patent Owner’s Response)
`
`XLNX-2008
`
`Declaration of Dean Niekirk under 37 C.F.R. § 1.68 (In Support
`
`of Motion to Amend)
`
`XLNX—2009
`
`Listing of Proposed Claim Amendments
`
`XLNX—2010
`
`Curriculum Vitae of Dean Niekirk
`
`XLNX-2011
`
`Webster’s II New College Dictionary, Third Edition, 2005, page
`
`359.
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`INTELLECTUAL VENTURES MANAGEMENT, LLC
`V.
`
`Patent of XILINX, INC.
`
`Case IPR2012-00018
`
`Patent 7,566,960
`
`Title: INTERPOSING STRUCTURE
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies, in accordance with 37 CPR. § 42.205, that
`
`service was made on the Petitioner as detailed below.
`
`Date ofservice July 26, 2013
`
`Manner ofservice Electronic Mail (mspecht@skgf.com; rsterne@skgf.corn)
`
`Documents served Patent Owner’s Second Substitute Motion to Amend,
`
`including Xilinx’s Exhibit List and
`
`Exhibits: XLNX-2011
`
`Persons served STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`1100 NEW YORK AVENUE, N.W.
`
`WASHINGTON DC 20005
`
`NL3\\&\
`
`David L. McCombs
`
`Registration No. 32,271
`
`
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