`
`
`
`
`
`
`
`
`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 PRELIMINARY RESPONSE
`BY XILINX UNDER 37 C.F.R. §§ 42.107
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`IPR2012-00018
`
`
`
`TABLE OF CONTENTS
`
`Introduction ................................................................................................................ 3
`
`I. Reasons Why No Inter Partes Review Should Be Instituted ............................ 5
`
`A.
`
`IVM Failed to Identify All Real Parties in Interest ....................................... 5
`
`B. No Trial Should Be Instituted for Ground 1 ................................................. 9
`
`1. Chakravorty ‘419 does not disclose an “array of landing pads
`disposed on an inside surface of the integrated circuit package” ...................... 9
`
`2. Chakravorty ’419 does not disclose “solder balls disposed on an
`outside surface” ................................................................................................12
`
`3. Chakravorty ‘419 does not disclose that “first pattern and the second
`pattern are substantially identical” ...................................................................13
`
`C. No Trial Should Be Instituted on Grounds 2-4 ...........................................15
`
`D. No Trial Should Be Instituted on Ground 5 ................................................15
`
`IVM does not identify any new teaching in Chung or Chakravorty
`1.
`’362 15
`
`2. Chung does not disclose “array of landing pads disposed on an inside
`surface of the integrated circuit package” ........................................................16
`
`E. No Trial Should Be Instituted for Ground 6 ...............................................18
`
`F. No Trial Should Be Instituted for Ground 7 ...............................................20
`
`G. No Trial Should Be Instituted for Ground 8 ...............................................20
`
`H. No Trial Should Be Instituted for Ground 9 ...............................................22
`
`II. Conclusion .......................................................................................................23
`
`Certificate of Service ...............................................................................................24
`
`
`
`
`
`
`
`
`
`–2–
`
`
`
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`IPR2012-00018
`
`Patent Owner Xilinx, Inc. (“Xilinx”) submits the following preliminary
`
`response to the Petition filed by Intellectual Ventures Management (“IVM”) on
`
`September 17, 2012 requesting inter partes review of claims 1-13 of U.S. Patent
`
`No. 7,566,960 (the “’960 Patent”). Xilinx respectfully requests that the Board
`
`decline to institute inter partes review of the ’960 patent.
`
`INTRODUCTION
`
`In October 2003, Inventor Robert O. Conn filed a patent application on a
`
`new way to effectively provide power to high speed integrated circuit devices.
`
`(’960 Patent, IVM 1001.). The Conn invention addressed a well-known problem
`
`stemming from advances in semiconductor manufacturing that allowed integrated
`
`circuit devices to reach switching frequencies in the hundreds of megahertz. These
`
`high frequencies introduced detrimental noise into the power leads of integrated
`
`circuitry. While it was known to reduce noise on the power leads with a
`
`decoupling capacitor, the wiring between the integrated circuit and the capacitor
`
`could itself produce unacceptable levels of parasitic inductance at high switching
`
`speeds. To address this problem, Inventor Conn positioned the capacitor closer to
`
`the integrated circuit, minimizing the length of wiring between them and the
`
`associated parasitic inductance. Specifically, Conn found that a capacitive element
`
`could be packaged with the integrated circuit die, inside the encapsulating package.
`
`
`
`–3–
`
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`IPR2012-00018
`
`Conn devised various embodiments of this technology, including some that
`
`provide a wafer-thin capacitive interposer, or caposer, suitable for placement
`
`between an integrated circuit die and its surrounding packaging. In addition to
`
`solving Conn’s original challenge, the inventive structure provided other benefits.
`
`For example, the caposer could be tailored so that the resulting packaged circuit is
`
`tailored to a specific application by matching the die circuitry to the characteristic
`
`impedance of a printed circuit board. Thus, the performance of an integrated
`
`circuit could be customized without requiring any redesign of the circuitry itself.
`
`The US Patent Office granted U.S. Patent No. 7,566,960 to Inventor Conn for this
`
`innovative technology in 2009. The ’960 Patent is now assigned to Xilinx, Inc.
`
`Although IVM has no interest in the subject matter of the ’960 patent, it has
`
`nevertheless requested inter partes review based on several prior art references,
`
`many of which were already considered during prosecution. These references fail
`
`to teach all of the elements of the ’960 patent, especially the requirements relating
`
`to placing certain components inside the encapsulating ceramic package. This is
`
`clear from the face of the Petition, which makes assertions about the “inside” claim
`
`limitations that the prior art references do not support. Thus Board should deny the
`
`Petition Inter Partes Review because it fails to show a reasonable likelihood that
`
`any claim of the ’960 patent is unpatentable.
`
`
`
`–4–
`
`
`
`
`
`
`
`I.
`
`
`
`Patent Owner’s Preliminary Response
`IPR2012-00018
`
`Reasons Why No Inter Partes Review Should Be Instituted
`A.
`
`IVM Failed to Identify All Real Parties in Interest
`
`Before turning to the merits, IVM’s Petition should be denied because it fails
`
`to identify all of the real parties in interest as required by 37 C.F.R. § 42.8(b)(1).
`
`The requirement to disclose the real parties-in-interest serves the dual purpose of
`
`“assisting courts in identifying potential conflicts and to assure proper application
`
`of the statutory estoppel provisions.”1 IVM’s decision to identify itself as the sole
`
`real party in interest frustrates both of these purposes.
`
`It is well-known that IVM is part of a complex web of companies with a
`
`“penchant for secrecy.”2 Those who of have attempted to understand IVM’s
`
`financial interests have located over 1200 related entities.3 IVM is also known to
`
`have a variety of “investors,” although the nature of these relationships varies
`
`widely. While some investors may have a purely financial stake in IVM and its
`
`associated shell companies, other companies are believed to have patent licensing
`
`arrangements with IVM.4 Additionally, IVM provides patents to companies
`
`
`1 Patent Trial Practice Guide § I.D.1.
`
`2 Tom Ewing & Robin Feldman, “The Giants Among Us,” 2012 STAN. TECH. L.
`
`REV. 1, ¶ 14, n. 6 (XLNX-2002).
`
`3 Id., ¶ 25.
`
`4 Id., ¶ 47.
`
`
`
`–5–
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`IPR2012-00018
`engaged in litigation through a program termed “IP for Defense.”5 Thus, the
`
`
`
`known range of IVM “investor” relationships is quite broad, and coupled with
`
`IVM’s acknowledged “penchant for secrecy,” the true and complete range of
`
`relationships is likely even broader.
`
`The little information that is publicly available about IVM’s financial and
`
`management structure merely raises more concerns about the inadequacy of its
`
`real-party-in-interest disclosure. In litigation, IVM has been reluctant to identify
`
`the individuals who owned and controlled it—even pursing a Motion to Seal rather
`
`than allow an opponent’s general counsel to review IVM’s list of interested
`
`parties.6 Yet when IVM and certain associated entities eventually revealed their
`
`5 Id., ¶¶ 49-50.
`
`6 IVM’s motion was itself sealed and is not publicly available. See XLNX-2003 at
`
`15, Xilinx, Inc. v. Invention Investment Fund I LP, Case No. 5-11-cv-00671, Dkt.
`
`45 [Administrative Motion to File Under Seal Defendants' Certificate of Interested
`
`Entities or Persons Pursuant to Civil Local Rule 3-16 and F.R.C.P. 7.1] (N.D. Cal.
`
`Apr. 12, 2011). However, the declaration of IVM’s counsel is available and shows
`
`that IVM pursued its motion when Xilinx insisted that its general counsel should
`
`be allowed to see IVM’s list of interested parties. See XLNX-2004 at 2,
`
`Declaration of Bradford J. Black, Xilinx v. Invention Investment, Case No. 5-11-cv-
`
`00671, Dkt. 45-2 (N.D. Cal. Apr. 14, 2011).
`
`
`
`–6–
`
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`IPR2012-00018
`
`owners, the federal district court judge recused herself from the case because of a
`
`potential conflict of interest.7
`
`The rule that forced IVM’s disclosure in litigation—Federal Rule of Civil
`
`Procedure 7.1— exists for the same reason as the requirement to identify the real
`
`party in interest. Specifically, it is of paramount importance that the judges on the
`
`Patent Trial and Appeal Board not be tainted by the appearance of conflict from
`
`having a financial interest in the outcome of the cases under their review:
`
`For example, ‘‘in the case of the Board, a conflict would
`
`typically arise when an official has an investment in a company
`
`with a direct interest in a Board proceeding. Such conflicts can
`
`only be avoided if the parties promptly provide information
`
`necessary to identify potential conflicts.’’ See Rules of Practice
`
`for Trials Before the Patent Trial and Appeal Board and Judicial
`
`Review of Patent Trial and Appeal Board Decisions, 77 FR
`
`48612, 48617 (Aug. 14, 2012). Like administrative patent
`
`judges at the Board, ‘‘[p]atent examiners are quasi-judicial
`
`officials.’’ Western Elec. Co., Inc. v. Piezo Tech., Inc., 860 F.2d
`
`428, 431 (Fed. Cir. 1988) (citing Butterworth v. United States
`
`ex rel. Hoe, 112 U.S. 50, 67 (1884)). Accordingly, a clear
`
`identification of the real-party-in- interest is important to ensure
`
`that officials are able to recuse themselves in view of any
`
`
`7 XLNX-2006, Xilinx, Inc. v. Invention Investment Fund I LP, Case No. 5-11-cv-
`
`00671, Dkt. 93 (N.D. Cal. Mar. 14, 2012).
`
`
`
`–7–
`
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`IPR2012-00018
`
`conflict-of-interest apparent from the disclosure. In addition,
`
`‘‘[t]he identity of a real party in interest might also affect the
`
`credibility of evidence presented in a proceeding.’’ 77 FR at
`
`48617.8
`
`
`
`Reviewing IVM’s Rule 7.1 Certificate of Interest Entities (XLNX-2005)
`
`further confirms that IVM is not the only real party in interest in this proceeding.
`
`In total, 63 entities are listed as have an interest in IVM or one of its associated
`
`defendants. Several entities are listed as having a “non-financial interest in the
`
`outcome of the litigation.” Other entities have a “Financial and non-financial
`
`interest” in IVM itself. There is no explanation of the nature of these “financial”
`
`and “non-financial” interests. Nor is there any explanation of the relationships
`
`between and among IVM and various other, similarly named entities (all joined
`
`together as defendants) such as “Intellectual Ventures LLC,” “Intellectual Ventures
`
`I LLC,” and “Invention Investment Fund I LP.” All of these IVM-related entities
`
`(and IVM itself) share all of their counsel—and have no separate counsel—
`
`suggesting that their interests are fully aligned.
`
`
`8 Notice of Roundtable on Proposed Requirements for Recordation of Real-Party-
`
`in-Interest Information Throughout Application Pendency and Patent Term, 77
`
`FED. REG. 70385, 70386-87 (Nov. 26, 2012).
`
`
`
`–8–
`
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`IPR2012-00018
`
`IVM failed to disclose even the investors that it has already revealed in its
`
`Certificate of Interest Entities (XLNX-2005), who are fairly seen as “real parties in
`
`interest” in this matter. In fairness to the Board and to Xilinx, the Petition should
`
`be denied or dismissed for non-compliance with 37 C.F.R. § 42.8(b)(1).
`
`B. No Trial Should Be Instituted for Ground 1
`
`Ground 1 of IVM’s Petition asserts that Claims 1, 2, 9, and 10 are
`
`anticipated by U.S. Patent No. 6,611,419 to Chakravorty (“Chakravorty ’419”).
`
`The Board should decline to institute inter partes review on this Ground because
`
`IVM’s petition fails to show that Chakravorty ’419 satisfies all of the claim
`
`elements of the ’960 patent, as shown below.
`
`1.
`Chakravorty ‘419 does not disclose an “array of landing
`pads disposed on an inside surface of the integrated circuit
`package”
`
`The primary element missing from Chakravorty ’419 is the requirement of
`
`landing pads “on an inside surface of the integrated circuit package” as required by
`
`independent claims 1 and 9 of the ’960 patent. IVM’s Petition contends that
`
`Chakravorty ’419 discloses the “inside surface” limitation in the figure below, and
`
`specifically conductive areas 334, 339, and 319 on the upper surface of substrate
`
`320 (in FIG. 3 below) to disclose this limitation. (Petition at 7.)
`
`
`
`–9–
`
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`IPR2012-00018
`
`
`
`This figure fails to disclose landing pads “inside surface of the integrated circuit
`
`package.” Instead, it shows landing pads on the substrate, which is different than
`
`the packaging because the substrate does not completely surround the integrated
`
`circuit.
`
`The distinction between pads inside the packaging vs. on some other surface
`
`is illustrated by the prosecution history. During prosecution, the examiner asked
`
`the applicant to clarify “what is meant by and what shows the interposing structure
`
`disposed inside the integrated circuit package between the integrated circuit die
`
`and the inside surface of the integrated circuit package.” (XLNX-2001 at 38, ’960
`
`File History, Office Action of Sept. 2, 2008 at 2 (emphasis in original).) In
`
`
`
`–10–
`
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`IPR2012-00018
`
`response, the Applicant explained that “inside” means that the integrated circuit
`
`package completely surrounds the integrated circuit die:
`
`The Applicant refers the Examiner to FIG. 10, which shows a
`die 1011 inside a package 1012. The package 1012 completely
`surrounds the die 1011, and hence the die 1011 is inside the
`package 1012. Further Applicant's specification states "[a]n
`integrated circuit die 1011 is mounted within an integrated
`circuit package 1012." (Applicant's specification, para. 0089).
`
`(XLNX-2001 at 31, ’960 File History, Response at 6 (Nov. 25, 2008).)
`
`The placement of the die inside the packaging is also illustrated by
`
`Figure 10 of the ’960 patent, which shows that the integrated circuit
`
`package completely surrounds the die.
`
`Fig. 10 of the ’960 Patent
`
`
`
`
`
`IVM’s petition ignores this figure and the prosecution history that explain
`
`that the landing pads must be inside the packaging. Moreover, IVM’s Petition fails
`
`to provide any reasoning or basis for the tacit assertion that substrate 320
`
`completely surrounds the die 300. Indeed, Chakravorty’s selection of the word
`
`
`
`–11–
`
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`IPR2012-00018
`
`“substrate” would suggest that item 320 is a flat surface, not a structure that
`
`completely encloses die 300. Chakravorty repeatedly discusses packaging an
`
`integrated circuit on a substrate. (See, e.g., Chakravorty ’419 (IVM 1003), 1:40,
`
`1:66-67, 2:15.) And Chakravorty ’419 refers to the “top” and “bottom” of
`
`substrate 320, not to the inside or outside. (See, e.g., id. 6:1-2.) The Petition failed
`
`to identify—and the Patent Owner cannot find—any discussion in Chakravorty
`
`’419 of enclosing die 300 inside substrate 320.
`
`Because Chakravorty ’419 does not teach landing pads “on an inside surface
`
`of the integrated circuit package,” it cannot anticipate the claims of the ’960 patent
`
`and thus no inter partes review is necessary.
`
`2.
`Chakravorty ’419 does not disclose “solder balls disposed
`on an outside surface”
`
`IVM also contends that Chakravorty ’419 discloses “an array of solder balls
`
`disposed on an outside surface of the integrated circuit package.” (Petition at 7-8,
`
`10.) IVM argues that because Chakravorty ’419 discloses that “[s]ubstrate 320
`
`can be similar to substrate 310, optionally having an IC die (not shown) on the
`
`opposite surface thereof, or it can be a printed circuit board (PCB) or other type
`
`of substrate” that Chakravorty ’419 discloses this limitation. (Petition at 8 citing
`
`Chakravorty ’419 (IVM 1003) at 4:63-66 (emphasis in Petition).) As discussed
`
`above, Chakravorty ’419 fails to disclose an inside surface and similarly fails to
`
`disclose an outside surface for substrate 320. In addition, Chakravorty ’419 fails to
`
`
`
`–12–
`
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`IPR2012-00018
`
`explain how this second die would be disposed “on the opposite surface thereof,”
`
`and IVM provided no evidence that a second die would necessarily be attached
`
`using solder balls, as required for an argument based on inherency.
`
`Acknowledging the weakness of Chakravorty ’419, IVM improperly argues
`
`that it would be “obvious to dispose solder balls on an outside surface of substrate
`
`320.” (Petition at 8.) Even if this were obvious, a contention that Xilinx does not
`
`concede, a bare allegation of obviousness fails to satisfy the requirements for
`
`anticipation as asserted by IVM as the statutory basis for Ground 1. (See 37 C.F.R.
`
`§ 104(b) (“the petition must set forth . . . (h)ow the construed claim is unpatentable
`
`under the statutory ground identified in the paragraph (b)(2) of this section”, i.e.,
`
`“[t]he specific statutory grounds under 35 U.S.C. 102 or 103 on which the
`
`challenge to the claim is based”).)
`
`In summary, the Petition fails to provide any evidence that Chakravorty
`
`teaches—whether expressly or inherently— “solder balls disposed on an outside
`
`surface” as recited in claims 1 and 9. With no credible argument as to this
`
`limitation, the Petition fails to demonstrate a reasonable likelihood that the claims
`
`are unpatentable, and therefore no trial should be ordered as to Ground 1.
`
`3.
`Chakravorty ‘419 does not disclose that “first pattern and
`the second pattern are substantially identical”
`
`Chakravorty also fails to disclose the “wherein the first pattern and the
`
`second pattern are substantially identical patterns” limitation of independent claims
`
`
`
`–13–
`
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`IPR2012-00018
`
`1 and 9. IVM argues that Figure 3 of Chakravorty ’419 discloses this limitation
`
`becauase “solder balls 308 are aligned with leads or conductive areas 319 and 339”
`
`that Chakravorty ’419 discloses this limitation. (Petition at 8.) Figure 3 does not
`
`support IVM’s assertion.
`
`An annotated version of FIG. 3 of Chakravorty ’419 (included below)
`
`demonstrates that the pattern of solder balls below die 300 and leads or conductive
`
`areas on substrate 320 are not substantially identical. For example, leads or
`
`conductive areas 334 at the left and right ends of FIG. 3 do not align. Further,
`
`there is an extra solder ball below the die 300 that has no corresponding lead or
`
`conductive area and there is an extra lead or conductive area with no corresponding
`
`solder ball. Two patterns in which less than half of the pattern elements align
`
`cannot be “substantially identical” under any reasonable construction.
`
`FIG. 3 of Chakravorty ’419 (IVM 1003) (Annotated)
`
`
`
`–14–
`
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`IPR2012-00018
`
`Because the two patterns of Chakravorty ’419 are not substantially identical,
`
`IVM has failed to demonstrate a reasonable likelihood that any claim is
`
`unpatenable. No trial should be ordered as to Ground 1.
`
`C. No Trial Should Be Instituted on Grounds 2-4
`
`Grounds 2, 3 and 4 rely on its disclosures presented in Ground 1 of the
`
`Petition without providing any teachings that would cure the defects noted above.
`
`(Petition at 12-17.) Thus, for the reasons identified above for Ground 1, no trial
`
`should be ordered as to Grounds 2-4 either.
`
`D. No Trial Should Be Instituted on Ground 5
`
`Ground 5 of IVMs petition asserts that Claims 1-13 are obvious under 35
`
`U.S.C. § 103 based on U.S. Patent No. 6,680,218 to Chung et al. (“Chung”) and
`
`U.S. Patent No. 6,970,362 to Chakravorty (“Chakravorty ’362”). The Board
`
`should decline to institute review on this Ground because IVM fails to identify any
`
`teaching in these references for several limitations in independent claims 1 and 9.
`
`1.
`IVM does not identify any new teaching in Chung or
`Chakravorty ’362
`
`As a preliminary matter, both Chung and Chakravorty ’362 formed the basis
`
`of rejections under 35 U.S.C. § 102 during prosecution. (See XLNX-2001 at 103,
`
`’960 File History, Office Action of Sept. 20, 2007; id. at 130, Office Action of Jan.
`
`8, 2007.) These rejections were successfully traversed by Xilinx. (See XLNX-
`
`2001 at 90, Response of Dec. 12, 2007; id. at 121, Response of Apr. 6, 2007.) The
`
`
`
`–15–
`
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`IPR2012-00018
`
`Petition does not identify any new teaching of these references which was
`
`inadvertently overlooked by the Examiner during the original prosecution of the
`
`’960 Patent. Since the Patent Office has already thoroughly reviewed the issued
`
`claims in view of these prior art references, Patent owner respectfully submits that
`
`the Petition fails to demonstrate a reasonable likelihood that any claim is
`
`unpatentable over Chung and Chakravorty ’362.
`
`2.
`Chung does not disclose “array of landing pads disposed on
`an inside surface of the integrated circuit package”
`
`Ground 5 of IVM’s Petition has a similar flaw to Ground 1—it fails to show
`
`that the prior art teaches the “on an inside surface of the integrated circuit package”
`
`limitation of independent claims 1 and 9.
`
`IVM points to the “bond pads on the top surface of horizontal section 306”
`
`of Figure 5 as satisfying the “inside surface” limitation. (Petition at 19, 25) But
`
`Figure 5 shows the pads on the “top surface,” not the “inside surface” as required
`
`by the claims:
`
`
`
`–16–
`
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`IPR2012-00018
`
`FIG. 5 of Chung (IVM 1006)
`
`
`
`As shown above, Chung discloses an IC 302 and an IC package consisting
`
`of a vertical package section 304 and a horizontal package section 306. Neither
`
`package section is shown in Fig. 5 as enclosing the IC 302. Instead, the IC 302 is
`
`flip-chip mounted to the vertical section 304 using solder bumps. (Chung (IVM
`
`1006) at 3:55-4:18; FIG. 3.) Bond pads on the bottom surface of the vertical
`
`section 304 are electrically connected to bond pads on the top surface of the
`
`horizontal section 306. (Id. at 5:45-55; 8:5-10.) As shown in each of the Figures
`
`in Chung, the vertical section 304 couples the solder bumps of the IC 302 to the
`
`bond pads on the horizontal section 306 in a 1-1 fashion, i.e., each solder bump on
`
`the IC is coupled to one bond pad located opposite the solder bump. IVM has not
`
`shown that Chung discloses any surrounding structure as part of horizontal
`
`
`
`–17–
`
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`IPR2012-00018
`
`package section 306 that would define whether the upper surface of horizontal
`
`package section 306 is an inside surface as required by claims 1 and 9.9
`
`Thus, IVM has not demonstrated that the combination of Chung and
`
`Chakravorty ’362 teaches, suggests, or otherwise renders obvious that the top
`
`surface of the horizontal section 306 is an inside surface of the horizontal section
`
`306. No trial should be ordered for Ground 5.
`
`E. No Trial Should Be Instituted for Ground 6
`
`IVM asserts, as Ground 6, that claims 1-5, 7-11, and 13 are obvious under
`
`35 U.S.C. § 103 based on Chakravorty ’362 and U.S. Patent No. 6,730,540 to
`
`Siniaguine. Here again, IVM fails to identify a teaching of all the limitations in
`
`independent claims 1 and 9.
`
`IVM’s petition alleges that Chakravorty ’362 discloses “an integrated circuit
`
`package having an array of landing pads disposed on an inside surface of the
`
`integrated circuit package in a second pattern.” (Petition at 29, 34.) IVM relies on
`
`solder balls 311 on the top surface of primary substrate 320 as shown in FIG. 3 of
`
`Chakravorty ’362 (included below) to disclose this limitation. (Id.) As shown in
`
`FIG. 3, Chakravorty ’362 teaches a die 300 coupled to a primary substrate 320
`
`
`9 “Capacitors 310 are mounted on bond pads (not shown) on the top surface 316 of
`
`horizontal section 306” and are not part of horizontal section 306. (See Chung
`
`(IVM 1006) at 6:28-32.)
`
`
`
`–18–
`
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`IPR2012-00018
`
`using an interposer 310. (Chakravorty ’362 (IVM 1007) at FIG. 3.) The interposer
`
`includes lands 302 and 305 coupled to solder balls 301 of the die 300, and lands
`
`312 and 315 coupled to solder balls 311 that can be affixed to conductive traces or
`
`areas on the primary substrate 320. (Id. at 5:30-60.)
`
`FIG. 3 of Chakravorty ’362 (IVM 1007)
`
`IVM has not shown that Chakravorty ’362 discloses any surrounding
`
`
`
`structure as part of primary substrate 320 that would define whether the upper
`
`surface of primary substrate 320 is an inside surface as required by claims 1 and 9.
`
`IVM’s Petition does not rely on Siniaguine to teach the “inside surface” limitation
`
`for this ground. Thus, IVM has not demonstrated that the combination of
`
`
`
`–19–
`
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`IPR2012-00018
`
`Chakravorty ’362 and Siniaguine discloses, suggests, or otherwise renders obvious
`
`“an array of landing pads disposed on an inside surface of the integrated circuit
`
`package” as recited in independent claims 1 and 9. No trial should be ordered for
`
`Ground 6.
`
`F. No Trial Should Be Instituted for Ground 7
`
`As a foundational basis for Ground 7 of the Petition, IVM relies on its
`
`disclosures presented in Ground 6 of the Petition without providing any teachings
`
`that would cure the defects noted above for Ground 6. (Petition at 36-37.)
`
`Because of this reliance, IVM fails to demonstrate a reasonable likelihood that any
`
`claim is unpatentable. No trial may be ordered as to Ground 7.
`
`G. No Trial Should Be Instituted for Ground 8
`
`For Ground 8, IVM asserts that claims 1-5, 7-11, and 13 are obvious under
`
`35 U.S.C. § 103 based on Siniaguine, U.S. Patent No. 6,423,570 to Ma (“Ma”),
`
`and Chakravorty ’362. However, IVM fails to identify a teaching of all the
`
`limitations in independent claims 1 and 9.
`
`IVM alleges that Siniaguine discloses “an integrated circuit package having
`
`an array of landing pads disposed on an inside surface of the integrated circuit
`
`package in a second pattern.” (Petition at 39-40, 47.) IVM relies on the pads 388
`
`as shown in FIG. 4 of Siniaguine (included below) to disclose this limitation. (Id.)
`
`
`
`–20–
`
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`IPR2012-00018
`
`FIG. 4 of Siniaguine (IVM 1004)
`
`Siniaguine describes “an integrated circuit 310 mounted on another
`
`
`
`integrated circuit 320 which in turn is mounted on a wiring substrate 330.”
`
`(Siniaguine (IVM 1004) at 3:39-41.) “Circuit 310 is bonded to interposer 320” by
`
`bonding contact pads 374 with pads 130 (Id. at 4:21-26.) “Contact pads 323 are
`
`bonded to pads 388 on wiring substrate 330.” (Id. at 4:36-37.)
`
`IVM has not shown that Siniaguine discloses any surrounding structure as
`
`part of wiring substrate 330 that would define whether the upper surface of wiring
`
`substrate 330 is an inside surface as required by claims 1 and 9. IVM does not rely
`
`on the other references to teach the “inside surface” limitation for this ground.
`
`Thus, IVM has not demonstrated that the combination of Siniaguine, Ma, and
`
`Chakravorty ’362 disclose, suggest, or otherwise render obvious “an array of
`
`
`
`–21–
`
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`IPR2012-00018
`
`landing pads disposed on an inside surface of the integrated circuit package” as
`
`recited in independent claims 1 and 9. Because the IVM fails to demonstrate a
`
`reasonable likelihood that any claim is unpatentable, no trial should be ordered as
`
`to Ground 8.
`
`H. No Trial Should Be Instituted for Ground 9
`
`As a foundational basis for Ground 9 of the Petition, the IVM relies on its
`
`disclosures presented in Ground 8 of the Petition without providing any teachings
`
`that would cure the defects noted above for Ground 8. (Petition at 50-51.)
`
`Because of this reliance, the IVM fails to demonstrate a reasonable likelihood that
`
`any claim is unpatentable. No trial should be ordered as to Ground 9.
`
`//
`
`//
`
`//
`
`//
`
`//
`
`//
`
`//
`
`//
`
`//
`
`//
`
`//
`
`
`
`
`
`–22–
`
`
`
`
`
`
`
`II. Conclusion
`
`
`
`Patent Owner’s Preliminary Response
`IPR2012-00018
`
`Because the IVM has failed to meet its burden and the Petition fails to
`
`demonstrate a reasonable likelihood that the IVM will prevail on any of the claims
`
`challenged in each and every Ground (Grounds 1-9), inter partes review of the
`
`’960 Patent should be denied and all the claims (claims 1-13) of the ’960 Patent
`
`should be confirmed.
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/David L. McCombs/
`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: December 18, 2012
`
`R_320382_2
`
`
`
`
`
`
`
`
`
`
`–23–
`
`
`
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`IPR2012-00018
`
`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 C.F.R. § 42.205, that
`
`service was made on the Patent Owner as detailed below.
`
`Date of service December 18, 2012
`
`Manner of service FIRST CLASS MAIL
`
`Documents served Preliminary Patent Owner Response;
`
`Xilinx’ Exhibit List; and
`
`Exhibits: XLNX-2001 through XLNX-2006
`
`Persons served STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`1100 NEW YORK AVENUE, N.W.
`
`WASHINGTON DC 20005
`
`
`
`/David L. McCombs/
`David L. McCombs
`Registration No. 32,271
`
`
`
`
`
`
`
`
`
`–24–
`
`