`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD. (TSMC) and
`SAMSUNG ELECTRONICS CO., LTD (SAMSUNG),
`Petitioners,
`
`v.
`
`DSS TECHNOLOGY MANAGEMENT, INC.
`Patent Owner.
`
`____________
`
`Case IPR2014-010301
`Patent No. 5,652,084
`
`____________
`
`PATENT OWNER DSS TECHNOLOGY, INC.’S
`RESPONSE TO PETITION
`
`
`
`
`                                                            
`1 Case IPR2014-01493 has been joined with this proceeding.
`
`

`

`Patent No. 5,652,084
`IPR2014-01030
`______________________________________________________________________________
`
` 
`
`TABLE OF CONTENTS
`
`INTRODUCTION ................................................................................................................. 1
`I.
`II. OVERVIEW OF THE INVENTION CLAIMED IN THE ‘084 PATENT AND THE
`CITED PRIOR ART .............................................................................................................. 1
`
`A. Background of the photolithographic process and equipment ...................................... 2
`
`B. Summary of the ‘084 Patent ......................................................................................... 3
`
`C. The ‘084 Patent requires two separate patterns ............................................................ 6
`
`Jinbo Addresses the Same Problem but Describes a Different Technique ................... 7
`D.
`III. CLAIM CONSTRUCTION ................................................................................................... 9
`
`A. The Claims of the ‘084 Patent are Construed According to the Legal Principles Used
`by the District Courts .................................................................................................... 9
`
`1.
`
`Second pattern ................................................................................................. 10
`
`a.
`
`The specification of the ‘084 Patent reaffirms that the first and second
`patterns are two separate individual elements and cannot be one and the
`same ...................................................................................................... 11
`
`The second pattern cannot be a duplicate of the first pattern ............... 12
`b.
`IV. PETITIONER HAS FAILED TO PROVE ANY OF THE CHALLENGED CLAIM OF
`THE ‘084 PATENT ARE UNPATENTABLE.................................................................... 19
`
`A. Challenge #1: Jinbo does not anticipate claims 1-8, 12, 15, and 16 of the ‘084 Patent
`..................................................................................................................................... 19
`
`a.
`
`b.
`
`Jinbo does not explicitly disclose a limitation of patterning the second
`imaging layer in accordance with a second pattern ........................................ 20
`
`Jinbo does not inherently disclose a “second pattern” in accordance with
`which second resist layer is patterned ............................................................. 23
`
`B. Challenge #2: Claim 9 cannot be found obvious based on Jinbo in view of McColgin
`because Jinbo does not disclose several material limitations of claim 1 from which
`claim 9 depends........................................................................................................... 25
`
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`C. Challenge #3: Claims 10 and 11 cannot be rendered obvious by Jinbo in view of
`Matthews because Jinbo does not disclose several material limitations of claim 1 from
`which claims 10 and 11 depend .................................................................................. 25
`V. CONCLUSION .................................................................................................................... 25
`
`
` 
`
` 
`
` 
`
`ii
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`
` TABLE OF AUTHORITIES
`
`
`Federal Cases
`
`3M Innovative Properties Co. v. Avery Dennison Corp.,
`
`350 F.3d 1365, 1371 (Fed. Cir. 2003)......................................................................... 12, 13
` 
`Advanced Display Sys., Inc. v. Kent State Univ.,
`
`212 F.3d 1272, 1282 (Fed. Cir. 2000)............................................................................... 20
` 
`Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc.,
`
`340 F.3d 1298, 1304 (Fed. Cir. 2003)............................................................................... 11
` 
`Ericsson, Inc. v. D-Link Systems, Inc.,
`
`773 F.3d 1201, 1224 (Fed. Cir. 2014)............................................................................... 20
` 
`Free Motion Fitness, Inc. v. Cybex Intern., Inc.,
`
`423 F.3d 1343, 1348 (Fed. Cir. 2005)............................................................................... 11
`
`Glaverbel Societe Anonyme v. Northlake Mktg. & Supply, Inc.,
`
`45 F.3d 1550, 1554 (Fed. Cir. 1995)................................................................................. 20
` 
`Glaxo Grp. Ltd. v. Apotex, Inc.,
`
`376 F.3d 1339, 1348 (Fed. Cir. 2004)............................................................................... 22
` 
`In re Montgomery,
`
`677 F.3d 1375, 1380 (Fed. Cir. 2012)............................................................................... 22
` 
`In re Robertson,
`
`169 F.3d 743, 745 (Fed. Cir. 1999)................................................................................... 23
` 
`Old Reliable Wholesale, Inc. v. Cornell Corp.,
`
`635 F.3d 539, 544-45 (Fed. Cir. 2011) ............................................................................. 20
` 
`Phillips v. AWH Corp.,
`
`415 F.3d 1303 (Fed. Cir. 2005)......................................................................... 9, 10, 11, 19
` 
`
` 
`
`iii
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`Patent No. 5,652,084
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`
` 
`Scripps Clinic & Research Found. v. Genentech, Inc.,
`
`927 F.2d 1565, 1576 (Fed. Cir. 1991)............................................................................... 20
` 
`Springs Window Fashions LP v. Novo Indus., L.P.,
`
`323 F.3d 989, 992 (Fed. Cir. 2003)................................................................................... 11
`
`Swapalease, Inc. v. Sublease Exchange.com, Inc.,
`
`2009 WL 204408, *11 (S.D. Ohio Jan 27, 2009) ............................................................. 13
` 
`Volterra Semiconductor Corp. v. Primarion, Inc.,
`
`2010 WL 653452, *5 (N.D. Cal. Feb. 22, 2010) .............................................................. 13
` 
` 
`Federal Statutes
`
`35 U.S.C. § 102 ............................................................................................................................... 1
`
`35 U.S.C. § 103 ............................................................................................................................... 1
`
`
`Federal Regulations
`
`37 C.F.R. §1.84(p)(4) .................................................................................................................... 11
`
`
`
` 
`
`
`
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`
`iv
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`Patent No. 5,652,084
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`
`PATENT OWNER’S LIST OF EXHIBITS
`
`DSS-2001
`
`Pan, U.S. Patent No. 5,533,634
`
`DSS-2002 Brand, U.S. Patent No. 5,853,959
`
`DSS-2003 Hudek, U.S. Patent No. 7,241,542
`
`DSS-2004 Apex Translations Inc., Translation Certification, Statement concerning certain
`characteristic of the Japanese language, executed 10/07/2014
`
`DSS-2005 CNN International, Advertisement Feature, Q & A with Yasuhiko Arakawa,
`available at http://advertisementfeature.cnn.com/techheroes/arakawa.html (last
`accessed on 3/2/2015)
`
`DSS-2006 Willson Research Group at the University of Texas at Austin, Immersion
`Lithography, available at
`http://willson.cm.utexas.edu/Research/Sub_Files/Immersion/index.php (last
`accessed on 3/3/2015)
`
`DSS-2007 Declaration of Dr. Chris A. Mack
`
`DSS-2008 Defendants’ Responsive Claim Construction Brief, DSS Technology
`Management, Inc. v. Taiwan Semiconductor Manufacturing Company LTD.; et
`al., Civil Action No. 2:14-cv-00199-RSP (E.D. Texas)
`
`DSS-2009 Transcript of 02-17-2015 Deposition Testimony of Dr. Richard Blanchard
`
`DSS-2010 Exhibits to 02-17-2015 Deposition Testimony of Dr. Richard Blanchard
`
`DSS-2011 Definition of “express,” Black’s Law Dictionary (9th ed. 2009)
`
`DSS-2012 Curriculum Vitae of Dr. Chris A. Mack
`
`
`
`
` 
`
`v
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`
`I. INTRODUCTION
`
`
`
`On December 31, 2014, the Board instituted trial with respect to claims 1-12, 15, and 16
`
`of the U.S. Patent No. 5,652,084 (“the ‘084 Patent”) (TSMC-1001) owned by DSS Technology
`
`Management, Inc., (“Patent Owner”). Specifically, the Board instituted trial based on the following
`
`subset of the invalidity challenges presented in the Petitions for Inter Partes Review in IPR2014-
`
`01030 (“the Petition”) and IPR2014-01493, which has been joined with this proceeding:
`
`(1) anticipation of claims 1-8, 12, 15, and 16 under 35 U.S.C. §102(b) based on Japanese
`
`Patent Application No. HEI 4[1992]-71222 (“Jinbo”) (TSMC-1004);
`
` (2) obviousness of claim 9 under 35 U.S.C. §103(a) based on Jinbo in view of U.S. Patent
`
`No. 4,931,351 (“McColgin”) (TSMC-1006); and
`
`(3) obviousness of claims 10 and 11 under 35 U.S.C. §103(a) based on Jinbo in view of
`
`U.S. Patent No. 4,548,688 (“Matthews”) (TSMC-1007).
`
`Patent Owner submits this Response in response to the invalidity challenges listed above.
`
`For the reasons set forth below, all challenged claims are patentable over the invalidity challenges
`
`on the basis of which the Board instituted this trial.
`
` OVERVIEW OF THE INVENTION CLAIMED IN THE ‘084 PATENT AND
`THE CITED PRIOR ART
`
`II.
`
`
`
`In its summary of the ‘084 Patent, the Petition omits several material elements of the
`
`claimed invention. The following overview provides a brief description of the photolithography
`
`method disclosed in the ‘084 Patent, focusing on the differences between the claimed invention
`
`and the prior art.
`
` 
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`1
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`A. Background of the photolithographic process and equipment
`
`At the time of the invention of the method claimed in the ‘084 Patent, conventional
`
`photolithographic techniques and equipment imposed stringent limits on the minimum size and
`
`pitch of integrated circuit features. See TSMC-1001, 084 Patent at 1:29-36. Although
`
`photolithographic projection apparatus are complex, the simplified diagram below provides a good
`
`overview of lithography process and equipment:
`
` 
`
`DSS-2005 at pg. 6
`A typical projection exposure apparatus for lithography has a light source, a network of
`
`optical lenses to control the light emitted from the light source, a mask containing a predetermined
`
`pattern of transparent and opaque features, and a movable wafer stage. A substrate, such as a
`
`silicon wafer, is coated with a layer of a photoresist and is placed onto the wafer stage. The
`
`photoresist layer is exposed to the light through the transparent features of the mask. The wafer
`2
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`stage can be moved in an x-direction and y-direction to expose additional regions of the photoresist
`
`layer to the light through the mask, thereby replicating the pattern throughout the photoresist layer,
`
`as depicted below.
`
` 
`
`DSS-2006 at pg. 2
`
`The exposure to light renders either the exposed or non-exposed (depending on whether
`
`the photoresist is positive or negative) portions of the photoresist layer soluble in a developer
`
`solution. After the development process, the remaining photoresist mirrors the pattern embodied
`
`in the mask. The patterned photoresist layer acts as an etch mask allowing the pattern to be etched
`
`into the underlying substrate.
`
`B. Summary of the ‘084 Patent
`
` 
`
`3
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`
` The ‘084 Patent advanced the state of the art by disclosing and claiming a novel
`
`photolithographic method, according to which, features of the integrated circuit can be formed
`
`relatively closer to one another than is permitted by the resolution of the lithographic exposure
`
`apparatus.
`
`The first step of the photolithographic method of the ‘084 Patent involves formation of a
`
`first imaging layer over a semiconductor wafer. See TSMC-1001, ‘084 Patent at 3:30-31. In the
`
`next step, the first imaging layer is patterned in accordance with a first pattern. See id. at 3:49-51.
`
`The specification discloses that this step involves exposing the first imaging layer to radiation
`
`through “a first mask having opaque feature 222 and clear features 221 and 223 as illustrated in
`
`FIG. 2.” Id. at 3:57-59. Accordingly, the three features (221, 222, and 223) of the first mask make
`
`up the exemplary first pattern. The step of patterning the first imaging layer in accordance with
`
`the first pattern is illustrated in FIG. 2 reproduced below.
`
`After exposure to radiation, the first imaging layer is developed to form a first patterned
`
`layer 232. See id. at 4:30-34. As shown in FIG. 3, the first patterned layer mirrors the first pattern.
`
`
`
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`In the next step, first patterned layer is stabilized to withstand subsequent lithographic
`
`processing steps. See id. at 4:35-36. The steps described above are routine lithographic steps, and
`
`the pitch of the features of the first patterned layer is constrained by the limitations of the
`
`lithographic equipment.
`
`The following steps constitute the crux of the invention claimed in the ‘084 Patent. After
`
`the first imaging layer has been patterned, a second imaging layer is formed over first patterned
`
`layer. See id. at 5:56-57. The mask used for the first patterning step is replaced with a second mask
`
`having a second pattern, in accordance with which the second imaging layer is patterned. See id.
`
`6:12-14. “The second mask may include any suitable pattern of opaque and clear features that may
`
`depend, for example, on the desired pattern to be formed in [second] imaging layer 240.” Id. at 6:
`
`24-26. The second imaging layer 240 is “exposed to radiation through a second mask having
`
`opaque features 242 and 244 and clear features 241, 243, and 245 as illustrated in FIG. 4.” Id. at
`
`6:20-23 (emphasis added). Accordingly, the five features (241, 242, 243, 244, and 245) of the
`
`second mask make up the exemplary second pattern. The step of patterning the second imaging
`
`layer in accordance with the second pattern is illustrated in FIG. 4 reproduced below.
`
` 
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`5
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`
`
`After being irradiated in accordance with the second pattern, second imaging layer is
`
`developed to form a second patterned layer. See id. at 6:51-53. The first and second patterned
`
`layers collectively form a single patterned layer, wherein the features of the final layer “are formed
`
`relatively closer to one another than is possible through a single exposure to radiation.” Id. at claim
`
`1. The final pattern is depicted in FIG. 5, which is reproduced below:
`
`
`
`
`
`C. The ‘084 Patent requires two separate patterns
`
`An important point of the above overview is that the ‘084 Patent requires two separate
`
`individual patterns—the first pattern and the second pattern—to form the first and second
`
`patterned layers. The specification and claims of the ‘084 Patent unequivocally require that the
`
`first imaging layer is irradiated in accordance with the first pattern, and that the second imaging
`
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`layer is irradiated in accordance with the second pattern. See id. at 3:49-51, 6:12-14. Furthermore,
`
`the abstract of the ‘084 Patent discloses that the invention involves “exposure to radiation in
`
`accordance with two separate patterns.” Id. at Abstract.
`
`The summary of the ‘084 Patent presented in the Petition is deficient because it omits this
`
`key element of the invention. With respect to the second patterning step, the Petition merely states
`
`that “a second resist (second imaging layer 240) is formed over the patterned layer (232) and
`
`exposed in a lithographic process.” See Petition at pg. 5. The Petition, thus, ignores that the ‘084
`
`Patent requires that first imaging layer is patterned in accordance with a first pattern, whereas the
`
`second imaging layer is patterned in accordance with a second pattern. See TSMC-1001, ‘084
`
`Patent at 3:49-51, 6:12-14. These limitations are present in both challenged independent claims 1
`
`and 15, and therefore, are critical for accurate claim construction and patentability of the invention.
`
`D. Jinbo Addresses the Same Problem but Describes a Different Technique
`
`Both the ‘084 Patent and Jinbo disclose lithographic methods for creating a final resist
`
`pattern having dimensions beyond the resolution limits of the lithographic equipment. See DSS-
`
`2007, Mack Declaration at pg. 8-9. The method disclosed in Jinbo, however, is functionally
`
`different than the method claimed in the ‘084 Patent. See id. at pg. 9. In co-pending litigation,
`
`Petitioners recognized that there are two distinct diverging methods of reducing the pitch of
`
`patterned features through multiple exposure lithography: “[t]o create the desired pattern, one
`
`could either use a different mask in each patterning step or use the same mask but shift the mask’s
`
` 
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`position in between patterning steps.” DSS-2008 at pg. 12-13. The ‘084 Patent claims the former,
`
`while Jinbo discloses the latter.2
`
`Jinbo describes in detail a single pattern embodied in a photolithographic mask: “a mask
`
`having a line and space pattern with which spaces 0.4 µm wide can be formed at a pitch of 1.2
`
`µm.” See TSMC-1004, Jinbo at pg. 4. Jinbo discloses that to pattern the first imaging layer, the
`
`mask is mounted into an i ray projection apparatus, and then “the mask alignment marks and the
`
`substrate alignment marks are positioned, and the first resist 13 is exposed with exposure light of
`
`300 mJ/cm2.” See id. First resist 13 is then developed to form first patterned layer 13a, which is
`
`subsequently insolubilized. Second resist 15 is formed over the insolubilized first patterned layer
`
`13b. See id.
`
`It is in the next step that Jinbo sharply departs from the ‘084 Patent. Jinbo teaches that
`
`instead of irradiating the second resist in accordance with the second pattern, as the ‘084 Patent
`
`requires, “the wafer stage is shifted so that the spaces of the mask will be projected on the spaces
`
`of first resist pattern 13b.” See id. at pg. 5. Jinbo explains that the second patterning step is
`
`performed using “the projection apparatus used previously” and using “a[/the] mask which has
`
`been mounted in the projection exposure apparatus.”3 See id. Jinbo does not describe any patterns
`
`other than the one embodied in the mask used for the first patterning step and does not disclose
`
`                                                            
`2 Jinbo actually teaches shifting the wafer rather than the mask, but the key point is changing the
`alignment of the wafer with respect to the mask. See DSS-2009 at pg. 68-69.
`
` 3
`
` It should be noted that the language “a mask which has been mounted” in the quoted portion
`from Jinbo, could have also been translated as “the mask which has been mounted” because the
`Japanese language does not differentiate between definite and indefinite articles. See DSS-2004,
`Translation Certification from Apex Translations, Inc. The alternative translation—“the mask”—
`further clarifies that Jinbo teaches using the same mask for both patterning steps.
`8
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`that the second resist layer is irradiated in accordance with a separate second pattern. A POSITA
`
`would understand that Jinbo teaches using a single pattern for both patterning steps. See DSS-
`
`2007, Mack Declaration at pg. 9-10.
`
`As explained above, Jinbo discloses that the first and the second imaging layers are
`
`patterned in accordance with a single pattern. See id. To produce two patterned layers having
`
`separated features, Jinbo teaches the step of shifting the wafer with respect to the mask in between
`
`the patterning steps. See id. In contrast, the ‘084 Patent does not disclose the technique of wafer
`
`shifting, and instead, requires using two separate patterns for the two patterning steps. See TSMC-
`
`1001, ‘084 Patent at claim 1 and 15.
`
`III. CLAIM CONSTRUCTION
`
` 
`
`A. The Claims of the ‘084 Patent are Construed According to the Legal
`Principles Used by the District Courts
`In its Decision to institute trial (“Institution Decision”), the Board held that the claims of
`
`the challenged ‘084 Patent must be construed in accordance with the principles set forth in Phillips
`
`v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). Under Phillips v. AWH Corp., claim terms are
`
`“generally given their ordinary and customary meaning as understood by a person of ordinary skill
`
`in the art.” See Phillips v. AWH Corp., 415 F.3d 1303, 1313-14 (Fed. Cir. 2005). The claims are
`
`foremost interpreted in light of the specification, which is usually dispositive in ascertaining a
`
`meaning of a claim term. See id. at 1315. The Board should also consider the extrinsic evidence
`
`when that evidence “can help educate the [Board] regarding the field of the invention and can help
`
`the [Board] determine what a person of ordinary skill in the art would understand claim terms to
`
` 
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`mean.” See id. at 1315, 1319. Finally, in case of ambiguity, claim terms should be construed
`
`according to a meaning that preserves validity of the claims. See id. at 1327.
`
`B. Patent Owner generally agrees with the claim construction the Board
`adopted in the Institution Decision
`For the purposes of this trial, Patent Owner generally agrees with the claim construction
`
`the Board adopted in the Institution Decision. The correct construction of the term “second pattern”
`
`is critical for an accurate analysis of patentability of the challenged claims. For this reason, the
`
`following section reaffirms why the Board’s construction of the term “second pattern” adopted in
`
`the Instruction Decision should stand, and proposes a modification to this construction to more
`
`accurately define the term “second pattern” in accordance with the specification of the ‘084 Patent
`
`and the legal principles set forth in Phillips v. AWH Corp.
`
`1. Second pattern
`
`The Board construed the term “second pattern” as “any suitable pattern in accordance
`
`with which the second imaging layer is selectively irradiated…provided that the second pattern
`
`is a separate element.” The Board held that “the claim terms ‘a first pattern’ and ‘a second
`
`pattern’ must be interpreted as two separate individual elements, meaning they [are] separate,
`
`i.e., not one and the same.” Institution Decision at pg. 6 (quotation marks omitted) (emphasis
`
`added).
`
`Patent Owner agrees with this construction insofar as it requires that the first and second
`
`patterns are two separate individual elementes that are not one and the same. Patent Owner
`
`believes that this construction is sufficient for the Board to uphold the validity of all challenged
`
`claims.
`
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`
`a. The specification of the ‘084 Patent reaffirms that the first and second
`patterns are two separate individual elements and cannot be one and
`the same
`It is well established that when a claim includes a “first” element and a “second” element,
`
`the claim must be construed to require two separate individual elements. See, e.g., Free Motion
`
`Fitness, Inc. v. Cybex Intern., Inc., 423 F.3d 1343, 1348 (Fed. Cir. 2005) (construing claim terms
`
`“a first extension arm” and “a second extension arm” as two individual arms and claim terms “a
`
`first pivot point” and “a second pivot point” as two separate pivot points, each associated with a
`
`corresponding extension arm); Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d
`
`1298, 1304 (Fed. Cir. 2003) (first and second sidewall surfaces); Springs Window Fashions LP v.
`
`Novo Indus., L.P., 323 F.3d 989, 992 (Fed. Cir. 2003) (first and second opposed ends).
`
`Furthermore, under Phillips v. AWH Corp., claims “must be read in view of the specification, of
`
`which they are a part.” See Phillips, 415 F.3d at 1315. “[T]he specification “is always highly
`
`relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to
`
`the meaning of a disputed term.” See id.
`
`The ‘084 Patent explicitly discloses that the invention includes a technique of “pattern[ing]
`
`by exposure to radiation in accordance with two separate patterns.” TSMC-1001, ‘084 Patent at
`
`Abstract. The specification of the ‘084 Patent consistently states that the first pattern is embodied
`
`in the first mask and that the second pattern is embodied in a second mask. See id. at 2:15-19, 2:31-
`
`33, 2:50-52, 3:57-59, 6:26-31, 8:9-11, 8:63-65, 10:59-61, 11:47-49. Furthermore, the Federal
`
`Regulations require that “[t]he same part of an invention appearing in more than one view of the
`
`drawing must always be designated by the same reference character, and the same reference
`
`character must never be used to designate different parts.” See 37 C.F.R. §1.84(p)(4). Accordingly,
`
` 
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`the second pattern and the first pattern are not one and the same because their features are
`
`designated by different reference characters in every instance they appear in the specification. See,
`
`e.g., id. at 3:58-59 (the first pattern comprises “opaque feature 222 and clear features 221 and
`
`223,”); 6:21-22 (the second pattern comprises “opaque features 242 and 244 and clear features
`
`241, 243, and 245”).
`
` For the reason set forth above, the specification of the ‘084 Patent reaffirms the correctness
`
`of the Board’s construction of the term “second pattern” insofar as the first pattern and the second
`
`pattern cannot be one and the same and must be construed as two separate individual elements.
`
`See id. at 3:57-59, 6:26-31.
`
`b. The second pattern cannot be a duplicate of the first pattern
`
`Although Patent Owner believes that for the purposes of this trial, the construction of the
`
`term “second pattern” adopted by the Board in its Institution Decision is sufficient to uphold
`
`validity all challenged claims, the correct construction of the term “second pattern” must require
`
`that the second pattern cannot be a duplicate of the first pattern. See DSS-2007, Mack Declaration
`
`at pg. 7-8.
`
`In 3M Innovative Properties Co. v. Avery Dennison Corp., the Federal Circuit stated that
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`“[t]he use of the terms “first” and “second” is a common patent-law convention to distinguish
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`between repeated instances of an element or limitation.” 3M Innovative Properties Co. v. Avery
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`Dennison Corp., 350 F.3d 1365, 1371 (Fed. Cir. 2003). The Federal Circuit applied this rule to the
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`exact terms at issue in this trial—“first pattern” and “second pattern”—holding that “the use of the
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`terms “first ... pattern” and “second ... pattern” is equivalent to a reference to “pattern A” and
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`“pattern B,” and should not in and of itself impose a serial or temporal limitation onto claim 1.”
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`Id. A number of district courts relying on this Federal Circuit opinion have construed the terms
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`“first” and “second” to signify the presence of two structurally different elements. See, e.g.,
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`Volterra Semiconductor Corp. v. Primarion, Inc., 2010 WL 653452, *5 (N.D. Cal. Feb. 22, 2010)
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`(“The use of a modifier, such as “first” or “second” before a term is a convention that is used to
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`distinguish between slightly different structures.”) (emphasis added); Swapalease, Inc. v.
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`Sublease Exchange.com, Inc., 2009 WL 204408, *11 (S.D. Ohio Jan 27, 2009) (holding that “first
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`webpage” and “second webpage” are specific webpages and that “first webpage” is different from
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`“second webpage”) (emphasis added).
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`For the purposes of instituting this trial, the Board found that “[t]he geometry of the second
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`pattern, however, is not necessarily different from the first pattern.” Institution Decision at pg. 8
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`(citing ‘084 Patent at Figs. 7-11, 13-16). The Board’s rationale for this finding was based on the
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`fact that the specification of the ‘084 Patent discloses that “the second mask may include any
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`suitable pattern of opaque and clear features” and that “Patent Owner [did] not specify why a
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`second mask that duplicates the geometry or pattern of the first mask would not be suitable.” Id.
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`(emphasis added). For the reasons provided below, only a second pattern that is not a duplicate of
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`the first pattern is suitable for the second patterning step.
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`1) Using duplicate patterns for both patterning steps either renders
`the ‘084 Patent inoperable or requires additional steps outside the
`disclosure of the ‘084 Patent
`The following explanation answers the Board’s inquiry as to “why a second mask that
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`duplicates the geometry or pattern of the first mask would not be suitable.” See id. If the first and
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`the second patterns were identical in every aspect, the second patterned layer would be
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`superimposed onto the first patterned layer and all features of the two layers would coincide. See
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`DSS-2007 at pg. 7-8. In this scenario, the second patterning step would merely increase the
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`thickness of the first patterned layer without forming any distinct features. See id. If the first and
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`second patterns were identical, the method of claim 1 would be incapable of yielding a final pattern
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`having distinct features, and the method of claim 15 would not reduce the pitch of the pattern
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`features. See id. Consequently, claims 1 and 15 would be rendered inoperable for their intended
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`purpose of achieving “next generation densities . . . using current generation technologies.” See id.
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`at pg. 7; TSMC-1002 at pg. 132.
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`The difference between the correct and inoperable constructions of the term “second
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`pattern” is visually illustrated below:
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`The features of the second pattern
`are arranged differently than the
`features of the first pattern.
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`
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`
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`Second pattern
`duplicates the
`first pattern.
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`First and second features are distinct and
`formed closer to one another than is
`possible through a single exposure to
`radiation.
`
`
`
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`The method is inoperable for its
`intended purpose of forming distinct
`features at a pitch beyond the
`resolutions limits of the lithographic
`equipment.
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`DSS-2007 at pg. 8
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`To restore operability, claims 1 and 15 would require an additional step of changing the
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`alignment of the wafer with respect to the second mask by a distance that is less than the pitch of
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`the first pattern prior to performing the second patterning step. See id., see also DSS-2009 at pg.
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`54-55. This technique is not disclosed in the ‘084 Patent and would require injection of new matter
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