Paper No. 22
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.
`(TSMC) and SAMSUNG ELECTRONICS, CO. LTD.
`Petitioner
`
`v.
`
`DSS TECHNOLOGY MANAGEMENT, INC.
`Patent Owner
`
`___________________
`
`Patent 5,652,084
`IPR2014-010301
`
`Title: METHOD FOR REDUCED PITCH LITHOGRAPHY
`
`_________________________________________________________
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
`
`1 Case IPR2014-01493 has been joined with this proceeding.
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`

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`Petitioner’s Reply to Patent Owner’s Response
`IPR2014-01030
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`TABLE OF CONTENTS
`
`B.
`
`C.
`
`I.
`II.
`
`III.
`
`INTRODUCTION ..................................................................................... 1
`THE CHALLENGED CLAIMS ARE UNPATENTABLE..................... 4
`A.
`The Board’s Construction Is Correct ............................................. 6
`1.
`The Board’s construction is consistent with the claim
`language and the entirety of the intrinsic evidence................... 8
`DSS’s arguments that the “first” and “second” patterns
`must be non-duplicative are contrary to case law ....................12
`DSS’s inoperability argument is wrong...................................15
`3.
`Even if the Board requires the two patterns be non-
`duplicative, Jinbo still renders the claims
`unpatentable....................................................................................17
`1.
`Even if the Board concludes that Jinbo teaches using
`the same mask in both patterning steps, Jinbo
`teaches—and DSS’s expert agrees—that shifting the
`same mask results in non-duplicative “patterns” .....................18
`The Board has already determined that Jinbo teaches
`using any suitable second pattern, including a pattern
`that is produced by a second mask ..........................................20
`Jinbo also teaches a “second pattern” that is second in
`time.........................................................................................21
`Petitioners Have Shown That Claims 1-8, 12, 15, and
`16 of the ‘084 Patent Are Unpatentable.........................................21
`1.
`Challenge #1: Claims 1-8, 12, 15, and 16 are
`unpatentable under 35 U.S.C. § 102(b) as
`anticipated by Jinbo ................................................................22
`Challenge #2: Claim 9 is unpatentable under 35
`U.S.C. § 103(a) as obvious over Jinbo and McColgin.............22
`Challenge #3: Claims 10 and 11 are unpatentable
`under 35 U.S.C. § 103(a) as obvious over Jinbo and
`Matthews ................................................................................23
`CONCLUSION .........................................................................................23
`
`2.
`
`2.
`
`3.
`
`2.
`
`3.
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`

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`Petitioner’s Reply to Patent Owner’s Response
`IPR2014-01030
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`TABLE OF AUTHORITIES
`
`Free Motion Fitness, Inc. v. Cybex Int’l, Inc., 423 F.3d 1343 (Fed.
`
`Cir. 2005).....................................................................................13
`
`3M Innovative Prop. v. Avery Dennison Corp. 350 F.3d 1365 (Fed.
`
`Cir. 2003)...............................................................................12, 13
`
`Swapalease, Inc. v. Sublease Exchange.com, Inc. 2009 WL 204408
`
`(S.D. Ohio Jan. 27, 2009).............................................................13
`
`Volterra Semiconductor Corp. v. Primarion, Inc., 2010 WL 653452
`
`(N.D. Cal. Feb. 22, 2010).......................................................13, 14
`
`See In re Oda, 443 F.2d 1200 (CCPA 1971) ....................................................16
`
`Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875
`
`(Fed. Cir. 2004) ...........................................................................16
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`

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`Petitioner’s Reply to Patent Owner’s Response
`IPR2014-01030
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`I.
`
`INTRODUCTION
`
`The present Reply is directed to the following challenges to claims 1-12 and
`
`15-16 of the U.S. Patent No. 5,652,084 (“the ‘084 Patent”) (TSMC-1001):
`
`(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-10042);
`
`(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).
`
`There are two challenged independent claims in the present IPR, claims 1
`
`and 15, with claim 1 being representative (terms at issue are emphasized below):
`
`1. A lithography method for semiconductor fabrication using a
`semiconductor wafer, comprising the steps of:
`(a) forming a first imaging layer over the semiconductor wafer;
`(b) patterning the first imaging layer in accordance with a first
`pattern to form a first patterned layer having a first feature;
`(c) stabilizing the first patterned layer;
`(d) forming a second imaging layer over the first pattern layer;
`
`and
`
`(e) patterning the second imaging layer in accordance with a
`
`2 All references are to the English translation of Jinbo produced at TSMC-1004.
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`1
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`Petitioner’s Reply to Patent Owner’s Response
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`second pattern to form a second patterned layer having a second
`feature distinct from the first feature, wherein the second patterned
`layer and the first patterned layer form a single patterned layer, and
`wherein the first and second features which are formed relatively
`closer to one another than is possible through a single exposure to
`radiation. (emphasis added.)
`
`In its Institution Decision, the Board construed the ordinary meaning3 of
`
`“the term ‘second pattern’ as ‘any suitable pattern in accordance with which the
`
`second imaging layer is selectively irradiated.’ In other words, the second
`
`pattern can be any geometric pattern, including a pattern the same as the first
`
`pattern, provided that the second pattern is a separate element.” See Paper 7 at 8
`
`(emphasis added).
`
`Despite this, in its Response, the Patent Owner (“DSS”) has alleged that all
`
`three challenges fail for a single reason—DSS alleges Jinbo discloses a single
`
`“pattern” that is used for both patterning steps and therefore does not disclose the
`
`claimed “second pattern.” Paper 18 at 12. To support this argument, DSS urges the
`
`Board to modify its construction of “second pattern” to require that the second
`
`pattern is not the “same as” or a “duplicate of” the first pattern. Id.
`
`3 The ‘084 Patent expired on December 22, 2014, and accordingly, “the Board’s
`
`review of the claims is similar to that of a district court.” Paper 7 at 6.
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`2
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2014-01030
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`DSS’s arguments concerning the “second pattern” element are unavailing for
`
`multiple reasons. First and foremost, DSS’s arguments hinge on a narrow reading
`
`of “second pattern” that the Board has already considered and rejected. The Board
`
`did so for good reason—DSS is attempting to read in a difference between the first
`
`and second patterns that the claim language does not require and that actually
`
`contradicts the totality of the intrinsic evidence. Moreover, and as discussed in
`
`detail below, a District Court has entered a Claim Construction Memorandum and
`
`Order construing this term consistent with that of the Board in its Institution
`
`Decision. Two separate tribunals have now rejected DSS’s narrow construction.
`
`Furthermore, even if the Board were to revise its construction of “second
`
`pattern” to require that the second pattern is not a “duplicate” of the first pattern,
`
`Jinbo in fact discloses a second pattern that does not duplicate the first pattern. In
`
`this regard, DSS’s argument regarding non-duplicate patterns is based on a false
`
`premise—contrary to DSS’s assertion, the alleged use of the same mask in the
`
`second patterning step in Jinbo does not mean that the second imaging layer is
`
`irradiated with the same “pattern.” In Jinbo, the second pattern that irradiates the
`
`second imaging layer is not a duplicate of the first pattern because the second
`
`pattern is in a different position relative to the wafer to be patterned (the features in
`
`the second pattern do not align with the features of the first pattern). As DSS’s
`
`expert Dr. Chris A. Mack clearly opines, “the pattern that’s being exposed into the
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`3
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2014-01030
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`photoresist is what really matters” (TSMC-1017, at 91:9-13), and in Jinbo, the two
`
`“patterns” are in different positions relative to the wafer and thus expose different
`
`patterns on the wafer.
`
`Thus, as discussed in more detail below, the Board was correct in its
`
`Institution Decision to find that (1) yes, Jinbo discloses the claimed second pattern,
`
`and (2) all of the remaining elements of claims 1-12 and 15-16 of the ‘084 Patent
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`are taught by the prior art and should be found unpatentable.
`
`II.
`
`THE CHALLENGED CLAIMS ARE UNPATENTABLE
`
`Each of DSS’s arguments is addressed below. As an initial matter, however,
`
`Petitioners would like to inform the Board of the final claim construction ruling in
`
`the related District Court litigation involving the same parties and the same ‘084
`
`Patent.4 Although the Board is not bound by the District Court’s claim
`
`construction, the Petitioners respectfully submit that the District Court’s
`
`construction is particularly relevant here in light of the fact that both the Board and
`
`the District Court are to construe the claim terms using the same standard. See fn3.
`
`During the claim construction proceeding in the related litigation, DSS
`
`asserted that “the two patterns must have ‘different’ shapes.” TSMC-1016, Claim
`
`4 DSS Technology Management, Inc. v. Taiwan Semiconductor Manufacturing
`
`Company, Limited, et al., Civ. Action No. 2:14-cv-199; currently on appeal.
`
`4
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`IPR2014-01030
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`Construction Memorandum and Order at 14. The defendants (the present
`
`petitioners), on the other hand, asserted the following:
`
`[J]ust because the ‘first’ and ‘second’ patterns are listed does not
`mean that the patterns have to be shaped differently, but rather it
`merely is a use of common patent convention for identifying the
`‘first’ and ‘second’ elements in a claim. Defendants assert that they
`do not contest
`that
`the first and second patterns are separate
`elements; just that the two patterns do not have to be different.
`
`Id. at 15 (citations omitted). After analyzing the arguments of the parties, the
`
`District Court ruled in favor of the defendants (petitioners) stating:
`
`import an embodiment from the
`DSS would have this Court
`specification. Such a conclusion is wrong for multiple reasons.
`First,
`there is no disavowal or clear disclaimer of
`the well
`understood claim language.
`In contrast, the specification clearly
`states repeatedly that “any suitable pattern of opaque and clear
`features that may depend, for example, on the desired pattern to be
`formed in [the] imaging layer.” 3:59-62; 6:23-25; 8:11-14; 8:65-
`9:1; 10:61-64, and 11:49-52. In this regard, the specification could
`not be clearer: a particular pattern is not required for the first and
`second patterns. Second, it is not even clear that in the exemplary
`specification embodiments,
`the first and second patters are
`different. For example, the first and second patterns shown in
`Figures 2-5, 7-11 and 13-16, respectively, may each be the same
`pattern, just shifted horizontally.
`
`5
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2014-01030
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`Id. at 17. The District Court’s final claim construction is as follows:
`
`“first pattern” to mean “a pattern in accordance with which the
`first imaging layer is selectively irradiated” and construes
`“second pattern” to mean “a pattern in accordance with which
`the second imaging layer is selectively irradiated.”
`
`Id. at 18 (bolding in original).
`
`Thus, the District Court’s construction of the term “second pattern” is
`
`consistent with the Board’s construction in its Institution Decision. The Petitioners
`
`nevertheless recognize that this is a separate proceeding, and the present paper
`
`fully addresses each of DSS’s arguments below.
`
`A.
`
`The Board’s Construction Is Correct
`
`As noted above, in its Institution Decision, the Board construed the “second
`
`pattern” to mean “any suitable pattern in accordance with which the second
`
`imaging layer is selectively irradiated.” See Paper 7 at 8 (emphasis added). In
`
`construing the claimed “second pattern,” the Board determined that:
`
`[T]he second pattern may be different from the first pattern in
`certain aspects such as the order in which it is used (claims 1, 15)
`and its use to generate a second feature (Ex. 1001, Figs. 5, 11, 16).
`The geometry of the second pattern, however, is not necessarily
`different from the first pattern.
`
`Id. at 8 (emphasis added).
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`6
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2014-01030
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`DSS argues against the last sentence of the above-quoted citation, asserting
`
`that “the correct construction of the term ‘second pattern’ must require that the
`
`second pattern cannot be a duplicate of the first pattern.” Paper 18, Patent Owner’s
`
`Response at 12. DSS thus asks the Board to modify its construction to read “any
`
`suitable pattern in accordance with which the second imaging layer is selectively
`
`irradiated…provided that the second pattern is a separate element and is not a
`
`duplicate of the first pattern.” Id. at 19. DSS further explains their proposed
`
`construction as follows:
`
`It is important to note that the first and the second patterns may be
`different from one another in the following ways:
`(1) the opaque
`and clear features may have different geometries, or (2) the opaque
`and clear features of the two patterns may have identical geometries
`but the features must be arranged differently in the two patterns.
`
`Id. at 16, emphasis in original, footnotes and citations omitted. DSS has argued the
`
`alleged differences between the two patterns differently throughout the various
`
`proceedings, including that the patterns require different geometries, different
`
`shapes, different arrangements, and now that the patterns must not be duplicates.
`
`However, regardless of the way DSS frames the argument, none of these
`
`differences are required in the claims.
`
`It is noted that DSS made similar arguments in its Preliminary Response in
`
`the present IPR proceeding, and the Board addressed these arguments head-on.
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`7
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`IPR2014-01030
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`The Board stated that “Patent Owner provides no persuasive support, however, as
`
`to why the second pattern should be construed as a geometric pattern that is
`
`‘different’ from the first pattern.” Paper 7 at 7 (emphasis in original). Moreover,
`
`DSS made a similar argument to the District Court in related litigation, and the
`
`Court also rejected DSS’s arguments for a narrow construction. See TSMC-1016
`
`at 17 (“[T]he specification could not be clearer: a particular pattern is not required
`
`for the first and second patterns”). Having failed in its first two attempts, DSS now
`
`asks the Board to decide this issue for a third time. As explained below, DSS is
`
`attempting to read in differences between the claimed first and second patterns that
`
`the claim language does not require and which actually contradict the specification
`
`of the ‘084 Patent.
`
`1.
`
`The Board’s construction is consistent with the claim
`language and the entirety of the intrinsic evidence
`
`Claim 1 of the ‘084 Patent simply requires “patterning the first imaging
`
`layer in accordance with a first pattern to form a first patterned layer having a first
`
`feature” and “patterning the second imaging layer in accordance with a second
`
`pattern.” The claims do not include any requirement that the patterns be non-
`
`duplicative.5 Moreover, as the Board has already noted, the ‘084 Patent
`
`5 The words “duplicative” or “non-duplicative” do not appear in the ‘084 Patent.
`
`8
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`

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`Petitioner’s Reply to Patent Owner’s Response
`IPR2014-01030
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`specification does not place any restrictions as to whether the second pattern must
`
`be different from the first pattern:
`
`[I]maging layer 240 may be 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. 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 imaging layer 240.
`
`TSMC-1001 at 6:17-25 (emphasis added); see also, 3:59–62, 8:11–14, 8:65–9:1,
`
`10:61–64, and 11:49–52. This can be further seen from the figures of the ‘084
`
`Patent. For example, considering the patterns produced by the masks shown in
`
`Figs. 2 and 4 of the ‘084 Patent, reproduced below, there is no teaching or
`
`suggestion that the pattern of opaque and clear features in Fig. 4 (the second
`
`pattern) is different from the pattern in Fig. 2 (the first pattern), except for being
`
`shifted and being exposed at different times.
`
`Moreover, the file history of a divisional application claiming priority to the
`
`application that led to the issuance of the ‘084 Patent further supports the
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`9
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2014-01030
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`conclusion that the ‘084 Patent specification does not require two different
`
`patterns. During the prosecution of the divisional application, the applicant
`
`amended a claim to require that the first and second patterns be “different”:
`
`TSMC-1018, Prosecution History of US 5,686,223 at 84, 87.
`
`The way the Examiner responded to this amendment is telling. The
`
`Examiner rejected this amendment under Section 112 on the grounds that the
`
`specification did not provide written description support for two different patterns.
`
`Id. at 101 (“Support [from the specification] could not be found for the recitation
`
`that the first pattern is different from the second pattern”). In response, the Patent
`
`Owner acquiesced and removed the limitation that the two patterns be “different”
`
`from the claims. Id. at 111-117.
`
`Notably, in the related litigation, the District Court considered the arguments
`
`of DSS and the disclosure of the ‘084 Patent specification, and came to the same
`
`10
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2014-01030
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`conclusion as the Examiner of the divisional patent:
`
`[I]t is not even clear that in the exemplary [‘084 Patent]
`specification embodiments, the first and second patterns are
`different. For example, the first and second patterns shown in
`Figures 2–5, 7–11 and 13–16, respectively, may each be the same
`pattern, just merely shifted horizontally.
`
`TSMC-1016 at 17 (emphasis added). At a minimum, the District Court found that
`
`the ‘084 Patent specification reasonably supports a reading that the first and second
`
`patterns do not have to be different.
`
`DSS cites to the Abstract of the ‘084 Patent in an attempt to support its claim
`
`construction. Paper 18 at 7 (“Furthermore, the abstract of the ‘084 Patent discloses
`
`that the invention involves ‘exposure to radiation in accordance with two separate
`
`patterns.’”) (emphasis in original). The sentence DSS cites, however, is actually
`
`referring to a separate embodiment (not covered by claim 1) described in the ‘084
`
`Patent: “For another embodiment, a single imaging layer is patterned by
`
`exposure to radiation in accordance with two separate patterns.” TSMC-1001,
`
`Abstract (emphasis added). Further, this embodiment is unclaimed6 and requires
`
`patterning a single imaging layer instead of two imaging layers as recited in the
`
`6 The Examiner issued a restriction requirement in the ‘084 Patent, and the claims
`
`directed to this embodiment were not elected. TSMC-1002, at 76-77, 90.
`
`11
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2014-01030
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`claims. As noted above, with regard to the claimed embodiment that requires two
`
`imaging layers, the ‘084 Patent never specifies that the two patterns have to be
`
`different.
`
`Thus, as the Board (and the District Court) have previously found, there is
`
`simply no reason to limit the second pattern to be non-duplicative of the first
`
`pattern, and Jinbo renders the claims unpatentable.
`
`2.
`
`DSS’s arguments that the “first” and “second” patterns
`must be non-duplicative are contrary to case law
`Despite the intrinsic evidence discussed above and the previous findings of
`
`both the Board and the District Court in the related litigation, DSS argues that the
`
`first and second patterns cannot be duplicative in light of case law interpretation of
`
`the terms “first” and “second.” See Paper 18 at 11-13. However, the use of the
`
`terms “first” and “second” in a claim is nothing more than “a common patent-law
`
`convention to distinguish between repeated instances of an element or limitation.”
`
`Free Motion Fitness, Inc. v. Cybex Int’l, Inc., 423 F.3d 1343, 1347-48 (Fed. Cir.
`
`2005) (emphasis added).
`
`DSS cites multiple authorities to argue that the use of “first” and “second”
`
`somehow implies that the patterns are non-duplicative. However, the cited
`
`authorities do not in any way suggest that it is proper to import limitations from the
`
`specification into the claims. For example, DSS refers to the 3M Innovative Prop.
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`12
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2014-01030
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`v. Avery Dennison Corp. decision, which also construed the terms “first … pattern”
`
`and “second … pattern,” although in a different context. Paper 18 at 12. Contrary
`
`to DSS’s arguments, the 3M Court specifically declined to read un-recited
`
`limitations into these claim terms. See 350 F.3d 1365, 1371 (Fed. Cir. 2003) (“In
`
`the context of claim 1, the use of the terms ‘first ... pattern’ and ‘second ... pattern’
`
`is equivalent to a reference to ‘pattern A’ and ‘pattern B,’ and should not in and of
`
`itself impose a serial or temporal limitation onto claim 1”).
`
`DSS also refers to Swapalease, Inc. v. Sublease Exchange.com, Inc. As in
`
`3M, the Swapalease Court declined to read un-recited limitations into the claims,
`
`except those that were “implicit in the nature of the technology.” Paper 18 at 13.
`
`In the present case, the word “pattern” does not implicitly require any particular
`
`shape, size, or arrangement of its geometries.
`
`DSS also cites Volterra Semiconductor Corp. v. Primarion, Inc., which is of
`
`particular interest. Paper 18 at 13. The Volterra Court declined to read further
`
`limitations into a “first switch” and a “second switch” merely to avoid a potential
`
`enablement issue. The District Court determined:
`
`The fact that this construction may render the devices claimed
`in dependent claims 12 and 14 inoperable to the extent that they
`would include 3 or 4 switching elements does not mean that the
`claim term is indefinite in claim 1. It may, however, give rise to a
`question of enablement as to the dependent claims.
`
`13
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`2010 WL 653452, *42 (N.D. Cal. Feb. 22, 2010). In that regard, Volterra is
`
`particularly on point with respect to DSS’s inoperability argument, discussed in
`
`detail in the following section beginning at page 15.
`
`It is important to note that DSS’s arguments regarding “first” and “second”
`
`were also addressed at the claim construction hearing before the District Court in
`
`the related litigation. During that hearing, DSS acknowledged that “the ordinal
`
`numbers ‘first’ and ‘second’ usually relate to instances of the same element” but
`
`that in this case first and second should be different. TSMC-1019, Claim
`
`Construction Transcript at 31:8-16. When the District Court asked what evidence
`
`DSS had for the proposition that the patentee deviated from the typical patent law
`
`convention of “first” and “second,” DSS stated “[j]ust the fact that they are labeled
`
`‘first pattern’ and ‘second pattern’ differently” and that the figures depicted the
`
`patterns differently. Id., at 31:25-32:12.
`
`Moreover, as the District Court recognized, claim 1 uses the terms “first”
`
`and “second” to describe other elements, such as the first and second imaging
`
`layers. When the District Court asked DSS to explain why the first and second
`
`“patterns” must be different, but the same is not true for the first and second
`
`“imaging layers,” DSS had no response:
`
`The Court: We get “first” and “second” all the time for elements that
`are the same. Why does the use of “first” and “second”
`
`14
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2014-01030
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`I mean, obviously it is a
`
`Mr. Voss:
`The Court:
`
`Mr. Voss:
`
`require that it be different?
`patterned -- I mean --
`It’s a separate instance.
`It’s a separate element. But to require that it be different
`would be like requiring that the material used for the
`imaging layer be different because one is first and one is
`second, wouldn’t it?
`I don’t think so, your Honor. I think that the language
`“first pattern” and “second pattern” means that they need
`to be different patterns.
`Id., at 36:6-18 (emphasis added). As the District Court’s Order states, “the
`
`specification could not be clearer: a particular pattern is not required for the first
`
`and second patterns.” TSMC-1016 at 17. Thus, the Board’s claim construction is
`
`correct, and Jinbo renders the claims unpatentable.
`
`DSS’s inoperability argument is wrong
`3.
`In further support of its argument that the two patterns must be non-
`
`duplicative, DSS makes an unusual inoperability argument. In particular, DSS
`
`argues that if duplicate patterns are used, the features of the first and second
`
`patterned layers will be “superimposed” and thus the claimed method will be
`
`inoperable. See Paper 18 at 13-14. According to DSS, the only way to make the
`
`claims operable is to require an additional step of changing the alignment of the
`
`wafer with respect to the second mask, which would require the injection of “new
`
`15
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`matter” into the ‘084 Patent. See id. at 15-16 (“To restore operability, claims 1 and
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`15 would require an additional step of changing the alignment of the wafer with
`
`respect to the second mask by a distance that is less than the pitch of the first
`
`pattern prior to performing the second patterning step. This technique is not
`
`disclosed in the ‘084 Patent and would require injection of new matter into the
`
`‘084 Patent.”) (internal citation omitted).
`
`This argument by DSS is not correct.7 The real question is whether the
`
`construed claims are supported by the specification through express, implicit, or
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`inherent disclosure. See In re Oda, 443 F.2d 1200 (CCPA 1971). There is no
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`question that the Board’s construction of “second pattern” is supported by the ‘084
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`Patent specification, and the construed claims are indeed operable – see Jinbo.
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`Indeed, the specification states that “[a]ny suitable lithographic patterning
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`technique may be used” to form a second patterned layer using a second pattern.
`
`TSMC-1001 at 6:14-16. As Jinbo makes clear, shifting a wafer relative to a mask
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`was a well-known lithographic patterning technique. DSS’s own expert, Dr. Mack,
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`agreed that both aligning and shifting a mask relative to a wafer were “standard in
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`7 This argument appears to be an improper attempt to read limitations from the
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`specification into the claims. See e.g., Superguide Corp. v. DirecTV Enterprises,
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`Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2014-01030
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`the industry,” i.e, well known lithographic patterning techniques:
`
`Q:
`
`Dr. Mack:
`
`Q:
`
`You said that the 084 Patent doesn’t teach shifting the
`wafer stage; is that correct?
`It doesn’t teach shifting the wafer stage between the first
`and the second patterning steps.
`Does it teach alignment of the photomask with the optical
`equipment?
`Dr. Mack: No.
`teach alignment of the wafer stage with the
`Q:
`Does it
`optical equipment and the reticle?
`Dr. Mack: These would be operations that were standard in the
`industry at the time of the 084 Patent.
`TSMC-1017 at 64:11-21. Accordingly, DSS’s inoperability argument concerning
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`the use of duplicate masks and the injection of new matter is a red herring.
`
`B.
`
`Even if the Board requires the two patterns be non-duplicative,
`Jinbo still renders the claims unpatentable
`
`The Board’s determination that “[t]he geometry of the second pattern … is
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`not necessarily different from the first pattern” (Paper 7 at 8) is correct, and well-
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`supported. The District Court agreed. Nevertheless, should the Board somehow
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`decide to change its claim construction ruling and adopt DSS’s new argument
`
`requiring the two patterns be non-duplicative, Jinbo still invalidates the claims.
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2014-01030
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`1.
`
`Even if the Board concludes that Jinbo teaches using the
`same mask in both patterning steps, Jinbo teaches—and
`DSS’s expert agrees—that shifting the same mask results in
`non-duplicative “patterns”
`
`The Board has previously considered, and rejected, DSS’s argument that
`
`Jinbo uses the same mask in the first and second patterning steps:
`
`As an initial matter, we are not persuaded by Patent Owner’s
`contention that Jinbo uses the same mask for patterning both
`imaging layers. In Jinbo, as pointed out by Patent Owner, the
`second patterning step is performed using a mask which has been
`mounted in the projection exposure apparatus. Translation issues
`notwithstanding, Jinbo reasonably supports a reading that a
`mask could be any suitable mask, including a mask that is the
`same as the first mask, or a mask that is different than the
`second mask.
`
`Paper 7, at 11 (internal quotations, citations, and footnote omitted) (emphasis
`
`added). In its Response, however, DSS continues to urge the Board to find that
`
`Jinbo uses the same mask in both patterning steps. Even assuming that the same
`
`mask is used, the use of the same mask in the second patterning step does not
`
`mean that the second imaging layer is irradiated with the same “pattern.” In other
`
`words, “pattern” in the claims is not synonymous with mask. Indeed, the two
`
`patterns being exposed onto the imaging layers in Jinbo are different because the
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2014-01030
`
`wafer stage is shifted relative to the mask prior to Jinbo’s second patterning step,
`
`which results in a non-duplicative pattern that is projected onto the
`
`semiconductor wafer.
`
`This is best understood with reference to Fig. 1E of Jinbo, reproduced
`
`below. Even if the same mask was used in the second patterning step, Jinbo
`
`includes two photoresist layers (or simply “resists”) patterned by two different
`
`“patterns.”8 The first patterned resist has features 13b in different locations from
`
`the second patterned resist features 15a. Thus, the patterned resists are formed
`
`from two different, and non-duplicative, patterns.
`
`The first pattern has a feature right here;
`the second pattern does not.
`
`Jinbo, TSMC-1004, Fig. 1E with annotation
`
`DSS’s expert, Dr. Mack, agrees that shifting a mask produces a different
`
`pattern. Dr. Mack clarified at his deposition, that “the pattern that’s being exposed
`
`8 The device in Fig. 1(E) has been patterned twice, first to produce the three resist
`
`features 13b shown in the figure, and then again to produce the four resist features
`
`15a.
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2014-01030
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`into the photoresist is what really matters.” TSMC-1017 at 91:9-13. Dr. Mack
`
`further explained at his deposition:
`
`Q:
`
`If I want to pattern a first imaging layer with a set of
`transistors and then I want to pattern a second imaging
`layer where I put additional transistors into the spaces
`between the transistors from the first imaging layer and I
`do that with an E-beam apparatus, the only difference in
`the second pattern is I shifted everything some specified
`distance to the left, is that a different pattern or is it the
`same pattern?
`If you consider the way a lithography – excuse me, a
`lithographer considers patterns as they're placed onto a
`wafer … a pattern that's placed in a different position
`is a different pattern.
`TSMC-1017 at 60:2-15 (emphasis added). See also, id. at 44:8-16 and 71:12-72:7.
`
`Dr. Mack:
`
`Thus, because Jinbo discloses a second pattern that irradiates the underlying wafer
`
`in different positions than the first pattern, Jinbo discloses a second, non-duplicate
`
`pattern, rendering the claims unpatentable.
`
`2.
`
`The Board has already determined that Jinbo teaches using
`any suitable second pattern, including a pattern that is
`produced by a second mask
`
`The previous section presented arguments under the assumption that Jinbo
`
`uses the same mask for both patterning steps. The petitioners agree with the Board
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2014-01030
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`that “we are not persuaded by Patent Owner’s contention that Jinbo uses the same
`
`mask for p