Trials@uspto.gov
`571-272-7822
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` Paper 7
`Entered: December 31, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.
`(TSMC),
`Petitioner,
`
`v.
`
`DSS TECHNOLOGY MANAGEMENT, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01030
`Patent 5,652,084
`____________
`
`
`Before ERICA A. FRANKLIN, JACQUELINE WRIGHT BONILLA, and
`KRISTINA M. KALAN, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`
`
`
`
` Paper 7
`Entered: December 31, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.
`(TSMC),
`Petitioner,
`
`v.
`
`DSS TECHNOLOGY MANAGEMENT, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01030
`Patent 5,652,084
`____________
`
`
`Before ERICA A. FRANKLIN, JACQUELINE WRIGHT BONILLA, and
`KRISTINA M. KALAN, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2014-01030
`Patent 5,652,084
`
`
`I. INTRODUCTION
`
`Petitioner, Taiwan Semiconductor Manufacturing Company, Ltd.
`
`(TSMC), filed a Petition (Paper 1, “Pet.”) to institute inter partes review of
`
`claims 1–16 of US Patent No. 5,652,084 (Ex. 1001, “the ’084 patent”)
`
`pursuant to 35 U.S.C. §§ 311–319. Patent Owner, DSS Technology
`
`Management, Inc., filed a Preliminary Response (Paper 6, “Prelim. Resp.”)
`
`opposing institution of review. We have jurisdiction under 35 U.S.C. § 314,
`
`which provides that an inter partes review may not be instituted unless the
`
`information presented in the Petition and Preliminary Response shows that
`
`there is a reasonable likelihood that the Petitioner would prevail with respect
`
`to at least one of the claims challenged in the Petition.
`
`Petitioner challenges claims 1–8, 12, 15, and 16 as anticipated under
`
`35 U.S.C. § 102 and challenges claims 1–16 as obvious under 35 U.S.C.
`
`§ 103. We institute inter partes review as to claims 1–12, 15, and 16 on
`
`certain grounds, as discussed below.
`
`II. BACKGROUND
`
`A. Related Matters
`
`The parties indicate that the ’084 patent is involved in the following
`
`proceeding: DSS Technology Mgmt., Inc. v. Taiwan Semiconductor Mfg Co.,
`
`Ltd., 2-14-CV-00199 (E.D. Tex.). Pet. 1; Paper 4, Related Matters, 2.
`
`B. The ’084 Patent (Ex. 1001)
`
`The ’084 patent, titled “Method for Reduced Pitch Lithography,”
`
`issued on July 29, 1997. Patent Owner represents that the expiration date of
`
`the ’084 patent is December 22, 2014. Prelim. Resp. 1. The ’084 patent
`
`relates to a lithographic patterning process using multiple exposures to
`
`provide for relatively reduced pitch for features of a single patterned layer.
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`Ex. 1001, Abstract. Figure 1, reproduced below, illustrates an exemplary
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`process:
`
`Figure 1 illustrates, in flow diagram form, one lithography method for
`
`semiconductor fabrication. Id. at 2:7–8. Figure 5 illustrates a product of the
`
`method illustrated in Figure 1:
`
`
`
`Figure 5 shows a cross-sectional view of a semiconductor wafer as a
`
`result of the method of Figure 1. Id. at 2:20–22, 7:36–37. After completion
`
`of steps 110 and 120 of Figure 1, first patterned layer 232 is formed. Id. at
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`4:31–34. Following completion of steps 130 and 140 of Figure 1, second
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`patterned layers 251 and 253 are formed. Id. at 6:51–54. As a result of the
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`method of Figure 1, a single patterned layer is formed over layer 210 as
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`illustrated in Figure 5. Id. at 7:36–37.
`
`C. Illustrative Claim
`
`Claim 1 of the ’084 patent is illustrative of the claims at issue:
`
`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 10
`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
`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.
`
`Ex. 1001, 13:6–24.
`
`D. The Prior Art
`
`Petitioner relies on the following prior art:
`
`1. Japanese Patent App. No. H04-71222, published
`March 5, 1992 (“Jinbo”) (Ex. 1011) (Ex. 1004).1
`
`
`1 Petitioner relies on a certified English translation of Jinbo submitted as
`Exhibit 1004 (in original and corrected versions). All references to Jinbo in
`this Decision refer to the corrected version of Exhibit 1004.
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`2. US Patent No. 4,591,547, issued May 27, 1986
`(“Brownell”) (Ex. 1005).
`
`3. US Patent No. 4,931,351, issued June 5, 1990
`(“McColgin”) (Ex. 1006).
`
`4. US Patent No. 4,548,688, issued October 22, 1985
`(“Matthews”) (Ex. 1007).
`
`5. US Patent No. 5,158,910, issued October 27, 1992
`(“Cooper”) (Ex. 1008).
`
`E. The Asserted Grounds
`
`Petitioner challenges claims 1–16 of the ’084 patent on the following
`
`grounds:
`
`References
`
`Jinbo
`
`Jinbo and Brownell
`
`Jinbo and McColgin
`
`Jinbo and Matthews
`
`Basis
`
`Claims Challenged
`
`§ 102(b)
`
`1–8, 12, 15, and 16
`
`§ 103(a)
`
`1–8, 12, 15, and 16
`
`§ 103(a)
`
`9
`
`§ 103(a)
`
`10 and 11
`
`Jinbo, Brownell and Cooper
`
`§ 103(a)
`
`13 and 14
`
`
`
`F. Claim Interpretation
`
`In an inter partes review, the Board interprets claims in an unexpired
`
`patent using the “broadest reasonable construction in light of the specification
`
`of the patent in which [they] appear[].” 37 C.F.R. § 42.100(b). Under the
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`broadest reasonable interpretation standard, claim terms are given their
`
`ordinary and customary meaning in view of the specification, as would be
`
`understood by one of ordinary skill in the art at the time of the invention. In
`
`re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`As noted by Patent Owner, however, the subject patent expired on
`
`December 22, 2014. If the subject patent expires prior to institution of inter
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`partes review, the broadest reasonable interpretation rule does not apply for
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`purposes of the institution decision. In that circumstance, the Board’s review
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`of the claims is similar to that of a district court. See Cisco Sys., Inc. v. AIP
`
`Acquisition, LLC, IPR2014-00247, Paper 17, slip op. at 3–4 (PTAB June 26,
`
`2014); In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). Because the
`
`claims of an expired patent are not subject to amendment, the Board’s review
`
`of such claims applies the principles set forth in Phillips v. AWH Corp., 415
`
`F.3d 1303 (Fed. Cir. 2005).
`
`Specifically, words of a claim are generally given their ordinary and
`
`customary meaning as understood by a person of ordinary skill in the art at
`
`the time of the invention, in light of the language of the claims, the
`
`specification, and the prosecution history of record. Id. at 1312–1314. We
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`do not apply a presumption of validity, and we evaluate Petitioner’s burden
`
`under the preponderance of evidence standard. Cisco, IPR2014-00247, Paper
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`17, slip op. at 3–4.
`
`For purposes of this Decision, applying the claim construction standard
`
`for an expired patent as discussed above, we determine that only the
`
`following terms need express interpretation.
`
`1. Stabilizing
`
`Petitioner asks that we construe the term “stabilizing” as “performing a
`
`process that renders a material able to withstand subsequent processing steps,
`
`such as exposure to radiation, exposure to a solvent, and/or exposure to a
`
`developer.” Pet. 14.
`
`Patent Owner asks that we construe the term “stabilizing” as
`
`subjecting the first imaging layer to a process that when
`completed results in a first patterned layer that (1) is able to
`withstand chemical transformation from any subsequent
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`exposure to radiation, (2) may be subjected to solvents of the
`subsequent imaging layer, and (3) may be subjected to a
`subsequent developer with relatively minimal, if any,
`dissolution.
`
`Prelim. Resp. 11.
`
`The Specification describes various stabilization techniques that may
`
`be used. See, e.g., Ex. 1001, 4:35–43, 8:24–30. As a preface to examples of
`
`stabilization techniques, the Specification provides: “Any suitable
`
`stabilization technique may be used and may depend, for example, on the
`
`material used to form first patterned layer 232,” id. at 4:32–34, or “on the
`
`material used to form imaging layer 420,” id. at 8:19–21, or “on the material
`
`used to form imaging layer 620,” id. at 11:2–4. In other words, the
`
`exemplary techniques of stabilization described in the Specification are not
`
`limiting.
`
`Thus, we interpret the term “stabilizing” as “performing any process
`
`that renders a material able to withstand subsequent lithographic processing
`
`steps.”
`
`2. Second pattern
`
`Patent Owner asks that we construe the term “second pattern” as “a
`
`second geometric pattern—separate from the first pattern—in accordance
`
`with which, the second imaging layer is selectively irradiated.” Prelim.
`
`Resp. 12. Petitioner has not asked us to construe this term.
`
`We agree that the “claim terms ʻa first pattern’ and ʻa second pattern’
`
`must be interpreted as two separate individual elements,” meaning they
`
`separate, i.e., not “one and the same.” Id. at 12–13. 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. Id.
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`at 13. We agree with Patent Owner that, according to the claims and the
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`Specification, the 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.
`
`See, e.g., Figs. 7–11, 13–16. The Specification provides, and Patent Owner
`
`acknowledges, that: “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.” Ex. 1001, 6:23–25; Prelim.
`
`Resp. 14. Patent Owner does not specify why a second mask that duplicates
`
`the geometry or pattern of the first mask would not be suitable.
`
`We construe 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.
`
`3. A second feature distinct from the first feature
`
`Patent Owner asks that we construe the term “a second feature distinct
`
`from the first feature” as “a second feature that has a different geometric
`
`shape than the first feature.” Prelim. Resp. 20. Petitioner has not asked us to
`
`construe this term.
`
`Patent Owner points to the prosecution history of the ’595 patent, from
`
`which the ’084 patent claims continuity, in which the limitation “a second
`
`feature distinct from the first feature” was introduced to differentiate over
`
`prior art that contained “overlapping non-distinct features.” Ex. 1002, 132.
`
`Patent Owner also points to claims 12, 14 and 16, which provide that the first
`
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`Patent 5,652,084
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`and second features do not overlap, to argue that “‘distinct’ must be
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`construed to mean something other than ‘spatially separated’ or ‘non-
`
`overlapping.’” Prelim. Resp. 17.
`
`Considering the intrinsic evidence before us, including the prosecution
`
`history identified by Patent Owner, we disagree with Patent Owner that
`
`“distinct from the first feature” necessarily means “has a different geometric
`
`shape than the first feature.” Id. The first and second features could be
`
`distinct in any number of ways not limited to geometric difference. The
`
`Specification does not appear to define the term “distinct,” and the identified
`
`prosecution history does not limit the term as Patent Owner suggests. Based
`
`on its ordinary and customary meaning, for the purpose of institution, we
`
`construe the term “a second feature distinct from the first feature” as “a
`
`second feature that is a separate element from the first feature.” In other
`
`words, the second feature can be any geometric shape, including a shape the
`
`same as the first feature, provided that the second feature is a separate
`
`element.
`
`ANALYSIS
`
`We turn now to Petitioner’s asserted grounds of unpatentability and
`
`Patent Owner’s arguments in the Preliminary Response to determine whether
`
`Petitioner has met the threshold standard of 35 U.S.C. § 314(a).
`
`A. Asserted Ground Based on Jinbo
`
`Petitioner challenges claims 1–8, 12, 15, and 16 as anticipated under
`
`35 U.S.C. § 102(b) by Jinbo. Pet. 18–29.
`
`Jinbo discloses “a pattern forming method used in the process of
`
`manufacturing semiconductor devices or the like.” Ex. 1004, 2. Jinbo states
`
`that a first resist pattern and a second resist pattern are arranged in a
`
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`prescribed relationship on a substrate (for example, a space of the second
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`resist pattern is arranged in an area corresponding to a space section of the
`
`first resist pattern on the substrate) for forming resist patterns, and the
`
`patterns can become the final resist pattern. Id. at 3. Jinbo’s process includes
`
`forming a first resist on a substrate (id. at 4), using a mask having a line and
`
`space pattern to expose the first resist to exposure light to create a first resist
`
`pattern 13b (id. at 4–5), insolubilizing the first resist pattern (id. at 5),
`
`forming a second resist (id.), and using a mask to form a second resist pattern
`
`15a (id.). Together the first resist pattern 13b and second resist pattern 15a
`
`form a resist pattern 17. Id. Jinbo’s Figure E, reproduced below, illustrates
`
`an exemplary product of such a process:
`
`
`
`Figure E depicts the product of Jinbo after a second resist developing. Id.
`
`Petitioner argues that Jinbo discloses every element of claim 1, relying
`
`inter alia on Jinbo Figures B, D, and E, and on the claim charts in the
`
`declaration of Richard A. Blanchard, Ph.D. (“the Blanchard Declaration”).
`
`Pet. 19–24, Ex. 1009, 21. Petitioner also argues that Jinbo discloses every
`
`element of independent claim 15, referring to its claim 1 arguments. Id. at
`
`28–29. With respect to claims 2–8, 12, and 16, Petitioner argues that Jinbo
`
`discloses each limitation of those dependent claims. Id. at 24–28, 29.
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`Patent Owner contends that Jinbo “cannot anticipate the challenged
`
`claims because Jinbo does not disclose several material limitations.” Prelim.
`
`Resp. 20. Specifically, Patent Owner contends that Jinbo does not disclose
`
`“patterning the second imaging layer in accordance with a second pattern”
`
`and “a second patterned layer having a second feature distinct from the first
`
`feature.” Id. First, Patent Owner argues that both of Jinbo’s imaging layers
`
`are patterned using the same mask, whereas claims 1 and 15 require that each
`
`imaging layer is patterned in accordance with its own pattern. Id. at 21–23.
`
`Second, Patent Owner argues, Jinbo does not disclose the second patterned
`
`layer having a second feature distinct from the first feature of the first
`
`patterned layer. Id. at 23–26. Finally, Patent Owner argues that Jinbo cannot
`
`anticipate dependent claims 2–8, 12, and 16 because Jinbo does not anticipate
`
`independent claims 1 and 15. Id. at 26.
`
`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.” Prelim. Resp. 22, citing Ex. 1004, 5. Translation issues
`
`notwithstanding,2 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. Id.
`
`
`2 Patent Owner notes that “the segment ‘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.” Prelim. Resp. 22 n.2.
`
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`Secondly, based on our claim interpretation, we do not find that the
`
`limitation of the “second patterned layer having a second feature distinct
`
`from the first feature” means that the second patterned layer must be a
`
`different geometric shape than the first feature. As noted above, we construe
`
`it to mean that the second feature is a separate element from the first feature,
`
`which Jinbo discloses in Figure 1E and in its description of the process used
`
`to form the respective first and second features. Ex. 1004, 3–7, Fig. 1E.
`
`Moreover, Patent Owner relies on its own Figure 5 to support its assertion
`
`that its first and second patterned layers are “distinct” (Prelim. Resp. 18), but
`
`does not explain persuasively why Jinbo’s Figure 1E, which shows
`
`differently-shaped first and second patterned layers, does not show first and
`
`second patterned layers that are “distinct” from one another. Id. at 24.
`
`Based on our review of Jinbo and contentions of both parties, we are
`
`persuaded that Petitioner has demonstrated, on this record, a reasonable
`
`likelihood of prevailing on its assertion that claims 1–8, 12, 15, and 16 are
`
`anticipated by Jinbo.
`
`B. Asserted Ground Based on Jinbo and Brownell
`
`Petitioner challenges claims 1–8, 12, 15, and 16 as unpatentable under
`
`35 U.S.C. § 103 over Jinbo in view of Brownell. Pet. 29–32. Specifically,
`
`Petitioner states that the “only difference between Challenge #1 and
`
`Challenge #2 is with regard to the term ‘stabilizing.’” Id. at 29. The
`
`limitation “stabilizing the first patterned layer” appears in independent claims
`
`1 and 15. Petitioner argues that Jinbo teaches two of the three examples
`
`presented in the Specification of the challenged patent as a possible step of
`
`stabilizing a patterned imaging layer, and “[t]o the extent the Board interprets
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`ʻstabilizing’ to require all three examples, such would be obvious.” Id. at 30.
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`Brownell, according to Petitioner, teaches all three examples. Id.
`
`Patent Owner argues that combining Jinbo with Brownell does not cure
`
`the deficiencies of Jinbo, in that Petitioner has failed to establish that Jinbo
`
`alone teaches “patterning the second imaging layer in accordance with a
`
`second pattern” and “a second patterned layer having a second feature
`
`distinct from the first feature.” Prelim. Resp. 27.
`
`The Board’s rules for AIA post-grant proceedings, including those
`
`pertaining to institution, are “construed to secure the just, speedy, and
`
`inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b); see also
`
`35 U.S.C. §§ 316(b), 326(b) (regulations for AIA post-grant proceedings take
`
`into account “the efficient administration of the Office” and “the ability of
`
`the Office to timely complete [instituted] proceedings”). Therefore, we
`
`exercise our discretion and do not institute a review based on the combination
`
`of Jinbo and Brownell for reasons of administrative necessity to ensure
`
`timely completion of the instituted proceeding. See 37 C.F.R. § 42.108(a).
`
`Moreover, Petitioner states that “to the extent the Board rules that
`
`‘stabilizing’ must include all three examples recited in the ’084 specification,
`
`the combination of Jinbo and Brownell renders claims 1–8, 12, 15, and 16
`
`obvious.” Pet. 32. As discussed in the claim interpretation section supra, we
`
`do not interpret the claim limitation “stabilizing” to require all three
`
`examples. Ex. 1001, 4:35–43. Accordingly, and particularly in view of
`
`Petitioner’s framing of this issue as contingent on our claim interpretation,
`
`we decline to institute review on the combination of Jinbo and Brownell.
`
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`C. Asserted Ground Based on Jinbo and McColgin
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`Petitioner challenges claim 9 as unpatentable under 35 U.S.C. § 103
`
`over Jinbo in view of McColgin. Pet. 32–34. Claim 9 further limits the
`
`stabilizing step of claim 1 with the language “wherein the stabilizing step (c)
`
`includes the step of using a silylation technique to stabilize the first patterned
`
`layer.” Pet. 32.
`
`McColgin teaches a silylation technique that produces resist patterns
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`“which have excellent etch resistance and superior thermal and dimensional
`
`stability.” Ex. 1006, 2:9–12.
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`Petitioner argues that substitution the silylation stabilization of
`
`McColgin for the plasma stabilization of Jinbo “would merely be the simple
`
`substitution of known elements to obtain predictable results.” Pet. 33. More
`
`specifically, Petitioner points to the “direct motivation from Jinbo,” i.e.
`
`teaching a desire to make the first resist layer “insoluble” (Ex. 1004, 5) and
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`encouraging use of different treatment methods for making the resist
`
`insoluble (id. at 6). Pet. 33.
`
`Patent Owner argues that combining Jinbo with McColgin does not
`
`cure the deficiencies of Jinbo, in that Petitioner has failed to establish that
`
`Jinbo alone teaches each and every element of claim 1, from which claim 9
`
`depends. Prelim. Resp. 27.
`
`As previously discussed, we are persuaded that Petitioner has
`
`demonstrated, on this record, a reasonable likelihood of prevailing on its
`
`assertion that Jinbo discloses every element of the independent claims.
`
`Based on our review of the references of record and the parties’ assertions,
`
`we are persuaded further that Petitioner is reasonably likely to show that
`
`dependent claim 9 is obvious over Jinbo and McColgin.
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`E. Asserted Ground Based on Jinbo and Matthews
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`Petitioner challenges claims 10 and 11 as unpatentable under 35 U.S.C.
`
`§ 103 over Jinbo in view of Matthews. Pet. 34–37. Claim 10 further limits
`
`the stabilizing step (c) of claim 1 to include “exposing the first patterned
`
`layer to radiation and heating the first patterned layer.” Claim 11 further
`
`limits the stabilizing step (c) of claim 1 to include “exposing the first
`
`patterned layer to radiation having a wavelength in a range from
`
`approximately 200 nanometers to approximately 400 nanometers, and
`
`heating the first patterned layer at a temperature ramped to approximately
`
`230 degrees Celsius.”
`
`Matthews teaches a technique that is capable of “hardening a positive
`
`photoresist by exposing a film of photoresist material to UV radiation while
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`subjecting the film to elevated temperatures.” Ex. 1007, 2:53–58. In this
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`capacity, Petitioner contends that Matthews describes using radiation “having
`
`wavelengths about 320 nm and below to cause the polymer to cross-link.”
`
`Pet. 36 (citing Ex. 1007, 3:57–61). In addition, Petitioner contends that
`
`Matthews discloses that “the temperature of the photoresist is controlled
`
`during the exposure to radiation,” and that a “typical range therefor being
`
`about 100°–200°C. and more usually, about 120° to about 200° C.” Pet. 36–
`
`37 (citing Ex. 1007, 4:52–57; 5:8–12).
`
`Petitioner argues that substitution of the hardening process of
`
`Matthews for the plasma stabilization of Jinbo “would merely be the simple
`
`substitution of known elements to obtain predictable results.” Pet. 35.
`
`Specifically, Petitioner points to the “direct motivation from Jinbo,” i.e.
`
`teaching a desire to make the first resist layer “insoluble” (Ex. 1004, 5) and
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`15
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`Patent 5,652,084
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`encouraging use of different treatment methods for making the resist
`
`insoluble (id. at 6). Pet. 35.
`
`Patent Owner argues that combining Jinbo with Matthews does not
`
`cure the deficiencies of Jinbo, in that Petitioner has failed to establish that
`
`either reference discloses the steps of claim 1, from which claims 10 and 11
`
`depend. Prelim. Resp. 28.
`
`As previously discussed, we are persuaded that Petitioner has
`
`demonstrated, on this record, a reasonable likelihood of prevailing on its
`
`assertion that Jinbo discloses every element of the independent claims.
`
`Based on our review of the references of record and the parties’ assertions,
`
`we are persuaded further that Petitioner is reasonably likely to show that
`
`claims 10 and 11 are obvious over Jinbo and Matthews.
`
`E. Asserted Ground Based on Jinbo, Brownell and Cooper
`
`Petitioner challenges claims 13 and 14 as unpatentable under 35 U.S.C.
`
`§ 103 over Jinbo in view of Brownell and Cooper. Pet. 37–40. Independent
`
`claim 13 requires, as is relevant here, “(b) patterning the first imaging layer
`
`in accordance with a first pattern to form a first patterned layer having a first
`
`disposable post,” and “(e) patterning the second imaging layer in accordance
`
`with a second pattern to form a second patterned layer having a second
`
`disposable post.” Pet. 37–39. Claim 14 depends from claim 13 and further
`
`recites “where the first and second features do not overlap.” Pet. 40.
`
`Cooper teaches sacrificial plugs, namely, that a first exemplary
`
`photoresist plug 22 “defines an area where a self-aligned contact will be
`
`formed between conductive members 16,” and that a second exemplary
`
`photoresist plug 24 “defines an area where an isolated contact will be
`
`formed.” Ex. 1008, 3:52–56.
`
`
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`16
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`
`Petitioner argues that, with respect to claim 13, one of ordinary skill in
`
`the art would have been motivated “to use the resist patterning technique of
`
`Jinbo to form sacrificial plugs because the technique of Jinbo further
`
`improves the resolution capabilities of the imagable material (i.e., the resist).”
`
`Pet. 39. With respect to claim 14, which depends from claim 13, Petitioner
`
`argues that claim 13 does not recite first and second features, but that “to the
`
`extent that the first and second features refer to the first and second
`
`disposable posts, Jinbo teaches that the first and the second features, which
`
`may be used as disposable plugs as taught by Cooper, do not overlap.” Id. at
`
`40.
`
`Patent Owner argues that the Petition “lacks any reasoning that would
`
`establish a reasonable likelihood that these three references teach that the
`
`second patterned layer is formed ‘in accordance with a second pattern.’”
`
`Prelim. Resp. 28.
`
`A patent composed of several elements “is not proved obvious merely
`
`by demonstrating that each of its elements was, independently, known in the
`
`prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
`
`“Although common sense directs one to look with care” at patent claims that
`
`combine “two known devices according to their established functions, it can
`
`be important to identify a reason that would have prompted a person of
`
`ordinary skill in the relevant field to combine the elements.” Id.; Unigene
`
`Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). As
`
`explained in KSR, an analysis regarding an apparent reason to combine
`
`known elements “should be made explicit.” KSR, 550 U.S. at 418.
`
`After discussing the sacrificial plug disclosures of Cooper, Petitioner
`
`then argues that “[o]ne of ordinary skill in the art would have been motivate
`
`
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`17
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`Patent 5,652,084
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`[sic] to use the resist patterning technique of Jinbo to form sacrificial plugs
`
`because the technique of Jinbo further improves the resolution capabilities of
`
`the imagable material.” Pet. 39. Petitioner also argues that it was known to
`
`one of ordinary skill in the art at the time of the invention “to use resist
`
`features as disposable placeholders to define and form openings in other
`
`material layers.” Pet. 37–38. These arguments do not, however, sufficiently
`
`articulate reasoning with a rational evidentiary underpinning explaining why
`
`an ordinary artisan would have incorporated the formation of a disposable
`
`post, such as, for example, the sacrificial plug as in Cooper, into the method
`
`of Jinbo. Bayer Healthcare Pharms., Inc. v. Watson Pharms., Inc., 713 F.3d
`
`1369, 1375 (Fed. Cir. 2013).
`
`Thus, Petitioner has not demonstrated a reasonable likelihood that it
`
`would prevail on the ground that claim 13 would have been obvious. Claim
`
`14 depends from claim 13, and therefore, Petitioner’s contentions suffer the
`
`same deficiencies with respect to claim 14.
`
`Based on our review of the references of record and the parties’
`
`assertions, we are not persuaded that Petitioner is reasonably likely to show
`
`that claims 13 and 14 are obvious in view of Jinbo, Brownell and Cooper.
`
`See 37 C.F.R. § 42.108(a).3
`
`F. Conclusion
`
`We conclude that Petitioner has demonstrated a reasonable likelihood
`
`of prevailing with respect to claims 1–12, 15, and 16 of the ’084 patent. We
`
`3 For purposes of this Decision, and based on our interpretation of the term
`“stabilizing,” we need not address the teachings of Brownell in connection
`with the obviousness analysis of claims 13 and 14. Because the asserted
`ground includes Brownell, we continue to include it as part of our overall
`analysis.
`
`
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`18
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`have not made a final determination under 35 U.S.C. § 318(a) with respect to
`
`the patentability of the challenged claims.
`
`In consideration of the foregoing, it is hereby:
`
`IV. ORDER
`
`ORDERED that trial is instituted as to claims 1–12, 15, and 16 of the
`
`’084 patent on the following grounds:
`
`1. Whether claims 1–8, 12, 15, and 16 are unpatentable under 35
`
`U.S.C. § 102(b) as anticipated by Jinbo;
`
`2. Whether claim 9 is unpatentable under 35 U.S.C. § 103(a) as
`
`obvious over Jinbo and McColgin; and
`
`3. Whether claims 10 and 11 are unpatentable under 35 U.S.C.
`
`§ 103(a) as obvious over Jinbo and Matthews.
`
`FURTHER ORDERED that the trial is limited to the grounds
`
`identified above, and no other grounds set forth in the Petition are authorized;
`
`and
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and 37
`
`C.F.R. § 42.4, notice is hereby given of the institution of a trial commencing
`
`on the entry date of this decision.
`
`
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`19
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`IPR2014-01030
`Patent 5,652,084
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`
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`PETITIONER:
`
`David O’Dell
`david.odell.ipr@haynesboone.com
`
`David McCombs
`david.mccombs.ipr@haynesboone.com
`
`
`
`PATENT OWNER:
`
`Andriy Lytvyn
`andriy.lytvyn@smithhopen.com
`
`Anton Hopen
`anton.hopen@smithhopen.com
`
`
`
`
`
`
`20
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`
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