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`571-272-7822
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`Paper No. 62
`Filed: November 30 , 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`RAYTHEON COMPANY,
`Patent Owner.
`____________
`
`Case IPR2015-01201
`Patent 5,591,678
`____________
`
`Before JO-ANNE M. KOKOSKI, JENNIFER MEYER CHAGNON, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`Paper No. 62
`Filed: November 30 , 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`RAYTHEON COMPANY,
`Patent Owner.
`____________
`
`Case IPR2015-01201
`Patent 5,591,678
`____________
`
`Before JO-ANNE M. KOKOSKI, JENNIFER MEYER CHAGNON, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
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`I.
`
`INTRODUCTION
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`§ 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons discussed herein, we determine that
`Petitioner has shown, by a preponderance of the evidence, that claims 1–18
`of U.S. Patent No. 5,591,678 (Ex. 1001, “the ’678 patent”) are unpatentable.
`A. Procedural History
`Sony Corporation (“Petitioner”) filed a Petition (Paper 2, “Pet.”) for
`inter partes review of claims 1–18 (“the challenged claims”) of the ’678
`patent. Petitioner included a Declaration of Dr. Richard A. Blanchard
`(Ex. 1002) to support its positions. Raytheon Company (“Patent Owner”)
`timely filed a Preliminary Response (Paper 5, “Prelim. Resp.”).
`Pursuant to 35 U.S.C. § 314(a), on December 2, 2015, we instituted an
`inter partes review of the challenged claims to determine whether claims 1,
`6, 7, 10, and 11 are unpatentable under 35 U.S.C. § 102 as anticipated by
`Bertin;1 whether claims 5, 12, and 13 are unpatentable under 35 U.S.C.
`§ 103 as obvious in view of Bertin and Morimoto;2 whether claim 9 is
`unpatentable under 35 U.S.C. § 103 as obvious in view of Bertin and Ying;3
`whether claims 1, 2, 4, 5, 10, 13, 14, 16, and 17 are unpatentable under
`35 U.S.C. § 103 as obvious in view of Morimoto; whether claims 8 and 18
`
`1 U.S. Patent No. 5,202,754, issued Apr. 13, 1993 (Ex. 1017).
`2 JP App. Pub. No. 64-18248, published Jan. 23, 1989. Morimoto is a
`Japanese-language reference (Ex. 1005). Citations to Morimoto herein are
`to the certified English translation submitted by Petitioner (Ex. 1006).
`3 U.S. Patent No. 3,864,819, issued Feb. 11, 1975 (Ex. 1016).
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`are unpatentable under 35 U.S.C. § 103 as obvious in view of Morimoto and
`Oldham;4 and whether claims 3 and 15 are unpatentable under 35 U.S.C.
`§ 103 as obvious in view of Morimoto and Bertin. Paper 6 (“Inst. Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 23, Paper 22 (redacted version), “PO Resp.”), along with a
`Declaration of Dr. Eugene A. Fitzgerald (Ex. 20195) to support its
`patentability positions. Petitioner filed a Reply (Paper 50, Paper 49
`(redacted version), “Pet. Reply”) to the Patent Owner’s Response. An oral
`hearing was held on October 13, 2016. A transcript of the hearing is
`included in the record. Paper 58 (“Tr.”).
`B. Related Proceedings
`The ’678 patent has been asserted in Raytheon Co. v. Samsung
`Electronics Co., No. 2:15-cv-00341 (E.D. Tex.), and Raytheon Co. v. Sony
`Kabushiki Kaisha, No. 2:15-cv-00342 (E.D. Tex.). Paper 3, 2; Pet. 1.
`The ’678 patent also has been challenged in Sony Corp. v. Raytheon Co.,
`Case IPR2016-00209 and Samsung Electronics, Co. v. Raytheon Co.,
`Case IPR2016-00739.
`C. The ’678 Patent
`The ’678 patent, titled “Process of Manufacturing a Microelectric
`Device Using a Removable Support Substrate and Etch-Stop,” relates to a
`method of fabricating a microelectronic device, in which the microelectronic
`
`4 U.S. Patent No. 4,681,718, issued July 21, 1987 (Ex. 1014).
`5 Pursuant to our authorization (Paper 39), Patent Owner also filed a
`Supplemental Declaration of Dr. Fitzgerald (Ex. 2019S).
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`device is moved from one support to another during fabrication. Ex. 1001,
`1:12–13. According to the ’678 patent, “[t]he invention permits
`microelectronic devices to be prepared using well-established, inexpensive
`thin-film deposition, etching, and patterning techniques, and then to be
`further processed singly or in combination with other such devices, into
`more complex devices.” Id. at 2:9–14. Figure 1 of the’678 patent is
`reproduced below.
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`Figure 1 is a process flow diagram of the method of the ’678 patent,
`schematically illustrating each stage of fabrication of a microelectronic
`device formed in accordance with the method. Id. at 3:48–50. As shown in
`box 20, first substrate 40 is provided, the first substrate including etchable
`layer 42, etch-stop layer 44, and wafer layer 46. Id. at 3:65–4:2. As noted in
`the ’678 patent, “[s]uch substrates can be purchased commercially,” or
`“prepared by applying well-known microelectronic techniques.” Id. at 4:2,
`4:22–23. In a preferred embodiment, etchable layer 42 is a layer of bulk
`silicon, etch-stop layer 44 is a layer of silicon dioxide, and wafer layer 46 is
`a layer of single crystal silicon. Id. at 4:3–15.
`Microelectronic circuit element 50 is formed in wafer layer 46, as
`shown in box 22. Id. at 4:37–52. The ’678 patent notes that “the present
`invention is not limited to any particular circuit element 50,” and, for
`example, “can include many active devices such as transistors,” or “may be
`simply a patterned electrical conductor layer that is used as an interconnect
`between other layers of structure in a stacked three-dimensional device.”
`Id. at 4:55–56, 4:47–51.
`Second substrate 58 is attached to the structure, as shown in box 24.
`Id. at 5:14–44. Second substrate 58 may comprise, for example, silicon or
`aluminum oxide, and optionally may include a microelectronic device
`deposited therein. Id. at 5:18–25. Etchable layer 42 is removed by etching,
`as shown in box 26. Id. at 5:45–6:9. The entire structure may be attached
`temporarily to base 62, which may be a piece of aluminum oxide
`(particularly, sapphire), to protect the structure against etch attack. Id. at
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`5:47–49. As described in the ’678 patent, the “etchant is chosen so that it
`attacks the etchable layer 42 relatively rapidly, but the etch-stop layer 44
`relatively slowly or not at all.” Id. at 5:52–54.
`“Back-side electrical connections are formed through the [exposed]
`etch-stop layer 44 (for direct back-side interconnects 56’) and through the
`etch stop layer 44 and the wafer layer [46] to the microelectronic circuit
`element 50 (for indirect front-side interconnects [56]),” as shown in box 28.
`Id. at 6:10–14. The connections are formed by patterning etch-stop layer 44
`using well-known patterning techniques. Id. at 6:14–17. Electrical
`conductor layer 70 may be deposited over etch-stop layer 44 and back side
`electrical connections 56, 56’. Id. at 6:44–49.
`As shown in box 30 of Figure 1, final structure 71 may be joined with
`another microelectronic device 72, to form a three-dimensional structure
`comprising structures 71, 72. Id. at 6:50–58, Fig. 2.
`D. Illustrative Claims
`Of the challenged claims, claims 1, 11, and 13 are independent.
`Claims 2–10 depend, directly or indirectly, from claim 1; claim 12 depends
`from claim 11; and claims 14–18 depend, directly or indirectly, from
`claim 13. Claims 1, 6, and 7 of the ’678 patent, reproduced below, are
`illustrative of the challenged claims:
`1. A method of fabricating a microelectronic device,
`comprising the steps of:
`furnishing a first substrate having an etchable layer, an
`etch-stop layer overlying the etchable layer, and a wafer
`overlying the etch-stop layer;
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`forming a microelectronic circuit element in the exposed
`side of the wafer of the first substrate opposite to the side
`overlying the etch-stop layer;
`attaching the wafer of the first substrate to a second
`substrate; and
`etching away the etchable layer of the first substrate
`down to the etch-stop layer.
`Ex. 1001, 8:5–16.
`6. The method of claim 1, wherein the second substrate
`contains a second microelectronic circuit element.
`Id. at 8:32–33.
`7. The method of claim 6, wherein the step of attaching
`includes the step of
`making an electrical contact from the microelectronic
`circuit element on the wafer of the first substrate to the second
`microelectronic circuit element on the second substrate.
`Id. at 8:34–39.
`
`II.
`
`ANALYSIS
`A. Claim Construction
`The ’678 patent is expired. When interpreting claims of an expired
`patent, our analysis is similar to that of a district court. In re Rambus, Inc.,
`694 F.3d 42, 46 (Fed. Cir. 2012); see also Black & Decker, Inc. v. Positec
`USA, Inc., RW, 646 Fed. App. 1019, 1024 (Fed. Cir. 2016) (holding that in
`an inter partes review, “[c]laims of an expired patent are given their
`ordinary and customary meaning in accordance with our opinion in Phillips
`v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)”). Specifically,
`claim terms are given their ordinary and customary meaning, as would be
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`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. Phillips, 415 F.3d at 1313–17. However,
`there is no presumption of validity, and we do not apply a rule of
`construction with an aim to preserve the validity of claims.
`In the Institution Decision, we declined to adopt Patent Owner’s
`proposed construction requiring the “second substrate” remain as “part of
`the complete device.” Inst. Dec. 7–9. In its Patent Owner Response, Patent
`Owner notes that it disagrees with the construction set forth in the Institution
`Decision “that the open-ended transition ‘comprising’ allows for subsequent
`removal of the second substrate.” PO Resp. 33 n.1. The Patent Owner
`Response, however, does not present additional arguments, nor does it
`discuss the additional exhibits submitted “in support of its proposed
`constructions” (id.). We view this portion of the Patent Owner Response as
`an improper attempt to incorporate arguments made in the Preliminary
`Response and/or the submitted exhibits. 37 C.F.R. § 42.6(a)(3); see also
`Tr. 31:19–32:9 (Patent Owner’s counsel agreeing that footnote 1 of the
`Patent Owner Response is incorporating the arguments from the Preliminary
`Response).
`In any event, Patent Owner’s argument in this regard is not
`persuasive. At the Oral Hearing, Patent Owner argued that it is clear from
`the Specification of the ’678 patent that the second substrate is a permanent
`substrate. Tr. 30:12–13. Patent Owner also argued that claim 9, which calls
`for an etching support, which is removable, distinguishes such an etching
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`support from the second substrate, which is permanent. Id. at 31:10–15.
`However, as discussed in the Institution Decision, nothing in the claims
`themselves precludes an additional step of later removing the second
`substrate or limits the claims to a device in which the second substrate
`necessarily is retained as part of the final device. See Georgia-Pacific Corp.
`v. U.S. Gypsum Co., 195 F.3d 1322, 1327 (Fed. Cir. 1999) (“The transitional
`term ‘comprising’ . . . is inclusive or open-ended and does not exclude
`additional, unrecited elements or method steps.” (quoting MPEP § 2111.03
`(6th ed. 1997)); see also In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
`1993) (limitations are not to be read from the specification into the claims).
`Based on the evidence in the complete record now before us, we
`remain unpersuaded that the proper construction of the claims requires the
`“second substrate” remain as “part of the complete device.”
`No issue in this Decision requires express construction of any other
`claim terms. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355,
`1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent
`necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`B. Principles of Law — Anticipation and Obviousness
`To establish anticipation, each and every element in a claim, arranged
`as recited in the claim, must be found in a single prior art reference.
`See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir.
`2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed.
`Cir. 2001). Although the elements must be arranged or combined in the
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`same way as in the claim, “the reference need not satisfy an ipsissimis verbis
`test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d
`1331, 1334 (Fed. Cir. 2009); accord In re Bond, 910 F.2d 831, 832 (Fed.
`Cir. 1990).
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`In that regard, an obviousness analysis “need not seek out precise
`teachings directed to the specific subject matter of the challenged claim, for
`a court can take account of the inferences and creative steps that a person of
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; accord In re
`Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). The level of
`ordinary skill in the art may be reflected by the prior art of record. See
`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC
`Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91
`(CCPA 1978).
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`We analyze the asserted grounds of unpatentability in accordance with
`those principles.
`C. Grounds Based, at Least in Part, on Bertin
`Petitioner asserts that claims 1, 6, 7, 10, and 11 are unpatentable under
`35 U.S.C. § 102 as being anticipated by Bertin. Pet. 2, 18–29. Petitioner
`further asserts that claims 5, 12, and 13 are unpatentable under 35 U.S.C.
`§ 103 as obvious over Bertin and Morimoto, and that claim 9 is unpatentable
`under 35 U.S.C. § 103 as obvious over Bertin and Ying. Id. at 2, 29–35.
`Patent Owner argues that Bertin is not available as a prior art reference
`because the inventors of the ’678 patent conceived and reduced the claimed
`method to practice prior to the filing date of Bertin. PO Resp. 24–30. We
`have reviewed the entire record before us, including the parties’ contentions
`and supporting evidence presented during this trial. For the reasons
`explained below, we determine that Petitioner has demonstrated, by a
`preponderance of the evidence, that claims 1, 5–7, and 9–13 are
`unpatentable.
`
`1. Whether Bertin Qualifies as Prior Art
`Petitioner asserts that Bertin is prior art under 35 U.S.C. § 102(e).
`Pet. 7. Section 102(e) states, in relevant part, that a “person shall be entitled
`to a patent unless . . . the invention was described in . . . a patent granted on
`an application for patent by another filed in the United States before the
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`invention thereof by the applicant for patent.”6 (emphases added). Bertin
`was filed on September 13, 1991, prior to the earliest possible filing date of
`the ’678 patent—January 19, 1993, which also is the date of constructive
`reduction to practice of the invention of the ’678 patent. See Ex. 1017, at
`[22]; Ex. 1001, at [63]; Hyatt v. Boone, 146 F.3d 1348, 1352 (Fed. Cir.
`1998) (“The filing of a patent application serves as . . . constructive
`reduction to practice of the subject matter described in the application.”).
`Thus, on its face, Bertin qualifies as prior art under 35 U.S.C. § 102(e).
`Patent Owner contends that the invention claimed in the ’678 patent
`was invented prior to the filing date of Bertin (i.e., prior to September 13,
`1991), and, thus, Bertin does not qualify as prior art. PO Resp. 24–30; see
`Ex. 1017, at [22]. In particular, Patent Owner contends that claims 1–5, 8–
`10, and 13–18 of the ’678 patent were invented no later than the end of 1990
`(PO Resp. 24, 26–27), and that claims 6, 7, 11, and 12 of the ’678 patent
`were invented no later than June of 1991 (id. at 24–25, 27–30). In support
`of its contentions, Patent Owner proffers declarations from the listed
`inventors of the ’678 patent—namely Ronald M. Finnila (Ex. 2015), Joseph
`J. Bendik (Ex. 2016), and Gerard T. Malloy (Ex. 2017). Patent Owner also
`provides several supporting exhibits (Exs. 2008–2011, 2036), and cites to
`the Declaration of Dr. A. Bruce Buckman (Ex. 2038), which maps each of
`
`6 Because the ’678 patent was filed before the enactment of the
`Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011)
`(“AIA”), the pre-AIA version of 35 U.S.C. § 102(e) applies in this trial.
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`the elements of claims 1–18 to its proffered evidence (id. ¶¶ 51–100,
`Appx. B1, B2). See PO Resp. 26–30.
`Petitioner bears the burden of persuasion that the challenged claims
`are unpatentable, which includes the burden of establishing that any
`reference upon which it relies constitutes prior art under 35 U.S.C. § 102.
`35 U.S.C. § 316(e); see Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1576
`(Fed. Cir. 1996) (holding that the challenger “bore the burden of
`persuasion . . . on all issues relating to the status of [the asserted reference]
`as prior art”). However, because Petitioner offered Bertin into evidence,
`which was filed before the constructive reduction to practice of the invention
`of the ’678 patent, Patent Owner bears the burden of producing evidence
`supporting a date of invention prior to the filing date of Bertin. Mahurkar,
`79 F.3d at 1576–77; see Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375, 1378–80 (Fed. Cir. 2015). Thus, Patent Owner can antedate
`Bertin by establishing (i) an actual reduction to practice before the filing
`date of Bertin, or (ii) conception before the filing date of Bertin followed by
`a diligent reduction to practice. Purdue Pharma L.P. v. Boehringer
`Ingelheim GMBH, 237 F.3d 1359, 1365 (Fed. Cir. 2001) (“To antedate . . .
`an invention, a party must show either an earlier reduction to practice, or an
`earlier conception followed by a diligent reduction to practice.”) (emphasis
`added) (internal citation omitted).
`
`Conception + Reasonable Diligence
`Patent Owner argues that, during the time period starting before the
`filing date of Bertin and ending when the claims were constructively reduced
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`to practice on January 19, 1993, the inventors diligently worked to reduce
`the invention to practice.7 PO Resp. 30.
`A party alleging diligence must account for the entire critical period.
`Griffith v. Kanamaru, 816 F.2d 624, 626 (Fed. Cir. 1987); Gould v.
`Schawlow, 363 F.2d 908, 919 (CCPA 1966). While “[a] patent owner need
`not prove the inventor continuously exercised reasonable diligence
`throughout the critical period[,] it must show there was reasonably
`continuous diligence.” Perfect Surgical Techniques v. Olympus Am., Inc.,
`No. 2015-2043, 2016 WL 6694956, at *3 (Fed. Cir. Nov. 15, 2016) (citing
`Tyco Healthcare Grp. v. Ethicon Endo-Surgery, Inc., 774 F.3d 968, 975
`(Fed. Cir. 2014); Monsanto Co. v. Mycogen Plant Sci., Inc., 261 F.3d 1356,
`1370 (Fed. Cir. 2001)).
`To satisfy the reasonable diligence requirement, “the work relied on
`must ordinarily be directly related to reduction to practice of the invention.”
`Naber v. Cricchi, 567 F.2d 382, 385–86 (CCPA 1977) (citing Anderson v.
`Scinta, 372 F.2d 523 (CCPA 1967)); Gunn v. Bosch, 181 USPQ 758 (BPAI
`1973); Moore v. Harris v. Hale, 92 USPQ 187 (BPAI 1951)) (holding that
`the work done directed at improving oxide and nitride layer deposition
`techniques generally applicable to all MNOS devices, not merely the
`drainsource protected device of the claimed invention, did not satisfy the
`requirement of reasonable diligence).
`
`7 The analysis of this argument assumes, without deciding, a date of
`conception prior to the prior art date of Bertin.
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`A party alleging diligence must provide corroboration with evidence
`that is specific both as to facts and dates. Gould, 363 F.2d at 920; Kendall v.
`Searles, 173 F.2d 986, 993 (CCPA 1949). “Sufficiency of corroboration is
`determined by using a ‘rule of reason’ analysis, under which all pertinent
`evidence is examined when determining the credibility of an inventor’s
`testimony.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1170 (Fed. Cir.
`2006) (internal citation omitted). The rule of reason does not dispense with
`the need for corroboration of diligence that is specific as to dates and facts.
`Gould, 363 F.2d at 920; Kendall, 173 F.2d at 993; see also Coleman v.
`Dines, 754 F.2d 353, 360 (Fed. Cir. 1985) (“The rule of reason . . . does not
`dispense with the requirement for some evidence of independent
`corroboration.”).
`Patent Owner must establish reasonable diligence for the critical
`period—from just before Bertin’s September 13, 1991 prior art date to
`January 19, 1993. Regarding diligence, Patent Owner asserts that “[e]ach
`[inventor] testifies that he was diligent and did not intend to suppress,
`conceal, or abandon the invention.” PO Resp. 30 (citing Ex. 2015 ¶ 9;
`Ex. 2016 ¶ 7; Ex. 2017 ¶ 6). Patent Owner also points to inventor statements
`that “they continued working on the
`[8] through the end of their
`time at Hughes.”9 Id. (citing Ex. 2015 ¶ 11; Ex. 2016 ¶¶ 10, 18–24, 33–36;
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`8
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`.” See Ex. 2015 ¶ 18.
`9 The application leading to the ’678 patent was originally assigned to
`Hughes Aircraft Company. It was later assigned to Raytheon.
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`Ex. 2017 ¶ 11). Patent Owner also proffers Mr. Bendik’s laboratory
`notebook (Ex. 2014; see Ex. 2016 ¶¶ 33–36) to corroborate the inventors’
`testimony in this regard, as well as evidence of Hughes’s spending and/or
`targeted spending on the
` from 1990 through 1993. PO Resp.
`30 (citing Ex. 2010, 40; Ex. 2011, 11).
`The statements in the inventor declarations, upon which Patent Owner
`relies, each includes a generic statement of diligence, and is not sufficient to
`support a finding of reasonable diligence. For example, Mr. Finnila
`declares, “[f]rom the time that I conceived the method described in Claims
`1–5, 8–10, and 13–18 of the ’678 Patent, I and others under my direction,
`exercised reasonable diligence to actually reduce that invention to practice,
`and at no time did I, or to my understanding, anyone intend to abandon,
`suppress or conceal my invention.” Ex. 2015 ¶ 9. Mr. Bendik’s Declaration
`and Mr. Malloy’s Declaration each includes a similar statement. Ex. 2016
`¶ 7; Ex. 2017 ¶ 6. Also, Dr. Buckman’s Declaration, admittedly, does not
`discuss diligence. See Ex. 1027 (Dr. Buckman’s deposition testimony),
`7:16–24.
`Patent Owner’s evidence that the inventors “continued working”
`throughout the critical period (PO Resp. 30) also is not sufficient to support
`a finding of reasonable diligence. Much of the cited testimony is not
`specific to the claimed invention, but is directed more generally, for
`example, to “improve[ment of] semiconductor devices . . . for use in, e.g.,
`
`(Ex. 2015 ¶ 11). See also Ex. 2016 ¶¶ 10
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`), 24
`(describing general research associated with the
`(“I continued investigating wafer uniformity and improvements”); Ex. 2017
`¶ 11 (“we continued to make and test devices on an ongoing basis to
`improve the commercial viability of bonded silicon based devices”). Other
`cited testimony is directed to times before the critical time period. See, e.g.,
`Ex. 2016 ¶¶ 18–23. Finally, we are not persuaded that evidence of Hughes’s
`spending and/or targeted future spending is sufficient to support a finding of
`reasonable diligence. In any event, Patent Owner’s evidence in this regard is
`directed to work on the
` as a whole, rather than on continued
`reduction to practice of the specific claimed invention. Additionally, none
`of this testimony is specific as to facts and dates during the critical period.
`See, e.g., Ex. 2016 ¶ 22 (“I also worked on bonded silicon wafers that were
`already joined together when I received them (from 1990 to 1993).”).
`Further, even if we were persuaded that the information presented in
`Mr. Bendik’s laboratory notebook was sufficient to corroborate the
`inventors’ testimony regarding diligence, the notebook covers only the time
`between January 1992 and October 1993. See Ex. 2014; Ex. 2016 ¶ 33. The
`time period of September 1991 to January 1992 is not covered. Further still,
`there is no evidence in the record as to activities regarding the drafting and
`filing of the patent application, between the time the invention disclosures
`were submitted (August, 9, 1990 (Ex. 2008); November 20, 1992
`(Ex. 2009)) and the filing date of the patent application (January 19, 1993
`(Ex. 1001, at [63])).
`
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`Having considered Patent Owner’s evidence, we are not persuaded
`that Patent Owner has met its burden of coming forward with sufficient
`evidence to support a finding of reasonable diligence. We, therefore, turn to
`the question of whether the invention was actually reduced to practice prior
`to Bertin’s filing date.
`
`Actual Reduction to Practice
`Patent Owner contends that the invention set forth in claims 1–5,
`8–10, and 13–18 of the ’678 patent was actually reduced to practice no later
`than the end of 1990 (PO Resp. 24, 26–27), and that the invention set forth
`in claims 6, 7, 11, and 12 of the ’678 patent was actually reduced to practice
`no later than June of 1991 (id. at 24–25, 27–30).
`Reduction to practice is a question of law predicated on subsidiary
`factual findings. Brown v. Barbacid, 276 F.3d 1327, 1332 (Fed. Cir. 2002).
`A party seeking to establish an actual reduction to practice must satisfy a
`two-prong test: (1) the party must construct an embodiment or perform a
`process that satisfies every element of the claim at issue, and (2) the
`embodiment or process must operate for its intended purpose. In re Steed,
`802 F.3d 1311, 1318 (Fed. Cir. 2015) (citing In re Omeprazole Patent Litig.,
`536 F.3d 1361, 1373 (Fed. Cir. 2008)); Cooper v. Goldfarb, 154 F.3d 1321,
`1327 (Fed. Cir. 1998). “The inventor must also have ‘contemporaneous
`recognition and appreciation of the invention’ represented by the claims.”
`Purdue, 237 F.3d at 1365–66 (quoting Estee Lauder Inc. v. L’Oreal, S.A.,
`129 F.3d 588, 593 (Fed. Cir. 1997)).
`
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`Where the “invention in issue is a method of making a product . . . [it]
`is not reduced to practice until it is established that the product made by the
`process is satisfactory.” Birmingham v. Randall, 171 F.2d 957, 958 (CCPA
`1948). Testing usually is required except in cases of extremely simple
`inventions. Yorkey v. Diab, 601 F.3d 1279, 1286 (Fed. Cir. 2010) (citing
`Mahurkar, 79 F.3d at 1578).
`It is well settled that an inventor’s testimony alone is insufficient to
`establish an earlier reduction to practice. Medichem, S.A., 437 F.3d at 1170.
`Instead, a party seeking to prove an actual reduction to practice must proffer
`evidence corroborating that testimony. Id. As discussed above,
`“[s]ufficiency of corroboration is determined by using a ‘rule of reason’
`analysis.” Id. (internal citation omitted). Corroboration may be testimony
`of a witness, other than the inventor, to the actual reduction to practice, or it
`may consist of evidence of surrounding facts and circumstances independent
`of information received from the inventor. Id.
`
`Claims 1–5, 8–10, and 13–18 (Alleged 1990 Invention Date)
`Patent Owner contends that claims 1–5, 8–10, and 13–18 were
`actually reduced to practice no later than the end of 1990. PO Resp. 26–27.
`In this regard, Patent Owner proffers testimony from inventors of the ’678
`patent, as well as documentary evidence, including the 1990 Invention
`Disclosure (Ex. 2008), the
` (Ex. 2010), and a White Paper
`(Ex. 2036).
`
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`Inventors’ Testimony
`In his Declaration, inventor Mr. Finnila states:
`I and others under my direction performed each and
`every step of the method of fabricating a microelectronic device
`that is stated in Claims 1–5, 8–10, and 13–18 of the ’678 patent
`in 1990, and no later than December 1990. I understand this is
`also known as an actual reduction to practice of my invention.
`At that time I and others under my direction performed a
`method that meets all the limitations of these claims and I
`determined that the method would work for its intended
`purpose. That purpose included protecting fragility while
`permitting access to the backside of the microcircuit and
`producing a device with improved performance.
`Ex. 2015 ¶ 7; see id. ¶ 25. Mr. Finnila further describes how he “conceived
`of a method for making a microelectronic device using a bonded silicon
`wafer that included a first support substrate of silicon, an etch stop of silicon
`dioxide, and a wafer layer of silicon,” and “described these and other details
`of [his] ideas in an invention disclosure that [he] prepared on or about
`August 9, 1990” and “in an annual report entitled
`
`Id. ¶¶ 13–14; Ex. 2008;
` reports “were published by
`Ex. 2010. According to Mr. Finnila, the
`Hughes in the early part of each year and were used to describe work that
`had been done in the previous year and the plan for the current year.”
`Ex. 2015 ¶ 14; see id. ¶ 15. Mr. Finnila also declares that “[w]hile the
`reports contained plans for future work, . . . that, as a matter of
`policy, devices and processes described in the
` reports were reduced to
`practice before being included in the reports.” Id. ¶ 15.
`
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` masks were used to “process
`According to Mr. Finnila,
`bonded silicon wafers that had substrates, etch stops, and wafer portions in
`which [they] made microcircuits” and “[e]ach bonded silicon wafer was then
`transferred to a second substrate such that the front surface of the wafer was
`attached to the second substrate,” and the “substrate of the bonded silicon
`wafer was then etched away to expose microcircuit elements through the
` chips. Id. ¶ 16. Mr. Finnila
`backside of the wafer,” thus forming
`indicates that “at least one lot of the
` ‘completed processing in late
`1990.’” Id. ¶ 37 (citing Ex. 2010, 41).
`Mr. Finnila also describes a “White Paper” (Ex. 2036) sent to
`
`.” Ex. 2015 ¶¶ 21–24. According to Mr. Finnila, by the time the
`White Paper was sent in November 1990, “[he] and [his] colleagues had full
`confidence that our method would work to create the device described in the
`White Paper.” Id. ¶ 24 (citing Ex. 2036, 5).
`Mr. Finnila refers to the 1990 Invention Disclosure (Ex. 2008) and
`testifies that “[t]he 1990 Invention Disclosure indicates that a device was not
`actually constructed prior to the disclosure date.” Ex. 2015 ¶ 38. However,
`he further testifies that he “recall[s] that [his] method was practiced in 1990
`by Hughes Aircraft under my direction as described in the
`,” and
`references several portions of the 1990 Invention Disclosure and the
` to support this recollection. Id. ¶ 40; see id. ¶¶ 41–50 (citing
`Ex. 2008, 1–2, 4–5; Ex. 2010, 40–45). For example, Mr. Finnila testifies
`that “the
` describes a ‘
` fabricated from bonded
`
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`silicon wafers,’” which is the same as the technology discussed in the 1990
`Invention Disclosure. Id. ¶ 41 (citing Ex. 2010, 41). He points to dis
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