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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SONY CORPORATION,
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`Petitioner,
`
`V.
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`RAYTHEON COMPANY,
`
`Patent Owner.
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`Case IPR2015—01201
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`U.S. Pat. No. 5,591,678
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`
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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
`
`U.S. Pat. No. 5,591,678
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
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`IPR20 l 5 —01201 — PUBLIC VERSION (NON—CONFIDENTIAL)
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`TABLE OF CONTENTS
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`PETITIONER’S UPDATED EXHIBIT LIST ....................................................... .. iv
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`INTRODUCTION ......................................................................................... .. 1
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`GROUND 4 SHOULD BE ADOPTED: MORIMOTO RENDERS
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`CLAIMS 1-2, 4-5, 10, 13-14, AND 16-17 UNPATENTABLE ................... .. 1
`
`A.
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`B.
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`C.
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`D.
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`E.
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`F.
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`Raytheon’s Argument that Etching was Known to Be Superior
`to CMP Proves Obviousness .............................................................. .. 2
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`It Was Obvious To Include an Etchant in CMP Slurries .................... .. 4
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`A Person of Ordinary Skill Knew How To Use an Etch-Stop
`Layer ................................................................................................... .. 8
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`Raytheon’s Argument Concerning the “Etchable” and “Etch-
`Stop” Layers of Morimoto Ignores the Obviousness
`Combination ........................................................................................ .. 9
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`All CMP/Etching References Are Prior Art ....................................... .. 9
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`Secondary Considerations Support Obviousness ............................. .. IO
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`IV. GROUNDS 2-3 AND 5-6 ALSO SHOULD BE ADOPTED .................... .. 30
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`CONCLUSION ........................................................................................... .. 31
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`CERTIFICATE OF WORD COUNT ................................................................... .. 33
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`CERTIFICATE OF SERVICE .............................................................................. .. 34
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`PETITIONER’S UPDATED EXHIBIT LIST
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`Eglfiit
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`Description
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`1001
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`U.S. Patent No. 5,591,678 (“the ’678 patent”).
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`1002
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`Declaration of Dr. Blanchard.
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`1003
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`Hamaguchi, et al. “NoVel SOI Technology Using Preferential
`Polishing”, NEC Research Notes 1480 (70), 1987.
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`1004
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`H005
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`Certified Translation of Hamaguchi.
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`Japanese Unexamined Patent Application Publication No. 64-18248,
`published January 23, 1989 (“Morimoto”).
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`1006
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`Certified translation of Morirnoto.
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`1007
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`U.S. Pat. No. 5,244,534 (“Yu”).
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`1008
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`1009
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`1010
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`U.S. Pat. No. 4,910,155 (“Cote”).
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`U.S. Pat. No. 5,064,683 (“Poon”).
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`U.S. Pat. No. 5,069,002 (“Sandhu”).
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`
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`. 5,189,500 (“Kusunoki”).
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`1012
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`1013
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`U.S. Pat. No. 5,066,993 (“Miura”).
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`U.S. Pat. No. 5,080,730 (“Wittl<ower”).
`
`U.S. Pat. No. 4,681,718 (“Oldham”).
`
`e——“*’|
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` U.S. Pat. No. 5,202,754 (“Bertin”).
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`Excerpt from Dictionary of Electronics, Harper-Collins, 2004 (p.
`152).
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`U.S. Pat. No. 4,982,266 (“Ying”).
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`__n1
`J
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`1018
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`U.S. Pat. App. Ser. No. 07/760,041 (“Bertin App.”), filed Sept. 13,
`1991.
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`Description
`
`_l
`U.S. Pat. App. Ser. No. 08/006,120, Amendment ofJune 16, 1994.
`1019
` Independent claim comparison for the ’678 patent.
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`U.S. Pat. App. Ser. No. 08/006,120 (application with claims).
`
`
`
`:--t G[Ul\3
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`Letter from J. Abrarnic of Feb. 5, 2016 to counsel for Sony.
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`Letter from T. Filarski of July 15, 2015 to counsel for Sony.
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`1024
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`1025
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`Declaration of J. Seraphine in support of motion for admission pro
`hac Vice.
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`Declaration of J. Zweig in support of motion for admission pro hac
`Vice.
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`1026
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`Deposition transcript of Eugene A. Fitzgerald (May 6, 2016).
`
`1027
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`Deposition transcript of A. Bruce Buckman (May 5, 2016).
`[PROTECTIVE ORDER MATERIAL — (ITAR) ~——— SEALED]
`I Deposition transcript ofRonald M. Finnila (May 16, 2016).
`1028
`[PROTECTIVE ORDER MATERIAL ———- (ITAR) —— SEALED]
`Deposition transcript of Joseph J. Bendik (May 17, 2016).
`[PROTECTIVE ORDER MATERIAL — (ITAR) —— SEALED]
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`
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`Deposition transcript of Gerald T. Malloy (May 27, 2016).
`[PROTECTIVE ORDER MATERIAL —— (ITAR) — SEALED]
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`INTRODUCTION
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`Years before the inventors filed the first application leading to the ’678 patent,
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`two other research groups filed disclosures with nearly identical methods. The
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`Morimoto publication, filed in 1987, differs from claim 1 of the ’678 patent only in
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`the choice of an equivalent thinning technology. The Bertin patent, filed in 1991,
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`does not differ at all: Raytheon argues only prior invention with respect to Bertin.
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`The efforts leading to the ’678 patent were neither sufficiently early, nor sufficiently
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`different, to justify a monopoly over the claimed methods. Claims 1-18 should be
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`found unpatentable.
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`GROUND 4 SHOULD BE ADOPTED: MORIMOTO RENDERS
`CLAIMS 1-2, 4-5, 10, 13-14, AND 16-17 UNPATENTABLE
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`Morimoto renders claims 1-2, 4-5, 10, 13-14, and 16-17 unpatentable
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`regardless of Raytheon’s claimed invention date. As described in the petition,
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`Morimoto discloses nearly all steps of these claims. Morimoto begins with the same
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`three-layer substrate as the ’678 patent.
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`(Ex.2019, 1[63)(Ex.1002, 1[183)(Ex.1026,
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`68:41-21). Morimoto forms microelectronic circuit elements in a wafer layer of the
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`substrate, attaches a support substrate to it, removes a base silicon layer from the
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`first substrate, and accesses the backside of the wafer layer by patterning the silicon
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`dioxide layer—just like the ’678 patent.
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`(Petition:35-57). Morimoto differs from
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`claim 1 only by specifying chemical—mechanical polishing (“CMP”) instead of
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`“etching”. Etching, however, was obvious to use in Morimoto, either as a substitute
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`for CMP or as part of the CMP process itself. (Petition:4l-49).
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`Raytheon makes five main arguments in response, discussed in §§A—E below,
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`but none of them are persuasive.
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`A. Raytheon’s Argument that Etching was Known to Be Superior to CMP
`Proves Obviousness
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`In the petition, Sony demonstrated that claim 1 was obvious as the
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`“substitution of a known alternative (etching) into a known base system (Morimoto)
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`for the same function (thinning), with no unpredictable results”.
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`(Petition:47).
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`In
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`response, Raytheon argues that CMP and etching are “not
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`interchangeable”
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`(POR:33) because etching was known to be better than CMP in many respects. This
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`argument, however, makes etching more obvious to use, not less.
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`Specifically, Raytheon explains that etching was known to have superior
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`selectivity and to be faster, more economical, and cleaner.
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`(POR:38-41).
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`Raytheon’s expert, Dr. Fitzgerald, testified at his deposition that these advantages
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`were well—known during the relevant time:
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`Q. I understand your testimony to be that a person of ordinary skill in
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`the relevant time would have recognized distinct differences between
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`CMP and etching, is that right?
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`A. Correct.
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`Q. And those are the differences you discuss in your declaration?
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`A. Yeah. I break that down at different performance metrics, if you
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`will.
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`Q. Isn’t it true, Dr. Fitzgerald, that based on those differences, a
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`person of ordinary skill in the relevant time frame would have
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`concluded that CMP is actually the better method to remove the base
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`substrate in an SOI substrate?
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`A. That CMP is better?
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`Q. Uh—huh.
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`A. No.
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`Q. Why not‘?
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`A. Well, because, you know, primarily the selectivity to a standard
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`CMP at the time and another thing is the rate at which it removes
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`material.
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`Q. But a person of ordinary skill in the art during the relevant time
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`frame wouldn’t have known that, would they?
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`A. Well, of course they would know that. Why wouldn’t they know
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`that?
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`(Ex. 1026,
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`58:6—59:7)(see
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`also
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`12:4-15:7, Ex.20l9,
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`‘fl‘fll7,32)(defining Dr.
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`Fitzgera1d’s understanding of “relevant time frame” and “person of ordinary skill”).
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`Dr. Fitzgerald makes Sony’s point: A person of skill knew that etching was better
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`than CMP, and this knowledge would have guided a person of ordinary skill toward
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`etching, not away from it.
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`Raytheon’s argument—that etching is not equivalent to CMP because “CMP
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`would not be used to replace etching in the patented methods” (POR:37, see also 41,
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`3)—is precisely backward. The issue is not whether “CMP would replace etching
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`in the patented methods”, but whether it was obvious that etching could be used as
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`an alternative to CMP in Morimoto. Raytheon’s demonstration of the known
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`advantages of etching serves only to demonstrate the obviousness of etching in
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`Morimoto’s process.
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`Raytheon’s other argument—that etching would not be a substitute for CMP
`because the Miura and Kusunoki references do not show that etching and CMP are
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`equivalent in every respect (POR:55-56}—is similarly flawed. The relevant test is
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`not whether CMP and etching are equivalent in every respect, but whether one
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`known technique may be substituted for another, with predictable results. See KSR
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`Int ’l Co. v. Teleflex, Inc, 550 U.S. 398, 416 (2007). Raytheon demonstrated that
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`etching was both known andpredictably better. The substitution ofetching for CMP
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`in Morimoto was obvious,
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`B. It Was Obvious To Include an Etchant in CMP Slurries
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`Etching was further obvious to use in Morimoto, because it was obvious to
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`include an etchant as part of a CMP slurry. This was demonstrated by the testimony
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`of Dr. Blanchard supported by the Hamaguchi, Yu, Cote, Poon and Sandhu
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`references. (Ex. 1002, 11111 78-194). Raytheon makes a number of arguments that are
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`difficult to reconcile with the evidence.
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`With respect to the Hamaguchi reference, Raytheon asserts (without citation)
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`that “Hamaguchi describes how conventional CMP slurries do not work selectively
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`enough”. (POR:47). This is incorrect. Hamaguchi does not criticize “conventional
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`CMP” as Raytheon suggests. (Ex.l004, p. 001, §l). Nor does Hamaguchi describe
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`preferential polishing with amines as non-conventional. Rather, Hamaguchi
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`describes preferential polishing as background, citing reference “6” (reference 6 is a
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`1985 publication by the same author, as shown in Exhibit 1003, p. 004). This
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`suggests that using an amine etchant within a CMP slurry was not an outlier, but a
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`well—known technique in 1987. (Id).
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`Furthermore, even ifRaytheon’s argument were factually correct, Hamaguchi
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`still says that using an etchant in a CMP slurry is advantageous.
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`(Ex.l0O4, p.O0l
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`§l). This statement is made in a context very similar to that of Morimoto and the
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`’678 patent: removing a silicon layer from an SOI substrate, where the “field oxide
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`layers, which are provided in thegdevice layers for separating individual transistors,
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`can serve as processing stoppers.” (Ex.l0O4, p. 001, §1)(Ex.1026, 6824-21). Thus,
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`it was obvious to use an etchant in Morimoto’s CMP process.
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`Raytheon next argues that the etchant described in Hamaguchi, as well as the
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`etchants described by Yu and Cote, are not really etching silicon, but rather oxidizing
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`it. (POR:48,50,5 1). This argument fails because the ’678 patent’s own KOH etching
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`(Ex.l0O1, 5:52-63) also works by oxidizing silicon. (Ex.l026, 55:21-23) (“Q How
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`does potassium hydroxide etching work at the surface of silicon? A. It oxidizes it.”).
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`Dr. Fitzgerald’s declaration implies that, after oxidation, CMP slurries do not
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`dissolve material.
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`(Ex.20l9, 11125). But when asked whether the oxidized silicon
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`components are dissolved in CMP slurry, Dr. Fitzgerald confessed “I have no idea”.
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`(Ex. 1026, 40:22-42:21).
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`Despite the similarity of chemical action between etching alone and CMP,
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`Raytheon nevertheless argues that CMP removes material mechanically, and thus
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`cannot be said to be “etching”. (POR:-48, 54). There is indeed a mechanical element
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`to CMP, but even Raytheon’s evidence does not claim that CMP is exclusively
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`mechanical. For example, Raytheon’s I995 Nanz reference (Ex.2029) states “[t]he
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`most important topics for modeling of CMP include the removal rate, which consists
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`of a mechanical as well as a chemical contribution.” (Ex.2029, p. 0007,
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`conclusion)‘ Raytheon’s 1995 Pietsch reference (Ex.2033) found “a dominant
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`chemical action of CMP under usual conditions. . ..” (Ex.2033, 0007, under
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`“Discussion”). Raytheon’s 1994 Pietsch reference (EX.2034) states that “the
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`polishing first removes the thin oxide layer and then chemomechanically etches the
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`Si itself.” (Ex.2034, p. 0002, top of right column). The reference goes on to discuss
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`different pH regions for CMP, within which either abrasion or etching becomes the
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`dominant removal mechanism.
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`(EX.2034, p. 0003, right column, middle).
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`Thus, Raytheon’s own evidence shows that etching was used with CMP
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`slurries, in accord with the Hamaguchi, Yu, Cote, Poon and,Sandhu references. Dr.
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`Fitzgerald claims that all five of these references are “incorrect”. (Ex. 1026, 54:17-
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`I All emphasis in quotations is added unless otherwise stated.
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`IPR201 5-01201 — PUBLIC VERSION (NON—CONFlDENTlAL)
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`55:20). This, however, is just another way of saying that his opinion is inconsistent
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`with the prior art. Dr. Blanchard’s opinion (Ex.l002, 11155), in contrast, agrees with
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`the prior art: CMP slurries were known to employ etching. See Velander v. Garner,
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`348 F.3d 1359, 1371 (Fed. Cir. 2003)(The Board was justified in crediting the expert
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`testimony that was more consistent with the prior art).
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`Lastly, Raytheon argues that the teachings of five references, Hamaguchi, Yu,
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`Cote, Poon and Sandhu, should not be applied to Morimoto’s technique because they
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`relate to processing of laterally inhomogeneous layers (POR:47,49,50,5l,53,54),
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`where Morimoto’s technique involves a homogeneous layer. Citing Dr. Fitzgerald’ s
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`testimony that an etchant would attack laterally inhomogeneous structures at
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`different rates, thus creating unevenness, Raytheon concludes that the references
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`“would not suggest to a PHOSITA that the method(s) described would apply to a
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`homogenous substrate as taught in Morimoto”.
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`(POR:47). But this is incorrect.
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`First, Hamaguchi explains exactly how the etching component can work with a
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`laterally inhomogeneous layer. (Ex.1004, p. 003, top). Moreover, Raytheon admits
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`that Morimoto uses a “homogeneous substrate”. (POR:47). Thus, any problems that
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`would occur when etching inhomogeneous layers would not exist with Morimoto.
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`And, because etching was known to outperform CMP (Ex. 1026, 58:6-59:7) (§II.A
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`above), a worker of skill would be motivated to use etching on Morimoto’s
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`homogeneous
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`layer, notwithstanding complexities
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`that arise when etching
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`inhomogeneous layers.
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`C. A Person of Ordinary Skill Knew How To Use an Etch-Stop Layer
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`Raytheon suggests that a person of ordinary skill would not have known how
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`to use an etch-stop layer. (POR:56, 59). Raytheon’s suggestion is incorrect: etch-
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`stop layers were well-understood in the art. For example, Kusunoki, Hamaguchi and
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`Bertin all describe etching processes that use etch—stop layers. (Ex.1011, 2:63—3:4,
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`2:47—48)(Ex.1002, 1l193)(Ex.l004, p. 001)(Ex.l0l7, 5:10-22).
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`Morimoto itself suggests an etch—stop layer. Dr. Fitzgerald testified that
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`Morimoto teaches away from an etch—stop layer “by suggesting time as a measure
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`to stop CMP”.
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`(Ex.2019, 1194). The section of Morimoto referring to timing,
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`however, discusses the “problems to be solved by the invention”.
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`(Ex.l006, p.
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`002)(Ex. 1026, 61:11-19). It is difficult to construe what Morimoto calls a “problem”
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`as a “teaching” that would lead someone toward that problem. Furthermore,
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`Morimoto avoids timing (thereby solving the “problem to be solved”) by using the
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`SiO2 layer to stop CMP.
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`(Ex.1002, 1l180). Morimoto does not say that polishing
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`must be manually stopped, but rather that “polishing stops” because the SiO2 layer
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`is present:
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`Since the buried oxidefilm layer 12 is present, chemical mechanical
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`polishing stops at the lower surface of the buried oxide film layer.
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`(Ex. 1006, p. 002) (see also z'd., p. 003)(“[A] buried insulating layer is formed across
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`the entire surface of the substrate... and thus chemical mechanical polishing from
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`the back surface of the semiconductor substrate stops at the lower surface of the
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`buried insulating layer ....”). Thus, the use of selective etching with an etch—stop
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`layer was both suggested by Morirnoto and well within ordinary skill.
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`D. Raytheon’s Argument Concerning the “Etchable” and “Etch-Stop”
`Layers of Morimoto Ignores the Obviousness Combination
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`Raytheon’s arguments that Morimoto does not disclose an “etchable layer” or
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`an “etch—stop” layer (POR:32) fail because it was obvious to use selective etching in
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`Morimoto’s process (either by itself or part of a CMP process). These arguments
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`are largely semantic, e. g. that Morimoto’s silicon base layer———although identical in
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`all relevant respects to that of the ’678 patent (EX.l002, ‘M157-71)(Ex.l026, 68:4-
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`21)-is not an “etchable” layer unless etching will later be performed. Because the
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`prior art renders use of etching with Morirnoto’s process obvious, Morimoto’s Si
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`and SiO;;
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`layers are “etchable” and “etch—stop” layers even under Raytheon’s
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`reasoning.
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`E. All CMP/Etching References Are Prior Art
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`F. Secondary Considerations Support Obviousness
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`As discussed in the petition and below,
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`the Bertin reference was filed
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`significantly earlier than the application leading to the ’678 patent, and anticipates
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`several claims. This is evidence of simultaneous invention, supporting obviousness.
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`See Geo M. Martin C0. V. Alliance Mach. Sys. Int'l LLC, 618 F.3d 1294, 1305-06
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`(Fed. Cir. 2010).
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`A. Legal Standards
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`Whenever a patent owner seeks to move a later-filed application to the front
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`of the inventorship line, certain requirements apply. First, the patent owner has the
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`burden of proof. See In re Steed, 802 F.3d 1311, 1317 (Fed. Cir. 2015). The patent
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`owner may carry that burden by showing either: an actual reduction to practice
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`before the reference’s filing date; or conception prior to the reference’s filing date,
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`followed by continuous diligence leading to an actual or a constructive reduction to
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`practice. Purdue Pharma L.P. v. Boehringer Ingelheim GmbH, 237 F.3d 1359, 1365
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`(Fed. Cir. 2001). Proof of invention date cannot be made by inventor testimony
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`alone, but must be corroborated. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1 157,
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`1160 (Fed. Cir. 2006).
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`IV. GROUNDS 2-3 AND 5-6 ALSO SHOULD BE ADOPTED
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`Grounds 2-3 and 5-6 render claims 3, 5, 8-9, 12-13 obvious. Raytheon argues
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`that ground 3 (Bertin in View of Ying for claim 9) should be rejected, because Ying
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`does not disclose relative etching. (POR:3 1). This argument is a red herring because
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`Bertin itself discloses relative etching.
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`(Ex.l017, 5:10—22)(Ex.lOO2, 1Hl90—91).
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`Claim 9 stands for the straightforward proposition that, when conducting etching,
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`the etchant should not dissolve the equipment that does the etching. This is common
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`sense, and it is disclosed expressly by Ying. (Ex.l0l6, 3:l2—68)(Ex.1002, W246,
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`248)
`
`Regarding grounds 2 and 6, Raytheon argues that Morimoto does not disclose
`
`etching, and so cannot be combined with Bertin. As discussed above in §II.C,
`
`however, Morimoto teaches an SiO2 layer that stops CMP. Because Bertin teaches
`
`the concept of relative etching, and because relative etchants were known for the
`
`Si/SiO2 system (Ex.l004, p. 00l)(Ex.lO26, 56:17-21), the use of Morimoto’s SiOg
`
`layer as an etch-stop layer was obvious under KSR Int’! Co. v. Teleflex, Inc., 550
`
`U.S. 398, 416 (2007).
`
`With respect to ground 5, Raytheon argues that a person of ordinary skill
`
`would not have wanted to create a “permanent” bond to Morimoto’s support
`
`substrate. Morimoto, however, already teaches using an epoxy to create a “bond”.
`
`(Ex.l006, p. 002). To the extent Raytheon is correct that an epoxy bond implies
`
`permanence, Morimoto alone teaches it. Degassing and curing were known standard
`
`steps for using an epoxy.
`
`(Ex.l002, 11233). Raytheon’s argument is thus without
`
`merit.
`
`CONCLUSION
`
`For the foregoing reasons, claims 1-18 should be canceled as unpatentable.
`
`Dated: June 20, 2016
`
`Respectfully submitted,
`
`
`
`IPR20l 5-01201 —~—— PUBLIC VERSION (NON—CONFlDENTlAL)
`
`/Matthew A. Smith/
`
`Matthew A. Smith (Reg. No. 49,003)
`Jennifer Seraphine (pro hac vice)
`Jacob Zweig (pro hac vice)
`Turner Boyd LLP
`702 Marshall Street, Suite 640
`Redwood City, CA 94063
`(650) 265-6109
`
`T. Cy Walker (Reg. No. 52,337)
`Robert Hails (Reg. No. 39,702)
`BakerHostetler
`
`1050 Connecticut Avenue, NW
`Suite 1 100
`
`Washington, D.C. 20036-5304
`(202) 861—1688
`
`Attorneys for Petitioner
`Sony Corporation
`
`
`
`IPR2015-01201 —— PUBLIC VERSION (NON—CONFIDENTIAL)
`
`CERTIFICATE OF WORD COUNT
`
`The word limit for this reply was set to 7,000 words by the Board’s June 15,
`
`2016 order (Paper 47). The undersigned hereby certifies that the present reply, from
`
`the heading “Introduction” to the last word before the signature line, contains 6,931
`
`words according to the Word processing software used to prepare the reply.
`
`Dated: June 20, 2016
`
`/Jacob S. Zwez'g/
`
`Jacob S. Zweig
`Attorney for Petitioner
`Sony Corporation
`
`
`
`IPRZO 1 5-0 1 201 ~———— PUBLIC VERSION (NON-CONFIDENTIAL)
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on June 20, 2016, I served a copy of Petitioner’s Reply
`
`to Patent Owner’s Response, together with Exhibits 1026 through 1030, filed
`
`therewith, on counsel for patent owner at the following email addresses:
`
`tfilarski@steptoe.com, sschlitter@steptoe.com, dstringf1eld@steptoe.com,
`
`678IPR@steptoe.com, and jabramic@steptoe.com.
`
`Dated: June 20, 2016
`
`/Jacob S. Zwei
`Jacob S. Zweig
`
`Attorney for Petitioner
`Sony Corporation
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