Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper No. 9
`Filed: May 4, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NVIDIA CORPORATION,
`Petitioner,
`
`v.
`
`SAMSUNG ELECTRONICS COMPANY, LTD.,
`Patent Owner.
`____________
`
`Case IPR2016-00134
`Patent 8,252,675 B2
`____________
`
`
`
`Before JAMESON LEE, PATRICK R. SCANLON, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108(a)
`
`
`
`
`
`

`
`IPR2016-00134
`Patent 8,252,675 B2
`
`
`A. Background
`
`I. INTRODUCTION
`
`On November 4, 2015, a Petition (Paper 2, “Pet.”) was filed to
`
`institute inter partes review of claims 1–8 and 10–15 of U.S. Patent
`
`No. 8,252,675 B2 (Ex. 1101, “the ’675 patent”). Patent Owner filed a
`
`Preliminary Response (Paper 6, “Prelim. Resp.”) on February 16, 2016.
`
`Institution of inter partes review is discretionary. See 35 U.S.C.
`
`§ 314(a); 37 C.F.R. § 42.108(a). In the circumstances of this case, as
`
`explained below in Section II-A, we exercise our discretion to not institute
`
`inter partes review on any of claims 1–8 and 10–15 of the ’675 patent on
`
`any ground. Additionally, in the alternative, and as explained below in
`
`Section II-B, we reject the petition because substantially the same prior art
`
`previously was presented to the Board, by Petitioner, in IPR2015-01318.
`
`See 35 U.S.C. § 325(d).
`
`B. Related Matters
`
`The parties indicate that the ’675 patent is at issue in Samsung
`
`Electronics Co., Ltd. v. NVIDIA Corp., 3:14-cv-00757-REP (E.D. Va.).
`
`Papers 2, 5. The parties also indicate that the ’675 patent was at issue in
`
`IPR2015-01318.1 Id.
`
`C. The ’675 Patent
`
`The ’675 patent relates to a method of forming an insulated-gate
`
`transistor (independent claim 1) and a method of forming an integrated
`
`circuit device (independent claim 6). The Background of the Invention
`
`
`1 On December 7, 2015, the Board denied institution of inter partes review
`of the ’675 patent in IPR2015-01318.
`
`2
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`

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`IPR2016-00134
`Patent 8,252,675 B2
`
`
`portion of the Specification does not articulate any problem with prior art
`
`methods, and the Summary portion of the Specification does not articulate
`
`what objective or advantage is achieved by the invention, relative to prior art
`
`methods. The Background of the Invention portion states:
`
`MOS transistors are classified as n-MOS transistors or p-MOS
`transistors in accordance with the channel type which is induced
`beneath the gate electrode. The gate electrodes of the n-MOS
`transistor and the p-MOS transistor may be formed of different
`metals so that the n-MOS transistor and the p-MOS transistor
`have different threshold voltages.
`
`Ex. 1101, 1:24–30. None of the independent claims at issue requires
`
`the formation of both an n-MOS and a p-MOS transistor, much less an
`
`n-MOS and a p-MOS transistor that have respectively different
`
`threshold voltages. Independent claims 1 and 6 each require a metal
`
`gate electrode that itself comprises multiple metal layers, and claim 6
`
`additionally specifies that the gate electrode is that of a PMOS
`
`transistor.
`
`
`
`Aside from requiring multiple metal layers in the gate electrode,
`
`each of claims 1 and 6 requires formation of a dummy gate electrode,
`
`removal of the dummy gate electrode, and then the formation of a new
`
`metal gate electrode by deposition of multiple additional metal layers.
`
`Those additional metal layers are referred to in claim 1 as first metal
`
`layer and second metal layer, and in claim 6 as second metal gate
`
`electrode layer and third metal gate electrode layer.
`
`
`
`Of all the challenged claims, claims 1 and 6 are the only independent
`
`claims. They are reproduced below:
`
`
`
`
`
`3
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`

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`IPR2016-00134
`Patent 8,252,675 B2
`
`
`1. A method of forming an insulated-gate transistor,
`comprising:
`
`forming a gate insulating layer on a substrate;
`forming a metal buffer gate electrode layer on the gate
`insulating layer;
`
`
`forming a dummy gate electrode layer on the buffer gate
`electrode layer, said dummy gate electrode layer and said
`buffer gate electrode layer comprising different materials;
`
`
`patterning the dummy gate electrode layer and the buffer gate
`electrode layer in sequence to define buffer gate electrode on
`the gate insulating layer and a dummy gate electrode on the
`buffer gate electrode;
`
`
`forming electrically insulating spacers on sidewalls of the
`dummy gate electrode and on sidewalls of the buffer gate
`electrode;
`
`
`covering the spacers and the dummy gate electrode with an
`electrically insulating mold layer;
`
`
`removing an upper portion of the mold layer to expose an upper
`surface of the dummy gate electrode;
`
`
`removing the dummy gate electrode from between the
`spacers by selectively etching back the dummy gate
`electrode using the mold layer and the spacers as an etching
`mask;
`
`
`depositing a first metal layer onto an upper surface of the
`mold layer and onto inner sidewalls of the spacers and onto
`an upper surface of the buffer gate electrode;
`
`filling a space between the inner sidewalls of the spacers by
`depositing a second metal layer onto a portion of the first
`metal layer extending between the inner sidewalls of the
`spacers to thereby define a metal gate electrode
`
`4
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`IPR2016-00134
`Patent 8,252,675 B2
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`comprising a composite of the second metal layer, a
`portion of the first metal layer having a U-shaped cross-
`section and the buffer gate electrode.
`
`Id. at 10:59–11:26 (emphases added).
`
`
`6. A method of forming an integrated circuit device,
`comprising:
`
`forming a gate insulating layer on a substrate;
`
`forming a first metal gate electrode layer on the gate insulating
`layer;
`
`forming a dummy gate electrode layer on the first metal gate
`electrode layer, said dummy gate electrode layer and said first
`metal gate electrode layer comprising different materials;
`
`patterning the dummy gate electrode layer and the first metal
`gate electrode layer in sequence to define a dummy gate
`electrode on the patterned first metal gate electrode layer;
`
`forming electrically insulating spacers on sidewalls of the
`dummy gate electrode and on sidewalls of the patterned first
`metal gate electrode layer;
`
`removing the dummy gate electrode from between the
`spacers by selectively etching back the dummy gate electrode
`using the spacers as an etching mask;
`depositing a second metal gate electrode layer onto inner
`sidewalls of the spacers and onto an upper surface of the
`patterned first metal gate electrode layer,
`depositing a third metal gate electrode layer onto the second
`metal gate electrode layer to thereby fill a space between the
`inner sidewalls of the spacers, said second and third metal gate
`electrode layers comprising different materials;
`
`planarizing the third metal gate electrode layer and the second
`metal gate electrode layer to thereby define a composite metal
`
`5
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`

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`IPR2016-00134
`Patent 8,252,675 B2
`
`
`gate electrode of a PMOS transistor between the inner
`sidewalls of the spacers, said composite metal gate electrode
`comprising a portion of the third metal gate electrode layer,
`a portion of the second metal gate electrode layer having a
`U-shaped cross-section and the patterned first metal gate
`electrode layer.
`
`Id. at 11:39–12:11 (emphases added).
`
`
`D. Evidence Relied Upon
`
`Petitioner relies on the following reference:2
`
`Reference
`
`Date
`
`Exhibit
`
`Hsu
`
`U.S. Patent No. 8,536,660 B2
`
`Sept. 17, 2013 Ex. 1105
`
`
`
`
`
`E. The Asserted Grounds
`
`Petitioner asserts the following grounds of unpatentability:
`
`Reference
`
`Basis
`
`Claims Challenged
`
`Hsu
`
`Hsu
`
`§ 102(e)
`
`§ 103(a)
`
`1–8 and 10–15
`
`12
`
`
`II. ANALYSIS
`
`A. Discretionary Non-Institution
`
`
`
`Institution of inter partes review is discretionary. See 35 U.S.C.
`
`§ 314(a); 37 C.F.R. § 42.108(a). Among the factors we consider in deciding
`
`whether to exercise discretion not to institute review are:
`
`
`
`
`
`
`2 Petitioner also relies on the Declaration of Jack Lee, Ph.D. (Ex. 1103).
`
`6
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`IPR2016-00134
`Patent 8,252,675 B2
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`(1) the finite resources of the Board;
`
`(2) the requirement under 35 U.S.C. § 316(a)(11) to issue a
`final determination not later than 1 year after the date on
`which the Director notices institution of review;
`
`(3) whether the same petitioner already previously filed a
`petition directed to the same claims of the same patent;
`
`(4) whether at the time of filing of the first petition the
`petitioner knew of the prior art asserted in the second
`petition or should have known about it;3
`
`(5) whether at the time of filing of the second petition the
`petitioner already received patent owner’s preliminary
`response to the first petition or received the Board’s decision
`on whether to institute review in the first petition;4
`
`(6) the length of time that elapsed between the time petitioner
`learned of the prior art asserted in the second petition and
`filing of the second petition; and
`
`(7) whether petitioner provides adequate explanation for the
`time elapsed between the filings of multiple petitions
`directed to the same claims of the same patent.
`
`
`
`We are concerned about the limited resources of the Board and
`
`fundamental fairness for both Petitioner and Patent Owner. Petitioner
`
`cannot expect automatic acceptance of multiple petitions for
`
`
`3 See Conopco, Inc. v. Proctor & Gamble Co., Case IPR2014-00506, slip op.
`at 4 (PTAB Dec. 10, 2014) (Paper 25) (Informative), and slip op. at 6
`(PTAB July 7, 2014) (Paper 17); Toyota Motor Corp. v. Cellport Sys., Inc.,
`Case IPR2015-01423, slip op. at 8 (PTAB Oct. 28, 2015) (Paper 7).
`
`4 See Conopco, Inc. v. Proctor & Gamble Co., Case IPR2014-00628, slip op.
`at 11 (PTAB October 20, 2014) (Paper 21) (discouraging filing of a first
`petition that holds back prior art for use in later attacks against the same
`patent if the first petition is denied); Toyota Motor Corp., slip op. at 8 (“the
`opportunity to read Patent Owner’s Preliminary Response in IPR2015-
`00634, prior to filing the Petition here, is unjust.”).
`
`7
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`

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`IPR2016-00134
`Patent 8,252,675 B2
`
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`consideration, if they are against the same claims of the same patent
`
`and filed so long apart that Petitioner received the benefit of having
`
`studied Patent Owner’s Preliminary Response in the first petition or
`
`the Board’s decision on whether to institute review in the first
`
`petition, prior to filing the second petition. That is especially so if
`
`Petitioner, at the time of filing of the first petition was aware of or
`
`should have been aware of the prior art references applied in the
`
`second petition.
`
`
`
`The potential inequity based on a petitioner’s filing of serial
`
`attacks against the same claims of the same patent, while having the
`
`opportunity to adjust litigation positions along the way based on either
`
`patent owner’s contentions responding to prior challenges or the
`
`Board’s decision on prior challenges, is real and cannot be ignored.
`
`This is not to say, however, that multiple petitions against the same
`
`claims of the same patent are never permitted. Rather, each case
`
`depends on its own facts. We look to and consider, in each case, as
`
`we do here, what rationale a petitioner offers for filing multiple
`
`petitions and for the time elapsed between those filings.
`
`
`
`The instant Petition is the second petition filed by Petitioner
`
`challenging claims 1–8 and 10–15 of the ’675 patent. The first such petition
`
`was filed on June 1, 2015, in IPR2015-01318, alleging that: (1) claims 1–8
`
`and 10–15 are unpatentable as anticipated by U.S. Pub. App. No.
`
`2009/0065809 A1 (“Yamakawa”); and (2) claim 9 of the ’675 patent is
`
`unpatentable as obvious over Yamakawa and U.S. Patent No. 8,339,381
`
`(“Yeh”). On September 10, 2015, in IPR2015-01318, Patent Owner filed a
`
`8
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`IPR2016-00134
`Patent 8,252,675 B2
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`preliminary response that argued that the petition in that proceeding was
`
`deficient on the merits.
`
`
`
`Approximately two months later, on November 4, 2015, Petitioner
`
`filed the second petition, i.e., the Petition in this proceeding. Paper 2. In
`
`this Petition, Petitioner asserts that (1) claims 1–8 and 10–15 are
`
`unpatentable as anticipated by Hsu; and (2) claim 12 of the ’675 patent is
`
`unpatentable as obvious over Hsu. In the Petition, Petitioner states:
`
`Petitioner was unaware of the Hsu reference when the previous
`petition, No. IPR2015-01318, was filed on June 1, 2015.
`
`Paper 2, 3. Petitioner reiterates:
`
`At the time the previous petition [(IPR2015-01318)] was filed,
`neither Petitioner nor its expert, Dr. Jack Lee had knowledge of
`Hsu.
`
`Id. at 9. The Petition states nothing about when Petitioner learned of Hsu or
`
`how it became aware of Hsu.
`
`
`
`In the Preliminary Response, Patent Owner provides much of the
`
`pertinent information surrounding Petitioner’s discovery of Hsu. Patent
`
`Owner points out that Petitioner’s representation that Petitioner was
`
`unaware, at the time of filing of the petition in IPR2015-01318 (June 1,
`
`2015), of the prior art reference Hsu is incorrect. Prelim. Resp. 4–5. Patent
`
`Owner states:
`
`But both Petitioner and its counsel were, in fact, aware of
`
`Hsu prior to June 1, 2015. In particular, in an ITC proceeding
`(No. 337-TA-941) also involving Petitioner and Patent owner,
`Petitioner produced Hsu (Ex. 2002, bearing production number
`NV941-ITC-000104802-820) on May 8, 2015 – i.e., prior to June
`1, 2015 when Petitioner filed the first petition. (Ex. 2001 at 1,
`setting forth a range of production numbers that includes
`production number NV841-ITC-000104802-820 corresponding
`to Hsu). Moreover, Petitioner is represented by the same law
`
`9
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`IPR2016-00134
`Patent 8,252,675 B2
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`firm (Latham & Watkins) in both the aforementioned ITC
`proceeding and the instant proceeding. In fact, all three attorneys
`listed as Petitioner’s counsel in the instant proceeding are also
`Petitioner’s counsel of record in the ITC proceeding. (Pet. at 1;
`Exs. 2003, 2004.) While the ITC proceeding does not involve
`the ’675 patent, it is part of the ongoing dispute between
`Petitioner and Patent owner that spans the ITC and federal
`district courts. Moreover, the patents involved in both the ITC
`proceeding and the district court proceeding in which the ’675
`patent is asserted relate to semiconductor devices.
`
`According to Patent Owner, Hsu was a reference identified and produced by
`
`Petitioner to Patent Owner during litigation between Petitioner and Patent
`
`Owner before the International Trade Commission approximately one month
`
`prior to the filing, on June 1, 2015, by Petitioner of the petition in IPR2015-
`
`01318 against the ’675 patent. Hsu was not one of numerous prior art
`
`references provided to Petitioner, the individual relevance of which had to
`
`be subsequently analyzed and determined. Rather, according to Patent
`
`Owner, Hsu was a prior art reference identified and produced by Petitioner.
`
`
`
`Patent Owner’s contention is at odds with Petitioner’s express
`
`representation in the Petition (Paper 2 at 3, 9) that prior to filing its first
`
`petition against the ’675 patent in IPR2015-01318, on June 1, 2015, it was
`
`unaware of Hsu. A telephone conference call was held on March 1, 2016.
`
`The participants of the call were respective counsel for the parties and
`
`Judges Lee, Scanlon, and Busch. During the conference call, counsel for
`
`Petitioner indicated that Petitioner does not factually dispute Patent Owner’s
`
`account of how the Hsu reference was produced in related ITC litigation.
`
`See Paper 8. Thus, on this record, the statements in the Petition that at the
`
`time of filing of the first petition in IPR2015-01318 Petitioner was unaware
`
`10
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`IPR2016-00134
`Patent 8,252,675 B2
`
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`of Hsu is incorrect, and Petitioner has acknowledged that incorrect
`
`statement.
`
`
`
`On this record, one remaining question is why Petitioner did not assert
`
`Hsu against the ’675 patent until more than five months after filing of the
`
`first petition against the ’675 patent in IPR2015-01318, and approximately
`
`two months after Patent Owner filed its preliminary response in IPR2015-
`
`01318. Petitioner offered no explanation in its Petition.
`
`
`
`Although Petitioner did request to file a reply to Patent Owner’s
`
`Preliminary Response, the request was to address two alleged
`
`“misstatements” by Patent Owner in the Preliminary Response, not to
`
`acknowledge its own misstatement in the Petition that Petitioner was not
`
`aware of Hsu at the time of filing of the petition in IPR2015-01318, and not
`
`to explain why Hsu was not asserted in the first petition. Paper 8. More
`
`importantly, during the conference call on March 1, 2016, counsel for
`
`Petitioner expressed that Petitioner does not dispute Patent Owner’s
`
`representation that Petitioner identified and produced Hsu, on May 8, 2015,
`
`in related litigation between Petitioner and Patent Owner before the
`
`International Trade Commission, about one month prior to filing of the
`
`petition in IPR2015-01318. Id.
`
`
`
`Given the undisputed facts as noted above, it would be unjust to
`
`Patent Owner to institute review in this proceeding. Petitioner has provided
`
`no rationale on why it waited until November 4, 2015, more than five
`
`months after filing of the first petition on June 1, 2015, in IPR2015-01318,
`
`to file the Petition in this proceeding, given that Petitioner was aware of Hsu
`
`at least by May 8, 2015. Notably, in IPR2015-01318, Patent Owner’s
`
`preliminary response was filed on September 10, 2015. On the other hand,
`
`11
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`IPR2016-00134
`Patent 8,252,675 B2
`
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`not instituting review in this proceeding would not be unjust to Petitioner,
`
`because Petitioner was aware of Hsu when the first petition was filed on
`
`June 1, 2015, in IPR2015-01318, and subsequently waited too long to file
`
`the second petition relying on Hsu with no apparent justification.
`
`
`
`Under the circumstances of this case, as explained above, we hold
`
`Petitioner accountable for its own actions and inactions. Given the limited
`
`resources of the Board, we exercise our discretion not institute review in this
`
`proceeding, which is the second petition filed by Petitioner against claims 1–
`
`8 and 10–15 of the ’675 patent. See 35 U.S.C. § 314(a); 37 C.F.R.
`
`§ 42.108(a).
`
`B. Separate Reasoning under 35 U.S.C. § 325(d)
`
`
`
`In addition to the foregoing, we also decline to institute inter partes
`
`review based on consideration of 35 U.S.C. § 325(d), which provides:
`
`MULTIPLE PROCEEDINGS.—Notwithstanding sections
`135(a), 251, and 252, and chapter 30, during the pendency of
`any post-grant review under this chapter, if another proceeding
`or matter involving the patent is before the Office, the Director
`may determine the manner in which the post-grant review or
`other proceeding or matter may proceed, including providing
`for the stay, transfer, consolidation, or termination of any such
`matter or proceeding. In determining whether to institute or
`order a proceeding under this chapter, chapter 30, or
`chapter 31, the Director may take into account whether,
`and reject the petition or request because, the same or
`substantially the same prior art or arguments previously
`were presented to the Office.
`
`(Emphasis added.) Comparing the petition filed in IPR2015-01318 and the
`
`rehearing request filed by Petitioner in IPR2015-01318, on the one hand, to
`
`the Petition filed by Petitioner in this proceeding, on the other hand, with
`
`particular focus on the former’s discussion of Yamakawa and the latter’s
`
`12
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`IPR2016-00134
`Patent 8,252,675 B2
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`discussion of Hsu, we find that Yamakawa and Hsu are substantially the
`
`same insofar as claims 1–8 and 10–15 of the ’675 patent are concerned.
`
`
`
`In IPR2015-01318, Petitioner asserted that claims 1–8 and 10–15 of
`
`the ’675 patent are anticipated by Yamakawa. In this proceeding, Petitioner
`
`asserts that claims 1–8 and 10–15 of the ’675 patent are anticipated by Hsu.
`
`Neither assertion is based on any inherency argument, and both assertions
`
`rely on a direct reading of each claim limitation onto the prior art. Nothing
`
`in either Yamakawa or Hsu had to be specially construed and neither
`
`Yamakawa nor Hsu sets forth any special definition of terms. With respect
`
`to the challenged claims, we are not cognizant of any necessary disclosure
`
`that is provided by Hsu but not Yamakawa. The differences between Hsu
`
`and Yamakawa have not been shown to be significant with respect to the
`
`challenged claims.
`
`
`
`The types of steps said to be disclosed by Hsu are the types of steps
`
`said to be disclosed by Yamakawa, and vice versa. If Yamakawa anticipates
`
`the challenged claims, it would be expected that the same assertion would be
`
`made about Hsu, and the same is true the other way around.
`
`
`
`Even Petitioner does not articulate any meaningful difference between
`
`the two. Specifically, Petitioner states:
`
`The first petition relied primarily on the Yamakawa reference.
`As explained by Dr. Lee, Hsu makes disclosures regarding the
`portion of third metal gate electrode layer of the PMOS transistor
`(layer 262 of Hsu) and the upper metal gate electrode (layers 160
`and 162 of Hsu) that may be more relevant to the invalidity of
`the ’675 patent. See Lee Decl. at ¶ 77. For this reason, while
`Yamakawa on its own fully anticipates the claims of the ’675
`patent, Hsu is the stronger reference between the two.
`
`13
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`IPR2016-00134
`Patent 8,252,675 B2
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`Paper 2, 3. All Petitioner could conclude is that Hsu “may be more
`
`relevant.” On that non-definitive and general basis, Petitioner states that
`
`Hsu is the stronger reference of the two. We are unpersuaded, because
`
`Petitioner has not articulated anything sufficiently specific or meaningful in
`
`that regard. That Hsu “may be more relevant” also means Yamakawa “may
`
`be more relevant.” Also, “more or less relevant” is not the test, given that
`
`“relevance” is a very broad term. If both Yamakawa and Hsu allegedly
`
`anticipate the challenged claims in substantially the same manner, it is
`
`inconsequential whether one reference is more or less relevant than the other
`
`in some way. Petitioner has provided insufficient support for the bare
`
`assertion that Hsu is the stronger reference of the two.
`
`
`
`Yamakawa as explained by Petitioner in IPR2015-01318, inclusive of
`
`Petitioner’s representations in its rehearing request in IPR2015-01318, and
`
`Hsu as presented by Petitioner in this proceeding, are substantially the same.
`
`Petitioner has not articulated any meaningful difference between the two.
`
`III. CONCLUSION
`
`
`
`For the foregoing reasons, we exercise discretion not to institute inter
`
`partes review of any of claims 1–8 and 10–15 of the ’675 patent, and also
`
`reject the Petition under 35 U.S.C. § 325(d).
`
`IV. ORDER
`
`It is
`
`ORDERED that no trial or inter partes review is instituted for any
`
`claim of the ’675 patent on any ground.
`
`14
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`

`
`IPR2016-00134
`Patent 8,252,675 B2
`
`
`For PETITIONER:
`
`Robert Steinberg
`Julie Holloway
`Clement Naples
`bob.steinberg@lw.com
`julie.holloway@lw.com
`clement.naples@lw.com
`
`
`For PATENT OWNER:
`
`Naveen Modi
`Joseph Palys
`nVidia-Samsung-IPR@paulhastings.com
`
`
`15