throbber
Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 12
` Entered: March 29, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`RAYTHEON COMPANY,
`Patent Owner.
`____________
`
`Case IPR2016-00209
`Patent 5,591,678
`____________
`
`
`
`Before JO-ANNE M. KOKOSKI, JENNIFER MEYER CHAGNON, and
`JEFFREY W. ABRAHAM Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`I.
`
`INTRODUCTION
`Sony Corporation (“Petitioner”) filed a Petition for inter partes review
`of claims 1–18 (“the challenged claims”) of U.S. Patent No. 5,591,678
`(Ex. 1001, “the ’678 patent”). Paper 2 (“Pet.”). Raytheon Company
`(“Patent Owner”) filed a Preliminary Response to the Petition. Paper 10
`(“Prelim. Resp.”).
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`We have authority to determine whether to institute inter partes
`review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Upon consideration of
`the Petition and the Preliminary Response, and for the reasons explained
`below, we determine that the information presented shows a reasonable
`likelihood that Petitioner would prevail with respect to all of the challenged
`claims. See 35 U.S.C. § 314(a). Accordingly, we institute trial as to
`claims 1–18 of the ’678 patent.
`A. 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.). Pet. 1; Paper 5, 2.
`Petitioner also has challenged the ’678 patent in Sony Corp. v. Raytheon Co.,
`Case IPR2015-01201 (“the 1201 IPR”). Pet. 1–2; Paper 5, 2.
`B. 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
`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.
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`Figure 1 of the’678 patent is reproduced below.
`
`
`
`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
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`“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, 4:47–52.
`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
`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
`
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`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.
`C. Illustrative Claim
`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. Claim 1 of the ’678 patent, reproduced below, is 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;
`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.
`
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`D. The Applied References and Evidence
`Petitioner relies on the following evidence. Pet. 3.
`Reference
`Date
`
`Exhibit
`No.
`Dec. 20, 1983 Ex. 1003
`U.S. Patent No. 4,422,091 (“Liu”)
`Nov. 5, 1974
`Ex. 1004
`U.S. Patent No. 3,846,198 (“Wen”)
`July 21, 1987 Ex. 1005
`U.S. Patent No. 4,681,718 (“Oldham”)
`Feb. 11, 1975 Ex. 1006
`U.S. Patent No. 3,864,819 (“Ying”)
`Jan. 24, 1984 Ex. 1007
`U.S. Patent No. 4,426,768 (“Black”)
`May 8, 1991
`Ex. 10081
`JP Appl. Pub. 3-108776 (“Kusunoki”)
`Aug. 8, 1978
`Ex. 1009
`U.S. Patent No. 4,106,050 (“Riseman”)
`Petitioner further relies on the Declaration of Dr. Richard A.
`Blanchard (Ex. 1002, “Blanchard Declaration”).
`E. The Asserted Grounds
`Petitioner sets forth its challenges to claims 1–18 as follows. Pet. 3,
`20–58.
`Reference(s)
`Liu
`Liu and Black
`Liu and Riseman
`Liu and Oldham
`Liu and Wen
`Liu, Wen, and Ying
`Liu, Riseman, and Kusunoki
`Liu, Riseman, and Oldham
`
`Basis Claim(s) Challenged
`§ 102
`1–4, 6, 7, 10, 11
`§ 103
`2–4, 11
`§ 103
`5, 12–16
`§ 103
`8
`§ 103
`10
`§ 103
`9
`§ 103
`17
`§ 103
`18
`
`
`1 Kusunoki is a Japanese-language reference (Ex. 1014). Citations to
`Kusunoki herein are to the certified English translation submitted by
`Petitioner (Ex. 1008).
`
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`II. ANALYSIS
`A. Patent Owner’s Arguments Under 35 U.S.C. §§ 314(a) and 325(d)
`and 37 C.F.R. § 42.108(a)
`Patent Owner argues in its Preliminary Response that, because an
`inter partes review proceeding has already been instituted as to claims 1–18
`of the ’678 patent in the 1201 IPR, the Board should deny institution in this
`proceeding under 35 U.S.C. §§ 314(a) and 325(d) and 37 C.F.R. § 42.108(a).
`Prelim. Resp. 1. In particular, Patent Owner argues that “Petitioner has not
`adequately explained how the present Petition does not include substantially
`the same arguments as those contained in the [1201] IPR.” Id. Patent
`Owner also argues that the Petition “is part of a strategy to gain a tactical
`advantage in underlying litigation involving the same patent.” Id.
`Each of 35 U.S.C. §§ 314(a) and 325(d) and 37 C.F.R. § 42.108(a),
`cited by Patent Owner, includes permissive language regarding the Board’s
`discretion with respect to institution of inter partes review. For example,
`35 U.S.C. § 314(a) states “[t]he Director may not authorize an inter partes
`review to be instituted unless the Director determines that the information
`presented in the petition . . . shows that there is a reasonable likelihood that
`the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition”; 35 U.S.C. § 325(d) states “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”; and 37 C.F.R. § 42.108(a) states that “[w]hen instituting inter
`partes review, the Board may authorize the review to proceed on all or some
`of the challenged claims and on all or some of the grounds of unpatentability
`asserted for each claim.” (emphases added). None of the cited statutes or
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`rules, however, requires the Board to decline institution. For the reasons
`discussed below, we are not persuaded that, under the current circumstances,
`it is appropriate to exercise our discretion to decline to institute this
`proceeding.
`As Patent Owner notes, the present Petition was filed six months after
`the petition in the 1201 IPR was filed. See Prelim. Resp. 4. Patent Owner
`argues that it “should not be subject to this serial petition strategy.” Id. at 2;
`see id. at 7–8. Patent Owner asserts Petitioner is using the petitions as
`leverage to obtain a stay of the related district court litigation. Id. at 7.
`Patent Owner further argues that the Petition “gives no explanation as to any
`specific differences between the arguments advanced in the two petitions or
`between the teachings of the references supporting the validity challenges in
`the present Petition versus the references at issue in the 1201 IPR.” Id. at 4–
`5. According to Patent Owner, “Petitioner cannot establish that its
`challenges are not redundant simply by relying on a different primary
`reference.” Id. at 8; see id. at 8–10.
`In its Petition, Petitioner asserts that “the principal reference in this
`Petition qualifies as prior art under 35 U.S.C. § 102(b), whereas the principal
`reference in [certain grounds] of the earlier Petition was prior art under
`35 U.S.C. § 102(e).” Pet. 1–2. In the 1201 IPR, certain claims are
`challenged only on grounds that depend in some way on Bertin2, which, as
`noted by Petitioner, is prior art under 35 U.S.C. § 102(e). See 1201 IPR, slip
`op. at 23–24 (PTAB Dec. 2, 2015) (Paper 6) (“Institution Decision”). For at
`least this reason, we are persuaded, in this instance, that the present Petition
`
`
`2 U.S. Patent No. 5,202,754, issued Apr. 13, 1993 (“Bertin”).
`
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`does not include “the same or substantially the same prior art or arguments
`previously . . . presented” in the 1201 IPR.
`Further, while we recognize Patent Owner’s concern with respect to
`the need to defend its patent in multiple inter partes review proceedings, the
`present Petition was timely filed within the one year time set by Congress in
`35 U.S.C. § 315(b).3 Also, Petitioner did not have the benefit of our
`Institution Decision in the 1201 IPR in preparing the present Petition. The
`Petition was filed on November 18, 2015, which was before our Institution
`Decision in the 1201 IPR.
`Having considered Patent Owner’s arguments and the particular facts
`at issue in this proceeding, we are not persuaded that, under the current
`circumstances, it is appropriate to exercise our discretion to decline to
`institute this proceeding. Accordingly, we now turn to the substantive
`arguments set forth in the Petition.
`B. 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). Specifically, claim terms are given their
`ordinary and customary meaning, as would be 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 v. AWH Corp., 415 F.3d 1303, 1313–17 (Fed. Cir. 2005) (en banc).
`
`
`3 35 U.S.C. § 315(b) states, in part, that “[a]n inter partes review may not be
`instituted if the petition requesting the proceeding is filed more than 1 year
`after the date on which the petitioner . . . is served with a complaint alleging
`infringement of the patent.”
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`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.
`Petitioner proposes constructions for three terms:
`(1) “microelectronic circuit element”; (2) “etching,” “etchable layer,” “etch
`stop layer” (grouped together); and (3) “wafer.” Pet. 18–20. Patent Owner
`does not address Petitioner’s proposed constructions in its Preliminary
`Response. For purposes of this Decision, no claim terms require express
`construction. 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)).
`C. Principles of Law
`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
`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, 832–33 (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
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`(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. 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). A prima
`facie case of obviousness is established when the prior art, itself, would
`appear to have suggested the claimed subject matter to a person of ordinary
`skill in the art. See In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976).
`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).
`We analyze the asserted grounds of unpatentability in accordance with
`those principles.
`D. Anticipation by Liu
`Petitioner asserts that claims 1–4, 6, 7, 10, and 11 are unpatentable
`under 35 U.S.C. § 102 as being anticipated by Liu. Pet. 3, 20–33. Patent
`Owner did not address this asserted ground substantively in its Preliminary
`Response. We have reviewed Petitioner’s contentions and supporting
`evidence in the current record, and, for the reasons explained below,
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`determine that the information presented shows a reasonable likelihood that
`Petitioner would prevail on this asserted ground.
`In particular, Petitioner argues that Liu discloses all of the limitations
`of claims 1–4, 6, 7, 10, and 11. Pet. 20–33. We discuss independent claim 1
`as exemplary. Claim 1 recites a “method of fabricating a microelectronic
`device.” Ex. 1001, 8:5–6. Liu describes an imaging charge coupled device
`(CCD) and a fabrication method thereof. Ex. 1003, Abstract; see Pet. 20–21
`(citing Ex. 1003, Abstract, 1:11–13; Ex. 1002 ¶ 83).
`Petitioner relies on substrate 18, window layer 4, and absorbing and
`channel layers 6, 8 of Liu as disclosing the claimed etchable layer, etch-stop
`layer, and wafer, respectively. Pet. 21–22. Petitioner provides an annotated
`version of Figure 2B of Liu, reproduced below (id. at 21).
`
`
`Petitioner’s annotated figure illustrates the portions of the device of Liu that
`Petitioner points to as corresponding to the claimed etchable layer
`(highlighted in blue), etch-stop layer (highlighted in green), and wafer
`(highlighted in yellow). Id. at 21–22 (citing Ex. 1003, 2:26–34, 3:63–4:19,
`4:53–58, Fig. 2B; Ex. 1002 ¶¶ 69, 84–87, 89; Ex. 1001, 2:53–56, 4:16–18).
`Petitioner further relies on CCD circuit 10 that is fabricated on
`channel layer 8 as disclosing the claimed “microelectronic circuit element”
`
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`being “form[ed] . . . in the exposed side of the wafer of the first substrate
`opposite to the side overlying the etch-stop layer.” Pet. 22–24 (citing
`Ex. 1003, 3:23–33, 4:7–27, Fig. 2C; Ex. 1002 ¶¶ 90–93; Ex. 1001, 4:37–43).
`Petitioner relies on support 12 of Liu as disclosing the claimed
`“second substrate.” Pet. 24. Petitioner provides an annotated version of
`Figure 2F of Liu, reproduced below (id.).
`
`
`Petitioner’s annotated figure illustrates a second substrate (highlighted in
`orange) attached to the wafer (highlighted in yellow). Id. (citing Ex. 1003,
`3:34–35, 4:7–19, 4:29–46, Fig. 2F; Ex. 1002 ¶¶ 91, 94–97).
`Finally, Petitioner relies on Liu’s disclosure of etching away substrate
`18 (highlighted in blue, above) using a selective etchant that removes
`substrate 18 without removing window layer 4 (highlighted in green, above)
`(see Ex. 1003, Fig. 2G) for the claimed step of “etching away the etchable
`layer of the first substrate down to the etch-stop layer.” Pet. 25 (citing
`Ex. 1003, 3:65–4:19, 4:53–58, Figs. 2F, 2G; Ex. 1002 ¶¶ 98–101).
`
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`Based on the record now before us, we are persuaded that Petitioner
`has demonstrated a reasonable likelihood of succeeding in showing that Liu
`discloses all the steps of claim 1. We also have reviewed Petitioner’s
`contentions and supporting evidence regarding claims 2–4, 6, 7, 10, and 11,
`and similarly are persuaded, based on the record now before us, that
`Petitioner has demonstrated a reasonable likelihood of succeeding in
`showing that Liu discloses all steps of those claims.4 See Pet. 25–33 (citing
`Ex. 1003, Abstract, 1:11–13, 2:28–32, 3:23–50, 3:56–4:46, 4:53–66, Figs. 1,
`2B, 2C; Ex. 1002 ¶¶ 103–114, 117–124, 126–139; Ex. 1001, 2:28–33, 6:15–
`19).
`E. Obviousness in View of Liu and Black
`Petitioner asserts that claims 2–4, and 11 are unpatentable under
`35 U.S.C. § 103 as obvious in view of Liu and Black. Pet. 3, 33–36. Patent
`Owner did not address this asserted ground substantively in its Preliminary
`Response. We have reviewed Petitioner’s contentions and supporting
`evidence in the current record, and, for the reasons explained below,
`determine that the information presented shows a reasonable likelihood that
`Petitioner would prevail on this asserted ground.
`Black relates to a method for making a plurality of thin pressure
`sensors by processing a wafer to provide a plurality of electronic devices.
`Ex. 1007, Abstract. As described in Black, electrical contact to the devices
`
`
`4 We note in particular, regarding claims 2–4 and 11, that we are persuaded
`Liu discloses patterning the etch-stop layer and/or forming an electrical
`connection to the microelectronic circuit element through the etch-stop layer
`and/or wafer, and, regarding claim 10, that we are persuaded Liu discloses
`the claimed liquid etchant that attacks the etchable layer rapidly, and the
`etch-stop layer slowly.
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`is provided through holes 51. Ex. 1007, Abstract, 3:37–42, 6:17–28, Fig. 9.
`Holes 51 are shown in Figure 9, an annotated version of which is reproduced
`below (Pet. 35).
`
`
`Petitioner’s annotated figure illustrates a second substrate (highlighted in
`orange) attached to the wafer (highlighted in yellow), with holes 51 formed
`through the etch stop layer (highlighted in green) and the wafer. See
`Pet. 16–17 (citing Ex. 1007, 2:39–60, 3:1–7, 5:22–28, 6:15–28, Figs. 1, 9;
`Ex. 1002 ¶¶ 142–147).
`Claims 2–4 and 11 recite patterning the etch-stop layer and/or forming
`an electrical connection to the microelectronic circuit element through the
`etch-stop layer and/or wafer. See Ex. 1001, 8:17–28, 9:7–9. Petitioner
`argues that Liu discloses patterning and an electrical connection through the
`etch-stop layer and wafer around the border of the device, and that Black
`discloses such patterning and connection inward from the edge of the device.
`Pet. 33 (citing Ex. 1007, Fig. 9; Ex. 1002 ¶¶ 103–117, 149, 150; Ex. 1001,
`Fig. 4). Petitioner provides declaration testimony that one of skill in the art
`would have recognized the benefits of placing the electrical contacts of Liu
`inward from the edge of the device, such as the ability to provide more
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`contacts, the ability to reach contacts near the center of the device, or to
`provide protection from damage to the contacts. Ex. 1002 ¶ 152; see Pet. 34.
`Petitioner further asserts that to do so would have “no unpredictable results.”
`Pet. 34; see Ex. 1002 ¶ 153.
`Based on the record now before us, we are persuaded that Petitioner
`has demonstrated a reasonable likelihood of succeeding in showing that the
`combination of Liu and Black renders obvious claims 2–4 and 11.
`See Pet. 34–37 (citing id. at 31–33; Ex. 1003, 4:59–66, Fig. 1; Ex. 1007,
`3:37–42, 6:17–28, Fig. 9; Ex. 1002 ¶¶ 154–157, 160–161, 163–165, 168).
`F. Obviousness in View of Liu and Riseman
`Petitioner asserts that claims 5 and 12–16 are unpatentable under
`35 U.S.C. § 103 as obvious in view of Liu and Riseman. Pet. 3, 36–49.
`Patent Owner did not address this asserted ground substantively in its
`Preliminary Response. We have reviewed Petitioner’s contentions and
`supporting evidence in the current record, and, for the reasons explained
`below, determine that the information presented shows a reasonable
`likelihood that Petitioner would prevail on this asserted ground.
`Claims to Specific Materials
`Claims 5 and 12 depend from claims 1 and 11, respectively, and
`further recite that “the etchable layer is silicon, the etch-stop layer is silicon
`dioxide, and the wafer is single-crystal silicon.” Ex. 1001, 8:29–31,
`9:10–12. Independent claim 13 recites limitations similar to claim 1, and
`additionally includes the same specific materials recited in claims 5 and 12
`for the etchable layer, the etch-stop layer, and the wafer, respectively.
`Id. at 9:13–26.
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`As discussed by Petitioner, Riseman “describes an integrated circuit
`structure, and like Liu, discloses a substrate that includes an etchable layer,
`an etch-stop layer, and a wafer.” Pet. 37 (citing Ex. 1009, 4:50–57, 5:45–51;
`Ex. 1002 ¶ 172). Petitioner provides an annotated version of Figure 5 of
`Riseman, reproduced below (id.).
`
`
`Petitioner’s annotated figure illustrates the portions of the device of Riseman
`that Petitioner points to as corresponding to an etchable layer (highlighted in
`blue), an etch-stop layer (highlighted in green), and a wafer (highlighted in
`yellow). Id. (citing Ex. 1009, 4:50–57, 5:45–57, 6:4–5; Ex. 1002 ¶ 172–175,
`190). Petitioner further asserts that, in Riseman, the etchable layer is silicon,
`the etch-stop layer is silicon dioxide, and the wafer is single-crystal silicon.
`Id. (citing Ex. 1009, 4:50–57, 5:45–57; Ex. 1002 ¶ 173, 174, 190).
`According to Petitioner, “[i]t would have been obvious to use Riseman’s
`single crystal silicon substrate and wafer, and SiO2 etch-stop layer, in the
`process flow disclosed in Liu, and doing so would have had no unpredictable
`results.” Id. at 43 (citing Ex. 1002 ¶ 191); see also id. at 40–41 (citing
`Ex. 1003, 1:15–21, 3:9–20; Ex. 1002 ¶¶ 184–187) (discussing reasons one of
`skill in the art would have used a Si/SiO2 semiconductor/insulator
`combination in Liu).
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`Based on the record now before us, we are persuaded that Petitioner
`has demonstrated a reasonable likelihood of succeeding in showing that the
`combination of Liu and Riseman renders obvious claims 5, 12, and 13.
`See Pet. 36–46 (citing id. at 20–25, 31–33; Ex. 1003, Abstract, 1:11–13,
`1:15–21, 3:23–37, 3:63–50, 4:53–56, 4:59–66, 5:9–20, Figs. 2B, 2F, 2G;
`Ex. 1009, 4:14–23, 4:50–57, 5:16–29, 5:45–57, 6:43–59, 6:67–7:12, Fig. 5;
`Ex. 1002 ¶¶ 73, 83, 170, 172–177, 180, 182–187, 190–191, 193–194, 196–
`202, 230; Ex. 1004, 2:69–71).
`Patterning and Electrical Connection Claims
`Claims 14–16 depend from claim 13, and recite patterning the etch-
`stop layer and forming an electrical connection to the microelectronic circuit
`element through the etch-stop layer and/or wafer. Ex. 1001, 10:1–12.
`As discussed above, Petitioner asserts that Liu discloses patterning the etch-
`stop layer and wafer around the border of the device. Petitioner similarly
`relies on this disclosure to meet the limitations of claims 14–16. Pet. 46
`(citing id. at 25–27; Ex. 1003, 4:59–66; Ex. 1002 ¶ 204). Petitioner also
`asserts that Riseman discloses such patterning and connection inward from
`the edge of the device, relying on openings 25 of Riseman. Id. at 46–47
`(citing Ex. 1009, 6:67–7:1, Fig. 7; Ex. 1002 ¶¶ 204–205). Petitioner
`provides declaration testimony that one of skill in the art would have
`recognized the benefits of placing the electrical contacts of Liu inward from
`the edge of the device, such as the ability to provide more contacts, the
`ability to reach contacts near the center of the device, or to provide
`protection from damage to the contacts. Ex. 1002 ¶ 188; see Pet. 47.
`Petitioner further asserts that to do so would “not have had any
`unpredictable results.” Pet. 47; see Ex. 1002 ¶ 206.
`
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`Based on the record now before us, we are persuaded that Petitioner
`has demonstrated a reasonable likelihood of succeeding in showing that the
`combination of Liu and Riseman renders obvious claims 14–16.
`See Pet. 36–41, 46–49 (citing id. at 20–27, 44–46; Ex. 1003, 1:15–21, 3:56–
`4:27, 4:43–50, 4:53–56, 4:59–66, 5:9–20, Fig. 1; Ex. 1009, 4:14–23, 4:50–
`57, 5:45–57, 6:43–59, 6:67–7:12, Figs. 5, 7; Ex. 1002 ¶¶ 170, 172–177, 180,
`182–188, 190, 204, 205, 206, 208, 209, 211).
`G. Obviousness in View of Liu and Oldham, and in view of Liu,
`Riseman, and Oldham
`Petitioner asserts that claims 8 and 18 are unpatentable under
`35 U.S.C. § 103 as obvious in view of the combinations of Liu and Oldham,
`and Liu, Riseman, and Oldham, respectively. Pet. 3, 49–50, 57–58. Patent
`Owner did not address these asserted grounds substantively in its
`Preliminary Response. We have reviewed Petitioner’s contentions and
`supporting evidence in the current record, and, for the reasons explained
`below, determine that the information presented shows a reasonable
`likelihood that Petitioner would prevail on these asserted grounds.
`Claims 8 and 18 depend from claims 1 and 13, respectively, and
`further recite “placing a layer of epoxy between the second substrate and the
`wafer portion of the first substrate, and degassing and curing the epoxy.”
`Ex. 1001, 8:41–45, 10:20–24. For this limitation, Petitioner points to the
`disclosure in Liu that channel layer 8 with its CCD circuit layer 10 (i.e., the
`claimed wafer portion, with its microelectronic circuit elements) is bonded
`to support 12 (i.e., the claimed second substrate) by sealing layer 14, which
`may be an epoxy. Pet. 49 (citing Ex. 1003, 3:33–52; Ex. 1002 ¶ 219); see id.
`at 58. Petitioner relies on Oldham as teaching that “the use of an epoxy
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`molding compound with both degassing and curing” was a common practice
`at the time of the invention. Id. at 49–50 (citing Ex. 1005, 3:30–43;
`Ex. 1002 ¶¶ 220–221); see id. at 58. Petitioner further asserts “[i]t would
`have been obvious to apply steps known to be useful for epoxies . . . to the
`epoxy of Liu, and there would not have been any unpredictable results.” Id.
`at 50; see Ex. 1002 ¶ 223; Pet. 58.
`Based on the record now before us, we are persuaded that Petitioner
`has demonstrated a reasonable likelihood of succeeding in showing that the
`combination of Liu and Oldham renders obvious claim 8, and that the
`combination of Liu, Riseman, and Oldham renders obvious claim 18.
`H. Obviousness in View of Liu and Wen
`Petitioner asserts that claim 10 is unpatentable under 35 U.S.C. § 103
`as having been obvious in view of Liu and Wen. Pet. 3, 50–52. Patent
`Owner did not address this asserted ground substantively in its Preliminary
`Response. We have reviewed Petitioner’s contentions and supporting
`evidence in the current record, and, for the reasons explained below,
`determine that the information presented shows a reasonable likelihood that
`Petitioner would prevail on this asserted ground.
`Claim 10 depends from claim 1, and further recites “contacting the
`etchable layer to a liquid etchant that attacks the etchable layer rapidly and
`the etch-stop layer slowly.” Ex. 1001, 8:50–54. Petitioner asserts that Liu
`discloses such a liquid etchant (Pet. 50 (citing Ex. 1003, 4:53–58; Ex. 1002
`¶¶ 101, 130–131)), while Wen expressly discusses contacting the etchable
`layer to a liquid etchant that attacks the etchable layer rapidly and the etch-
`stop layer slowly (id. at 50–51 (citing Ex. 1004, 3:67–4:3, 4:11–14, 4:36–40;
`Ex. 1002 ¶¶ 240–241, 243)). Petitioner further asserts that it “would have
`
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`been obvious to use known etchants with these known characteristics, as
`disclosed in Wen, with the process of Liu, without any unpredictable
`results.” Id. at 51–52 (citing Ex. 1002 ¶¶ 235–237).
`Based on the record now before us, we are persuaded that Petitioner
`has demonstrated a reasonable likelihood of succeeding in showing that the
`combination of Liu and Wen renders obvious claim 10.
`I. Obviousness in View of Liu, Wen, and Ying
`Petitioner asserts that claim 9 is unpatentable under 35 U.S.C. § 103
`as obvious in view of Liu, Wen, and Ying. Pet. 3, 52–54. Patent Owner did
`not address this asserted ground substantively in its Preliminary Response.
`We have reviewed Petitioner’s contentions and supporting evidence in the
`current record, and, for the reasons explained below, determine that the
`information presented shows a reasonable likelihood that Petitioner would
`prevail on this asserted ground.
`Claim 9 depends from claim 1, and recites a further step of, “after the
`step of attaching and before the step of etching, fixing the second substrate
`to an etching support that is resistant to attack by an etchant.” Ex. 1001,
`8:46–49. Petitioner relies on Wen and Ying as teaching this claim element.
`Pet. 52–54. Wen relates to a method of making semiconductor devices an

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