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
`_______________
`
`
`
`CORRECTED PATENT OWNER RESPONSE
`
`
`
`
`
`
`
`

`

`
`
`
`
`TABLE OF CONTENTS
`
`I. 
`II. 
`
`V. 
`
`INTRODUCTION ......................................................................................... 1 
`SUMMARY OF ARGUMENTS .................................................................. 2 
`A. 
`The Challenged Claims Are Patentable Over Liu ........................... 2 
`B. 
`The Challenged Claims Are Patentable Over Liu in
`Combination with the Secondary References. .................................. 4 
`III.  THE ’678 PATENT ....................................................................................... 6 
`A. 
`Background Regarding ’678 Patent and Technology ...................... 6 
`B. 
`Level of Ordinary Skill in the Art ................................................... 10 
`C.  Claim Construction ........................................................................... 10 
`1. 
`“Wafer” .................................................................................... 11 
`2. 
`“Overlying” .............................................................................. 12 
`3. 
`“Furnishing” and “Forming” ................................................ 13 
`IV.  THE ’678 PATENT IS PATENTABLE .................................................... 14 
`A. 
`Legal Standards ................................................................................. 14 
`1. 
`Anticipation ............................................................................. 14 
`2. 
`Obviousness ............................................................................. 15 
`The Challenged Claims Are Patentable over Liu .......................... 16 
`1. 
`Liu Does Not Disclose Furnishing a Substrate
`with Three Different Layers as Required in
`Claims 1 and 11 ....................................................................... 16 
`Liu’s CCD Layers 6 and 8 Are Not A Wafer ....................... 20 
`Liu’s CCD Layers Do Not Overlie ........................................ 23 
`Liu Does Not Disclose
`Forming
`a
`Microelectronic Circuit Element in the Exposed
`Side of the Wafer ..................................................................... 25 
`Liu Does Not Disclose Patterning and Back-side
`Processing ................................................................................ 25 
`THE CHALLENGED CLAIMS ARE ALL PATENTABLE
`OVER GROUNDS 2-8. ............................................................................... 31 
`
`
`B. 
`
`2. 
`3. 
`4. 
`
`5. 
`
`

`

`
`
`A.  Claims 2-4 and 11 are Patentable Over Liu and Black ................. 33 
`B. 
`Claims 5 and 12-16 are Patentable Over Liu and Riseman .......... 36 
`C.  Claim 8 is Patentable Over Liu and Oldham ................................. 39 
`D.  Claim 10 is Patentable Over Liu and Wen ..................................... 40 
`E. 
`Claim 9 is Patentable over Liu, Wen, and Ying ............................. 40 
`F. 
`Claim 17 is Patentable Over Liu, Riseman, and Kusunoki ........... 41 
`G.  Claim 18 is Patentable Over Liu, Riseman, and Oldham ............. 42 
`VI.  SECONDARY
`CONSIDERATIONS
`SUPPORT
`THE
`NONOBVIOUSNESS OF THE ’678 PATENT ........................................ 42 
`VII.  CONCLUSION ............................................................................................ 49 
`
`
`
`
`ii
`
`

`

`
`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Bancorp Servs., L.L.C. v. Hartford Life Ins. Co.,
`
`359 F.3d 1367 (Fed. Cir. 2004) .......................................................................... 18
`
`Continental Can Co. v. Monsanto Co.,
`
`948 F.2d 1264 (Fed. Cir. 1991) .......................................................................... 14
`
`Crown Operations Int’l, Ltd. v. Solutia Inc.,
`289 F.3d 1367 (Fed. Cir. 2002) .......................................................................... 14
`
`Eli Lilly & Co. v. Zenith Goldline Pharms., Inc.,
`471 F.3d 1369 (Fed. Cir. 2006) .......................................................................... 15
`
`Graham v. John Deere Co. of Kansas City,
`
`383 U.S. 1 (1966) ................................................................................................ 43
`
`In re Brouwer,
`77 F.3d 422 (Fed. Cir. 1996) .............................................................................. 15
`
`In re Gordon,
`
`733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984) ................................................ 34
`
`In re NTP, Inc.,
`
`654 F.3d 1279 (Fed. Cir. 2011) .......................................................................... 15
`
`In re Robertson,
`
`169 F.3d 743 (Fed. Cir. 1999) ............................................................................ 15
`
`K-Tec. Inc. v. Vita-Mix Corp.,
`
`696 F.3d 1364 (Fed. Cir. 2012) .............................................................. 33-34, 42
`
`KSR Int'l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 15
`
`Leo Pharm. Prods. v. Rea,
`
`726 F.3d 1346 (Fed. Cir. 2013) .................................................................... 43-46
`
`
`iii
`
`

`

`
`
`McGinley v. Franklin Sports, Inc.,
`262 F.3d 1339 (Fed. Cir. 2001) .......................................................................... 16
`
`Panduit Corp. v. Dennison Mfg. Co.,
`810 F.2d 1561 (Fed. Cir. 1987) .......................................................................... 19
`
`Phillips v. AWH Corp.,
`
`415 F.3d 1303 (Fed. Cir. 2005) .......................................................................... 10
`
`Ruiz v. A.B. Chance Co.,
`234 F.3d 654 (Fed. Cir. 2000) ............................................................................ 15
`
`Scripps Clinic & Research Found. v. Genentech, Inc.,
`927 F.2d 1565 (Fed. Cir. 1991) (overruled in part on other grounds) ................ 14
`
`Square, Inc., v. Cooper,
`
`IPR2014-00157, Paper 17 ................................................................................... 10
`
`Stratoflex v. Aeroquip Corp.,
`
`713 F.2d 1530 (Fed. Cir. 1983) .......................................................................... 43
`
`Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc.,
`
`699 F.3d 1340 (Fed. Cir. 2012) .......................................................................... 43
`
`
`iv
`
`

`

`
`
`EXHIBIT LIST
`
`
`
`2012
`
`2013
`
`2014
`
`2015
`2016
`
`2017
`
`2003
`
`2004
`
`2005
`
`2006
`2007
`
`2008
`2009
`2010
`
`2011
`
`Exhibit Description
`2001
`Declaration of Eugene Fitzgerald
`2002
` Excerpts from prosecution history of Application Serial No.
`08/006,120, Office action dated December 10, 1993
`U.S. Patent 4,612,083, “Process of Fabricating Three-Dimensional
`Semiconductor Device,” Masaaki Yasumoto, issued Sept. 16, 1986
`U.S. Patent 4,815,208, “Method of Joining Substrates for Planar
`Electrical Interconnections of Hybrid Circuits,” Curt R. Raschke,
`issued March 28, 1989
`Raytheon FAQ’s
`http://investor.raytheon.com/phoenix.zhtml?c=84193&p=irol-
`faq#25748
`Raytheon 2015 Annual Report
`“Raytheon Acquires Hughes Wing in $9.5-Billion Deal,” James F.
`Peltz, January 17, 1997, http://articles.latimes.com/1997-01-
`17/news/mn-19463_1_hughes-aircraft
`Declaration of John J. Drab
`STC Bepi-Colombo Article
`OmniVisionTech YouTube Video: OmniVision’s Backside
`Illumination (BSI) Explained
`Raytheon Co. v. Samsung Electronics Co., Ltd., Civil Action No.
`1:15-CV-341-JRG-RSP, Dkt. 90 “Joint Statement Construction and
`Prehearing Statement” (E.D.T.X. Dec. 9, 2015), and Dkt. 116-1,
`“Claim Construction Chart” (E.D.T.X Feb. 17, 2016)
`Declaration of A. Bruce Buckman, Raytheon Co. v. Samsung
`Electronics Co., Ltd., Civil Action No. 1:15-CV-341-JRG-RSP, Dkt.
`No. 100-2 (E.D.T.X Dec. 9, 2015) (“Buckman Decl.”)
`“The Technological Impact of Transistors”, J.A. Morton and W.J.
`Pietenpol, Proceedings of Institute the of Radio Engineers (1958)
`955. (Ex. 2020.)
`U.S. Patent No. 2,981,877, “Semiconductor Device-and-Lead
`Structure,” Robert N. Noyce, issued Apr. 25, 1961
`“VLSI Technology,” S.M. Sze, McGraw-Hill, New York (1983).
`“Cramming more components onto integrated circuits”, G.E. Moore,
`Electronics 38 (1965).
`“Progress in Digital Integrated Electronics”, G.E. Moore,
`International Electron Devices Meeting, IEEE, 1975, pp. 11-13.
`v
`
`

`

`
`
`2020
`
`2021
`
`2022
`2023
`
`2024
`
`2025
`
`Exhibit Description
`2018
`“Silicon Processing”, D.C. Gupta, ASTM Special Technical
`Publication 804, Philadelphia (1983).
`2019A-F Raytheon’s Technology Tutorial originally submitted in Raytheon
`Co. v. Samsung Electronics Co., Ltd., Civil Action No. 1:15-CV-
`341-JRG-RSP (E.D.T.X.)
`“High-efficiency AlGaAs/GaAs concentrator solar cells”, R. Sahai,
`D. D. Edwall, and J. S. Harris Jr., Applied Physics Letters 34, 147
`(1979).
`“Bulk impurity charge trapping in buried channel charge coupled
`devices”, McNutt, M.J.; Meyer, W.E., Journal of the Electrochemical
`Society, v 128, n 4, p 892-6, April 1981.
`Definition of forming and furnish
`“Integrated Movable Micromechanical Structures for Sensors and
`Actuators”, L.S. Fan, Y.C. Tai, R.S. Muller, IEEE Transactions on
`Electronic Devices 35, (1998) p. 724.
`“New Opportunities for Micro Actuators”, H. Fujita and K.J. Gabriel,
`Transducers '91, 1991 International Conference on Solid-State
`Sensors and Actuators. Digest of Technical Papers (Cat.
`No.91CH2817-5), p 14-20, 1991.
`“Failure Mechanisms and Fault Classes for CMOS-Compatible
`Microelectromechanical Systems”, A. Castillejo, D. Veychard, S.
`Mir, J.M. Karam, and B. Courtois”, Proceedings International Test
`Conference 1998 (IEEE Cat. No.98CH36270), p 541-50, 1998.
`“Sony develops back-illuminated CMOS image sensor, realizing
`high picture quality, nearly twofold sensitivity and low noise”, June
`11, 2008
`“Sony Develops “Exmor RS,” the World’s First Stacked CMOS
`Image Sensor Also introduces imaging modules that deliver high
`picture quality and compact size, for use in mobile devices such as
`smartphones and tablets”, August 20, 2012
`OmniBSI™ Technology Backgrounder, OmniVision Technologies,
`Inc., Michael Okincha, Senior Staff Technical Production Manager,
`June 22, 2009
`OmniVision BSI Presentation
`
`2026
`
`2027
`
`2028
`
`2029
`
`
`
`vi
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`

`

`
`
`I.
`
`INTRODUCTION
`
`In the early 1990’s, the inventors of what would eventually issue as U.S.
`
`Patent No. 5,591,678 (“the ’678 Patent”), Dr. Ronald Finnila, Joseph Bendik and
`
`Jerry Malloy, scientists at Hughes Aircraft Company (which was later acquired by
`
`Raytheon), were working to improve semiconductors for national defense
`
`applications, including the Trident Missile system. The inventors realized that
`
`enabling processing of the front and back side of a micro-circuit could provide
`
`enhanced immunity to ionizing radiation. They also realized that back side
`
`processing could also provide a foundation for efficiently stacking other micro-
`
`circuits. However, gaining access to the back side without destroying the thin,
`
`fragile, and expensive micro-circuits was a problem. Their solution was to create a
`
`novel fabrication method that would transfer the micro-circuit and wafer from one
`
`support to another and then remove the back-side support via etching. The ’678
`
`Patent claims these novel methods, which permit the fabrication of, inter alia,
`
`high-resolution image sensors.
`
`Raytheon, one of the nation’s largest and most respected defense
`
`contractors, used high-resolution image sensors made according to the ’678 Patent
`
`for defense and space applications. Raytheon’s ability to manufacture these
`
`sensors led to successful contracts, including for the BepiColombo space telescope.
`
`Many years after the invention, smartphone and camera manufacturers were faced
`
`
`
`

`

`
`
`with increasing consumer demand for improved hand-held camera resolution. .
`
`As alleged in Raytheon’s complaints filed in the underlying litigation pending in
`
`the Eastern District of Texas, many of the largest smartphone, camera and image-
`
`sensor makers began using the methods of the ’678 Patent to manufacture high-
`
`resolution image sensors. The defendants in the underlying litigation have now
`
`filed multiple IPR Petitions challenging the claims of the ’678 Patent, including the
`
`Petition in this proceeding. However, as set forth herein, Petitioner has failed to
`
`establish that the claims of the ’678 Patent are unpatentable.
`
`II.
`
`SUMMARY OF ARGUMENTS
`Petitioner Sony Corporation (“Petitioner”) requested inter partes review
`
`(“IPR”) of Claims 1-18 (“challenged claims”) of the ’678 Patent. (Paper No. 2
`
`(“Petition”).) The Patent Trial and Appeal Board (the “Board”) instituted an IPR
`
`as to the challenged claims on eight separate grounds, each of which is based on
`
`one primary reference, Liu. (Paper No. 12, 23-24.) For the reasons stated herein,
`
`Petitioner has not established that the challenged claims are unpatentable.
`
`A. The Challenged Claims Are Patentable Over Liu
`The Board should dismiss Ground 1 because Liu fails to disclose three
`
`material elements in Claims 1-4, 6, 7, 10 and 11.
`
`First, as to all independent claims, Liu does not teach a first substrate with
`
`three different layers. Instead, Liu’s substrate comprises a single block of silicon
`
`2
`
`

`

`
`
`(Si) with no layers. Thus, Liu cannot teach furnishing a substrate with an etchable
`
`layer, etch-stop layer, and wafer layer as required by all challenged claims.
`
`Second, Liu does not teach a wafer as claimed. Rather, Liu’s CCD layers 6
`
`and 8 are device layers that control the way the CCD behaves and are part of the
`
`CCD circuitry.
`
`Third, Liu does not disclose a furnished substrate having a wafer layer
`
`overlying an etch-stop layer. As noted above, these layers do not exist in Liu’s
`
`furnished substrate. Moreover, even if Liu’s single-layer substrate comprises the
`
`wafer (which, as explained above, it cannot according to the plain and ordinary
`
`meaning of “wafer”), the wafer would not overlie any other layer.
`
`Finally, Liu does not disclose forming a microelectronic circuit element in
`
`the exposed side of the wafer. Liu’s layers 4 and 6 are laid on top of substrate 18;
`
`they are not formed in or on top of a wafer, as claimed in the ’678 Patent.
`
`Additionally, for claims 2-4, Liu fails to disclose patterning or other back-
`
`side processing. In fact, Liu’s invention is directed to a different problem in a
`
`specific field: providing a non-silicon, intrinsic semiconductor (i.e., Type III-IV
`
`semiconductors like gallium arsenide (GaAs)) based imaging CCD “which has a
`
`minimum of gate obscuration” (i.e., not allowing illumination to be scattered or
`
`absorbed by device patterning and other materials) on the front side. (Fitzgerald
`
`Declaration, Ex. 2001, ¶48.) By contrast, the ’678 Patent concerns methods of
`
`3
`
`

`

`
`
`manufacturing microelectronic devices using back-side processing.
`
`Liu does not describe exposing the back-side of a chip through the transfer
`
`and backside etching methods described in the ’678 Patent to allow electronics to
`
`be placed behind an image sensor. This is because the claimed methods of the
`
`’678 Patent result in a flipped configuration whereby the substrate can absorb
`
`desired radiation—a result which Liu specifically wants to avoid because his
`
`invention seeks to minimize gate obscuration. Thus, rather than only remove a
`
`single, etchable, layer of the furnished three-layer substrate—such as claimed in
`
`the ’678 Patent—Liu describes removing the entire first furnished substrate, such
`
`that “radiation enters the device directly through the window layer without
`
`substrate attenuation or gate obscuration.” (Ex. 1003, 2:19-25.) Therefore, the
`
`’678 Patent devises a completely different and more advanced solution which
`
`allows for back-side detection and the 3-D stacking of devices. Moreover, Liu
`
`fails to disclose, inter alia, “forming a microelectronic circuit element in the
`
`exposed side of the wafer of the first substrate .… [and] attaching the wafer of the
`
`first substrate to a second substrate…”
`
`Accordingly, the challenged claims are patentable over Ground 1.
`
`B. The Challenged Claims Are Patentable Over Liu in
`Combination with the Secondary References.
`
`Grounds 2-8 should be dismissed because none of the secondary references
`
`address Liu’s deficiencies noted above with respect to Ground 1. Additionally, a
`
`4
`
`

`

`
`
`person of hypothetical ordinary skill in the art (“PHOSITA”) would not have been
`
`motivated to combine Liu, which describes an imaging charge coupled device (i.e.
`
`a light sensor), with Black, which concerns forming a pressure sensor—a
`
`completely different area of technology. Moreover, the combination of Liu and
`
`Black would not be able to carry out the method of the ’678 Patent given that
`
`Black compromises device structural integrity in order for the pressure sensor to
`
`bend under stimulus. Therefore, the combination proposed in Ground 2 could not
`
`render the challenged claims unpatentable.
`
`Furthermore, a PHOSITA would not have been motivated to combine Liu’s
`
`charge coupled device (“CCD”) made from GaAs (a material which Liu explicitly
`
`chooses over silicon due to performance), with a reference like Riseman, which
`
`provides a bi-layer structure of a silicon substrate and an insulating SiO2 layer.
`
`Therefore, Ground 3 also does not render the challenged claims unpatentable.
`
`The combinations proposed by Petitioner for Grounds 4 and 7-8 were
`
`selected to fill in gaps without any real motivation to combine. For example,
`
`Oldham (Grounds 4 and 8) is nothing more than generally applicable epoxy art that
`
`is cumulative of prior art before the Examiner during prosecution. Kusunoki
`
`(Ground 7) actually limits Liu, which does not describe a thickness for the
`
`furnished substrate. Because a PHOSITA would understand how to adjust the etch
`
`in order to accommodate the required thickness, there is no motivation for a
`
`5
`
`

`

`
`
`PHOSITA to seek to limit Liu with a narrowing reference like Kusunoki aside
`
`from hindsight bias to attempt to satisfy a claim element in the challenged claims.
`
`The other art presented in Grounds 5 (Wen) and 6 (Ying) does not explicitly
`
`show fabrication of microelectronic elements or that the second substrate is fixed
`
`to an etching support that is resistant to attack by an etchant, respectively, and thus
`
`fail to render claims 10 and 9 obvious.
`
`Additionally, secondary considerations,
`
`including
`
`industry praise by
`
`Petitioner and others, failure of others, and commercial success of the ’678 Patent
`
`heavily weigh against a finding that the ’678 Patent is obvious, the only basis for
`
`invalidity asserted in Grounds 2-8.
`
`III. THE ’678 PATENT
`A. Background Regarding ’678 Patent and Technology
`In the early 1990’s, engineers at Hughes Aircraft Corporation invented a
`
`new method of making a semiconductor device. That method became the ’678
`
`Patent, which covers a unique way to make a device by moving a microcircuit
`
`from one support to another. (Ex. 1001, 2:59-3:5; see also Ex. 2001, ¶¶43-44.)
`
`This method efficiently permits engineers to use the backside of the device and
`
`stack two microcircuits. (Id., 2:32-33.) A sensor made by this method is known as
`
`a thin-film, backside-illuminated (“BSI”) sensor.
`
`Traditionally, image sensors were made by a front-side process. (See id.,
`
`6
`
`

`

`
`
`1:14-23.) This process layered metal microelectronic circuitry over a detecting
`
`semiconductor. (See id., 1:14-23.) However, front-side processes could not be
`
`used to make thinner, more-sensitive sensors. (See id., 1:58-63.)
`
`The ’678 Patent solved this problem by allowing engineers to place wiring
`
`on the front side of a sensor, leaving the backside relatively unobstructed. (See id.,
`
`2:29-42.) This process allows engineers to work on both sides of the wafer. (Id.)
`
`One way to practice the method is to furnish a first substrate with three portions –
`
`an etchable layer, an etch-stop layer and a wafer. (See id., 2:15-18.) The wafer
`
`portion overlies the etch stop layer; the etch stop portion overlies the etchable
`
`layer. (Ex. 1001, 2:15-18.) Electronics are formed on or in the exposed surface of
`
`
`
`the wafer. (Id., 4:39-51.)
`
`
`
`
`
`
`
`Wafer
`Etch-Stop
`
`Etchable
`Portion
`
`
`
`(See Ex. 2019.)
`
`The front side of the wafer and circuits are attached to a second substrate
`
`which becomes the final support for the device. (See Ex. 1001, 2:20-24.)
`
`
`
`
`
`7
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`
`
`(See Ex. 2019.)
`
`Second
`Substrate
`
`First
`Substrate
`
`The etchable portion of the first substrate is etched away to permit access to
`
`the backside of the electronics. (Ex. 1001, 2:23-24, 29-33.) The etch-stop portion
`
`protects these sensitive circuits during the etching process. (See id., 2:52-56.) The
`
`chemical etchant will react with, dissolve and remove the etchable portion. (See
`
`id., 2:51-56; 3:12-14.) The etchant will either not react with, dissolve or remove
`
`the etch-stop portion or, if it does react, will etch into the etch-stop portion
`
`relatively slowly compared to the rate at which the etchable portion is removed.
`
`(See id., 3:12-18, 5:52-62, 6:21-27.) This process is known as relative etching.
`
`(See id., 5:52-57.)
`
`Another advantage of this process is that the second support substrate may
`
`also feature microcircuits. (See id., 3:26-36.) This allows engineers to create
`
`three-dimensional (3-D), stacked electronics. (Id.) The methods of 3-D
`
`integration described in the ’678 Patent were ahead of their time and forward-
`
`8
`
`

`

`
`
`looking since chip design (and “Moore’s Law,” the theory that transistor density in
`
`2-D integrated circuits would exponentially increase with time) were making
`
`sufficiently rapid progress that conventional low-cost silicon packaging (in 2-D)
`
`was sufficient. (See Ex. 2001, ¶¶30-42.) Integration in 3-D would become most
`
`significant years after the invention of the ’678 Patent, when Moore’s Law no
`
`longer delivered progress in 2-D that scaled with the goals of integrated systems.
`
`(Id. ¶34.) Hughes Aircraft Corporation and Raytheon, operating in the defense
`
`industry, were leaders in much of the advanced packaging industry and 3-D
`
`integration due to their need to miniaturize components for defense use before the
`
`consumer electronics industry could support the cost of a miniaturized component.
`
`(See id. ¶¶35-36.) The ’678 Patent was born from such early investigations into
`
`increasing component and circuit density. (Id. ¶35.) As Moore’s Law has slowed
`
`today, advanced 3-D packaging is deployed more commonly, underscoring the
`
`significance and early timing of the ’678 Patent. (Id. ¶35.)
`
`The groundbreaking methods disclosed in the ’678 Patent were driven by
`
`possible new configurations of semiconductors that would transform the field of
`
`image processing, important in early defense applications. (Id. ¶36; see also id.
`
`¶37.) Specifically, exposing the backside of a chip (through the transfer, flip and
`
`etch methods described in the ’678 Patent) would allow electronics to be placed
`
`behind an image sensor. (Id. ¶36.) This would allow for better low-light
`
`9
`
`

`

`
`
`performance (because the light photons don’t have to navigate through a mesh of
`
`wires in a back-illuminated sensor (BSI) arrangement) and less image signal noise
`
`(again, because the electronics are behind the image sensor). (See Ex. 2001, ¶36.)
`
`B. Level of Ordinary Skill in the Art
`Patent Owner contends that a person of ordinary skill in the art with respect
`
`to the ’678 Patent would be someone with a Bachelor’s degree in electrical
`
`engineering, materials science, or the like, with advanced classwork or industry
`
`experience in fabrication of microelectronic devices. (Ex. 1002, ¶¶55-60.)
`
`Petitioner proposes a level of ordinary skill that does not materially differ, for the
`
`purposes of the issues involved in the present proceeding. (Petition at 20.) Patent
`
`Owner’s assertions and evidence herein do not differ based on any differences
`
`between the parties’ proposed levels of ordinary skill in the art. (Ex. 2001, ¶18.)
`
`C. Claim Construction
`Because the ’678 Patent is expired, the principles to be applied for the
`
`purposes of claim construction are set forth in Phillips v. AWH Corp., 415 F.3d
`
`1303, 1312, 1327 (Fed. Cir. 2005). Square, Inc., v. Cooper, IPR2014-00157, Paper
`
`17 at 2.
`
`The claim terms should be given their “ordinary and customary meaning.”
`
`Id. In construing the claims, it is fundamental that the specification “is the single
`
`best guide to the meaning of a disputed term.” Phillips v. AWH Corp., 415 F.3d
`
`10
`
`

`

`
`
`1303, 1315 (Fed. Cir. 2005) (en banc) (citation omitted).
`
`As explained below, Petitioner implies or proposes constructions that are
`
`incorrect and unreasonable—i.e., not the “ordinary and customary” meaning.
`
` “Wafer”
`
`1.
`The term “wafer” is explicitly used in the ’678 Patent to represent the top
`
`layer in the furnished substrate. (Ex. 1001, 2:16-21 (“furnishing a first substrate
`
`having … a wafer overlying the etch-stop layer”)) The wafer layer of the
`
`furnished substrate itself does not initially contain microelectronic circuit elements.
`
`Rather, a “microelectronic circuit element 50 is formed in the wafer layer 46 …
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`working from a front exposed side 52” of the wafer (Id., 3:37-40, Claims 1, 11)
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`(Ex. 1001, Fig. 1.)
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`As a result, the term “wafer” should be construed to mean “a portion of the
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`first substrate in or on which the microelectronic circuit element is formed.” (Ex.
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`
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`2001, ¶58.)
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`11
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`By contrast, Petitioner and Dr. Blanchard suggest a much broader definition
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`that is not supported by the specification: that the wafer “can be a pure
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`semiconductor, or can contain microelectronic circuit elements.” (Ex. 1002, ¶69;
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`see also Ex. 2001 ¶¶59-60.) However, the wafer layer in the furnished substrate
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`described in the ’678 Patent does not contain microelectronic circuit elements; a
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`microelectronic circuit element is formed in the wafer in the second step of the
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`challenged claims. (Ex. 1001, 1:15-21, Claims 1 and 11.) Thus, Petitioner’s
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`definition, which would cover an entire device (for example, the charged coupled
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`device (“CCD”) of Liu), is inconsistent with the ’678 Patent specification and
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`claims. (Ex. 2001, ¶¶59-60, 66-67, 70-71; Ex. 1001, 3:37-40, Claims 1, 11.)
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`“Overlying”
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`2.
`The term “overlying” is used in the ’678 Patent to represent the physical
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`configuration of the layers in the furnished substrate. (Ex. 1001, 2:16-21
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`(“furnishing a first substrate having … an etch-stop layer overlying the etchable
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`layer, and a wafer overlying the etch-stop layer”).) As shown in Fig. 1, etch-stop
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`layer 44 overlies etchable layer 42, and wafer layer 46 overlies etch-stop layer 44.
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`12
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`Thus, overlying must mean “lying on” according to the specification and
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`claims of the ’678 Patent. (Ex. 2001, ¶61.)
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`“Furnishing” and “Forming”
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`3.
`The terms “furnishing” and “forming” are used in the ’678 Patent to
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`represent different steps of the claimed method. First, the specification and claims
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`require “furnishing” a three-layer substrate (Ex. 1001, 2:16-20, Claims 1 and 11)
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`Next, the method requires “forming” a microelectronic circuit element in the wafer
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`layer of the substrate. (Id.) These terms should be given their plain and ordinary
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`meaning. However, if the Board requires construction of these terms, “furnishing”
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`should be defined as “to supply or provide something that already exists.” See Ex.
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`2022, pp. 7-9 (Webster’s Third New International Dictionary (1993)) (defining
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`“furnish” as “to provide or supply with what is needed”).) “Forming” should be
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`defined as “to assemble or put together.” (See id. at p. 4 (defining “form” as “to
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`serve to make up or constitute”).) The use of these terms in the ’678 Patent is
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`consistent with the dictionary definitions provided. For example, when the ’678
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`13
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`Patent uses the word “furnishing,” it is referring to the act of providing a substrate
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`that already exists. (Ex. 1001, 1:15-21, Claims 1, 11.) When the ’678 Patent uses
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`the term “forming,” it is referring to the acts of assembling (1) a microelectronic
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`circuit element in the exposed side of the wafer of the first substrate and/or (2) an
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`electrical connection to the microelectronic circuit element. (Id., Claims 1 and 3.)
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`IV. THE ’678 PATENT IS PATENTABLE
`A. Legal Standards
`1.
`Anticipation
`A patent claim is not anticipated unless a single reference that qualifies as
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`prior art discloses each and every element in the claim. See, e.g., Crown
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`Operations Int’l, Ltd. v. Solutia Inc., 289 F.3d 1367, 7785 (Fed. Cir. 2002); Scripps
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`Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir.
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`1991) (overruled in part on other grounds) (“There must be no difference between
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`the claimed invention and the reference disclosure.”). Anticipation requires a
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`disclosure of “the patented subject matter with sufficient clarity and detail to
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`establish that the subject matter existed in the prior art and that such existence
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`would be recognized by persons of ordinary skill in the field of the invention.”
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`Crown, 289 F.3d at 7785. While the disclosure can be explicit or inherent, the
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`latter “may not be established by probability or possibilities. The mere fact that a
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`certain thing may result from a given set of circumstances is not sufficient.”
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`Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991); see
`14
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`also In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999).
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`2. Obviousness
`Obviousness requires a reason to modify the prior art as proposed by the
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`Petitioner. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). An
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`invention “composed of several elements is not proved obvious merely by
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`demonstrating that each of its elements was, independently, known in the prior
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`art.” Id. Rather, “to establish a prima facie case of obviousness based on a
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`combination of elements in the prior art, the law requires a motivation to select the
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`references and to combine them in the particular claimed manner to reach the
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`claimed invention.” Eli Lilly & Co. v. Zenith Goldline Pharms., Inc., 471 F.3d
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`1369, 1379 (Fed. Cir. 2006); KSR, 550 U.S. at 418. Particularly of note for this
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`proceeding, the mere fact that a prior art process can be modified to achieve the
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`claimed invention, or that a step in a prior art process can be replaced by, or
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`substituted with, a step of the claimed process, is not enough to establish
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`obviousness. In re Brouwer, 77 F.3d 422, 425 (Fed. Cir. 1996); Ruiz v. A.B.
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`Chance Co., 234 F.3d 654, 665 (Fed. Cir. 2000) (“The test is not whether one
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`device can be an appropriate substitute for another.”). There must be a motivation
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`or teaching suggesting the modification or substitution. Id.
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`In addition, use of hindsight is forbidden in an obviousness analysis. In re
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`NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011), and “as a useful general rule . . .
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`15
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`references that teach away cannot serve to create a prima facie case of
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`obviousness.” McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1354 (Fed. Cir.
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`2001).
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`B. The Challenged Claims Are Patentable over Liu
`U.S. Pat. No. 4,422,091 (“Liu”) describes a GaAs-based imaging charged
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`coupled device (“CCD”). (Ex. 1003, 2:50-54.) Unlike the ’678 Patent, where
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`some claims cover a first substrate having a silicon (Si) etchable layer, a silicon
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`dioxide (SiO2) layer overlying the Si layer, and a single-crystal Si wafer having a
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`front surface not contacting the etch stop layer, Liu discourages using Si and SiO2
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`because these materials fundamentally “hamper” performance of CCD imagers in
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`some specific applications. (Ex. 1003, 1:17-22; Ex. 2001, ¶126.) Liu describes
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`“an imaging charge coupled device [that] has a window epitaxial layer, an
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`absorber epitaxial layer, and a CCD channel epitaxial layer.” (Ex. 1003, 2:7-9.)
`
`1.
`
`Liu Does Not Disclose Furnishing a Substrate with Three
`Different Layers as Required in Claims 1 and 11
`As described above, the method of the ’678 Patent starts with a three-layer
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`substrate (i.e. a furnished first substrate having (1) an etchable layer, (2) an etch-
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`stop layer overlying the etchable