`571-272-7822
`
`
`Paper No. 45
` Filed: November 30, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION,
`SAMSUNG ELECTRONICS, CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`SAMSUNG SEMICONDUCTOR, INC.,
`Petitioner,
`
`v.
`
`RAYTHEON COMPANY,
`Patent Owner.
`____________
`
`Case IPR2016-002091
`Patent 5,591,678
`____________
`
`
`
`Before JO-ANNE M. KOKOSKI, JENNIFER MEYER CHAGNON, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`1 Case IPR2016-00962 has been joined with the instant proceeding.
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`IPR2016-00209
`Patent 5,591,678
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`I.
`
`INTRODUCTION
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`§ 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons discussed herein, we determine that
`Petitioner has shown, by a preponderance of the evidence, that claims 1–18
`of U.S. Patent No. 5,591,678 (Ex. 1001, “the ’678 patent”) are unpatentable.
`A. Procedural History
`Sony Corporation (“Petitioner”) filed a Petition (Paper 2, “Pet.”) for
`inter partes review of claims 1–18 (“the challenged claims”) of the ’678
`patent. Petitioner included a Declaration of Dr. Richard A. Blanchard
`(Ex. 1002) to support its positions. Raytheon Company (“Patent Owner”)
`timely filed a Preliminary Response (Paper 10, “Prelim. Resp.”).
`Pursuant to 35 U.S.C. § 314(a), on March 29, 2016, we instituted an
`inter partes review of the challenged claims to determine whether claims
`1–4, 6, 7, 10, and 11 are unpatentable under 35 U.S.C. § 102 as anticipated
`by Liu;2 whether claims 2–4 and 11 are unpatentable under 35 U.S.C. § 103
`as obvious in view of Liu and Black;3 whether claims 5 and 12–16 are
`unpatentable under 35 U.S.C. § 103 as obvious in view of Liu and Riseman;4
`whether claim 8 is unpatentable under 35 U.S.C. § 103 as obvious in view of
`Liu and Oldham;5 whether claim 10 is unpatentable under 35 U.S.C. § 103
`as obvious in view of Liu and Wen;6 whether claim 9 is unpatentable under
`
`
`2 U.S. Patent No. 4,422,091, issued Dec. 20, 1983 (Ex. 1003).
`3 U.S. Patent No. 4,426,768, issued Jan. 24, 1984 (Ex. 1007).
`4 U.S. Patent No. 4,106,050, issued Aug. 8, 1978 (Ex. 1009).
`5 U.S. Patent No. 4,681,718, issued July 21, 1987 (Ex. 1005).
`6 U.S. Patent No. 3,846,198, issued Nov. 5, 1974 (Ex. 1004).
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`35 U.S.C. § 103 as obvious in view of Liu, Wen, and Ying;7 whether claim
`17 is unpatentable under 35 U.S.C. § 103 as obvious in view of Liu,
`Riseman, and Kusunoki;8 and whether claim 18 is unpatentable under
`35 U.S.C. § 103 as obvious in view of Liu, Riseman, and Oldham. Paper 12
`(“Inst. Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 36,9 “PO Resp.”), along with a Declaration of Dr. Eugene
`A. Fitzgerald (Ex. 200110) to support its positions. Petitioner filed a Reply
`(Paper 27, Paper 28 (redacted version), “Pet. Reply”) to the Patent Owner
`Response. After Petitioner’s Reply was filed, institution was granted in
`Samsung Electronics, Co. v. Raytheon Co., Case IPR2016-00962, and that
`proceeding was joined with the instant proceeding. See Paper 29. An oral
`hearing was held on October 13, 2016. A transcript of the hearing is
`included in the record. Paper 44 (“Tr.”).
`
`
`7 U.S. Patent No. 3,864,819, issued Feb. 11, 1975 (Ex. 1006).
`8 JP App. Pub. No. 3-108776, published May 8, 1991. Kusunoki is a
`Japanese-language reference (Ex. 1014). Citations to Kusunoki herein are to
`the certified English translation submitted by Petitioner (Ex. 1008).
`9 Pursuant to our telephonic authorization, Patent Owner filed a Corrected
`Patent Owner Response (Paper 36) that corrects specific citations to
`Dr. Fitzgerald’s Declaration. A red-line version was filed as Exhibit 2030.
`Paper 36 replaces the originally filed Patent Owner Response (Paper 22),
`and all citations herein are to the corrected version.
`10 Exhibit numbers 2001–2003 were re-used by Patent Owner at the time of
`filing the Patent Owner Response. We note this is in violation of 37 C.F.R.
`§ 42.63(c). For clarity, citations herein to Exhibits 2001–2003 are to the
`documents filed on June 15, 2016.
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`B. Related Proceedings
`The ’678 patent has been asserted in Raytheon Co. v. Samsung
`Electronics Co., No. 2:15-cv-00341 (E.D. Tex.), and Raytheon Co. v. Sony
`Kabushiki Kaisha, No. 2:15-cv-00342 (E.D. Tex.). Paper 5, 2; Pet. 1.
`Petitioner Sony also has challenged the ’678 patent in Sony Corp. v.
`Raytheon Co., Case IPR2015-01201 (“the 1201 IPR”). Pet. 1–2; Paper 5, 2.
`The ’678 patent also has been challenged in Samsung Electronics, Co. v.
`Raytheon Co., Case IPR2016-00739, which currently is pending.
`C. The ’678 Patent
`The ’678 patent, titled “Process of Manufacturing a Microelectric
`Device Using a Removable Support Substrate and Etch-Stop,” relates to a
`method of fabricating a microelectronic device, in which the microelectronic
`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
`“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
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`example, “can include many active devices such as transistors,” or “may be
`simply a patterned electrical conductor layer that is used as an interconnect
`between other layers of structure in a stacked three-dimensional device.”
`Id. at 4:55–56, 4:47–51.
`Second substrate 58 is attached to the structure, as shown in box 24.
`Id. at 5:14–44. Second substrate 58 may comprise, for example, silicon or
`aluminum oxide, and optionally may include a microelectronic device
`deposited therein. Id. at 5:18–25. Etchable layer 42 is removed by etching,
`as shown in box 26. Id. at 5:45–6:9. The entire structure may be attached
`temporarily to base 62, which may be a piece of aluminum oxide
`(particularly, sapphire), to protect the structure against etch attack. Id. at
`5:47–49. As described in the ’678 patent, the “etchant is chosen so that it
`attacks the etchable layer 42 relatively rapidly, but the etch-stop layer 44
`relatively slowly or not at all.” Id. at 5:52–54.
`“Back-side electrical connections are formed through the [exposed]
`etch-stop layer 44 (for direct back-side interconnects 56’) and through the
`etch stop layer 44 and the wafer layer [46] to the microelectronic circuit
`element 50 (for indirect front-side interconnects [56]),” as shown in box 28.
`Id. at 6:10–14. The connections are formed by patterning etch-stop layer 44
`using well-known patterning techniques. Id. at 6:14–17. Electrical
`conductor layer 70 may be deposited over etch-stop layer 44 and back side
`electrical connections 56, 56’. Id. at 6:44–49.
`As shown in box 30 of Figure 1, final structure 71 may be joined with
`another microelectronic device 72, to form a three-dimensional structure
`comprising structures 71, 72. Id. at 6:50–58, Fig. 2.
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`D. Illustrative Claims
`Of the challenged claims, claims 1, 11, and 13 are independent.
`Claims 2–10 depend, directly or indirectly, from claim 1; claim 12 depends
`from claim 11; and claims 14–18 depend, directly or indirectly, from
`claim 13. Claims 1, 6, and 7 of the ‘678 patent, reproduced below, are
`illustrative of the challenged claims:
`1. A method of fabricating a microelectronic device,
`comprising the steps of:
`furnishing a first substrate having an etchable layer, an
`etch-stop layer overlying the etchable layer, and a wafer
`overlying the etch-stop layer;
`forming a microelectronic circuit element in the exposed
`side of the wafer of the first substrate opposite to the side
`overlying the etch-stop layer;
`attaching the wafer of the first substrate to a second
`substrate; and
`etching away the etchable layer of the first substrate
`down to the etch-stop layer.
`Ex. 1001, 8:5–16.
`6. The method of claim 1, wherein the second substrate
`contains a second microelectronic circuit element.
`Id. at 8:32–33.
`7. The method of claim 6, wherein the step of attaching
`includes the step of
`making an electrical contact from the microelectronic
`circuit element on the wafer of the first substrate to the second
`microelectronic circuit element on the second substrate.
`Id. at 8:34–39.
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`II. ANALYSIS
`A. Claim Construction
`The ’678 patent is expired. When interpreting claims of an expired
`patent, our analysis is similar to that of a district court. In re Rambus, Inc.,
`694 F.3d 42, 46 (Fed. Cir. 2012); see also Black & Decker, Inc. v. Positec
`USA, Inc., RW, 646 Fed. App. 1019, 1024 (Fed. Cir. 2016) (holding that in
`an inter partes review, “[c]laims of an expired patent are given their
`ordinary and customary meaning in accordance with our opinion in Phillips
`v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)”). Specifically,
`claim terms are given their ordinary and customary meaning, as would be
`understood by a person of ordinary skill in the art at the time of the
`invention, in light of the language of the claims, the specification, and the
`prosecution history of record. Phillips, 415 F.3d at 1313–17. However,
`there is no presumption of validity, and we do not apply a rule of
`construction with an aim to preserve the validity of claims.
`The parties’ dispute requires construction of several terms, which we
`address below. No issue in this Decision requires express construction of
`any other claim terms. See, e.g., Wellman, Inc. v. Eastman Chem. Co.,
`642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be
`construed ‘to the extent necessary to resolve the controversy.’”) (quoting
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999)).
`
`1. “furnishing”
`Patent Owner argues that the claims use the terms “furnishing” and
`“forming” to represent different steps of the claimed method. PO Resp. 13.
`According to Patent Owner, “furnishing” should be construed to mean “to
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`supply or provide something that already exists.” Id. at 13 (emphasis
`added). Patent Owner cites to Webster’s Third New International Dictionary
`(1993), which defines “furnish” as “to provide or supply with what is
`needed.” PO Resp. 13; Ex. 2022, 6. Patent Owner asserts that “forming”
`should be construed to mean “to assemble or put together.” PO Resp. 13.
`We need not construe “forming” for purposes of this Decision, but provide
`Patent Owner’s argument as a comparison to its proposed construction of
`“furnishing.”
`Regarding the construction of “furnishing,” Petitioner argues that “the
`multi-layer substrates of the claims of the ‘678 [patent] always need to be
`manufactured,” at some point. Pet. Reply 4 (citing Ex. 1019 (deposition of
`Dr. Fitzgerald), 43:16–44:4). Even the first substrate as described in the
`Specification of the ’678 patent must be formed, in Patent Owner’s use of
`the word, at some point. See Ex. 1001, 4:2 (“[s]uch substrates can be
`purchased commercially,” where they must presumably be formed), 4:22–36
`(discussing preparation of first substrate 40 “by applying well-known
`microelectronic techniques”); Pet. Reply 4–5. In other words, even in
`the ‘678 patent, there is a point in time before substrate 40 exists.
`Based on the evidence in the complete record now before us, we are
`not persuaded that the claimed “furnishing” step requires disclosure of the
`existence of a pre-existing three-layer substrate separate and apart from a
`disclosure that a three-layer substrate is being supplied for some intended
`purpose. No further express construction of furnishing is required for
`purposes of this Decision.
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`2. “wafer”
`According to Patent Owner, the “term ‘wafer’ is explicitly used in
`the ’678 Patent to represent the top layer in the furnished substrate.” PO
`Resp. 11. Patent Owner also argues that the “wafer layer of the furnished
`substrate itself does not initially contain microelectronic circuit elements.”
`Id. Thus, according to Patent Owner, the term “wafer” should be construed
`to mean “a portion of the first substrate in or on which the microelectronic
`circuit element is formed.” Id. (citing Ex. 2001 ¶ 58). Patent Owner’s
`arguments attempting to distinguish the claims from the cited references,
`however, also incorporate the requirement that the wafer layer does not
`initially contain microelectronic circuit elements. See, e.g., id. at 22–23
`(arguing that Liu does not disclose the claimed wafer layer because layers 6
`and 8 include microelectronic circuit elements).
`We are not persuaded that the term “wafer” is so limited. In
`describing the details of the first substrate and the preparation thereof (with
`regard to box 20 of Figure 1), the Specification states that “wafer layer 45
`may also be or include an interconnect material such as a metal or other
`structure as may be appropriate for a particular application.” Ex. 1001,
`4:16–18; see Pet. Reply 6–7. This description is counter to Patent Owner’s
`assertion that the ’678 patent requires that the wafer “does not initially
`contain microelectronic circuit elements.” In fact, the Specification states
`that the term “microelectronic circuit element” is “to be interpreted broadly,
`and can include active devices and passive structure. For example, the
`microelectronic circuit element . . . may be simply a patterned electrical
`conductor layer that is used as an interconnect between other layers of
`structure.” Ex. 1001, 4:45–51; see Pet. Reply 6–7. While we recognize this
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`description is in reference to the types of microelectronic circuit elements
`that may be formed in the “forming” step, we find it instructive as to the
`question of what may or may not be included in the furnished wafer, which
`the Specification expressly states “may also be or include an interconnect
`material such as a metal or other structure.” Ex. 1001, 4:16–18.
`Based on the evidence in the complete record now before us, we are
`not persuaded that the Specification supports limiting the claim language
`“wafer” to a layer that does not initially contain microelectronic circuit
`elements, as Patent Owner advocates. No further express construction of the
`term is required for purposes of this Decision.
`3. “overlying”
`Patent Owner asserts that “overlying” should be construed to mean
`“lying on,” according to the Specification of the ’678 patent. PO Resp. 12–
`13 (citing Ex. 1001, Fig. 1). Based on Patent Owner’s arguments attempting
`to distinguish the claims from the cited references, we understand Patent
`Owner to mean that one layer “overlying” another layer requires direct
`contact with the layer upon which it overlies. See id. at 23–24. In its Reply,
`Petitioner argues that “‘overlying’ simply means ‘lying over’—it does not
`require direct contact.” Pet. Reply 10. We agree that the plain and ordinary
`meaning of overlie does not include a requirement of direct contact. See
`Overlie Definition, MERRIAM-WEBSTER.COM, http://www.merriam-
`webster.com/dictionary/overlie (last visited Nov. 21, 2016) (defining
`“overlie” as “to lie over or upon”). Accordingly, we construe overlying, in
`accordance with its plain and ordinary meaning, as lying over or upon.
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`B. Principles of Law — Anticipation and Obviousness
`To establish anticipation, each and every element in a claim, arranged
`as recited in the claim, must be found in a single prior art reference.
`See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir.
`2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed.
`Cir. 2001). Although the elements must be arranged or combined in the
`same way as in the claim, “the reference need not satisfy an ipsissimis verbis
`test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d
`1331, 1334 (Fed. Cir. 2009); accord In re Bond, 910 F.2d 831, 832 (Fed.
`Cir. 1990).
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`In that regard, an obviousness analysis “need not seek out precise
`teachings directed to the specific subject matter of the challenged claim, for
`a court can take account of the inferences and creative steps that a person of
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; accord In re
`Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). The level of
`ordinary skill in the art may be reflected by the prior art of record. See
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`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). Further, while objective indicia of nonobviousness must
`always be considered when present, such objective indicia “do not
`necessarily control the obviousness determination.” Merck & Cie v. Gnosis
`S.P.A., 808 F.3d 829, 837 (Fed. Cir. 2015), cert. denied, No. 16-125, 2016
`WL 4014485 (U.S. Oct. 11, 2016) (citing In re Cyclobenzaprine
`Hydrochloride Extended–Release Capsule Patent Litig., 676 F.3d 1063,
`1075–76 (Fed. Cir. 2012); Bristol–Myers Squibb Co. v. Teva Pharm. USA,
`Inc., 752 F.3d 967, 977 (Fed.Cir.2014)).
`We analyze the asserted grounds of unpatentability in accordance with
`those principles.
`C. 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 argues that Liu does not disclose all the steps of the claimed
`methods. PO Resp. 16–31. We have reviewed the entire record before us,
`including the parties’ contentions and supporting evidence presented during
`this trial. For the reasons explained below, we determine that Petitioner has
`demonstrated, by a preponderance of the evidence, that claims 1–4, 6, 7, 10,
`and 11 are unpatentable.
`
`Claim 1
`Petitioner’s Contentions
`Claim 1 recites a “method of fabricating a microelectronic device.”
`Ex. 1001, 8:5–6. Liu describes an imaging charge coupled device (CCD)
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`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 absorber 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 Liu’s device 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 asserts that absorber layer 6 and channel layer 8 are a wafer
`“because they are used in the formation of the microelectronic circuits.” Id.
`at 22.
`
`Petitioner further relies on CCD circuit 10 that is fabricated on
`channel layer 8 as disclosing the claimed “microelectronic circuit element”
`being “form[ed] . . . in the exposed side of the wafer of the first substrate
`opposite to the side overlying the etch-stop layer.” Id. at 22–24 (citing
`Ex. 1003, 3:23–33, 4:7–27, Fig. 2C; Ex. 1002 ¶¶ 90–93; Ex. 1001, 4:37–43).
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`As described in Liu, CCD circuit 10 includes ohmic contacts 20, channel
`isolation 22, barrier gates 24, vias 28, and interconnects 30. Ex. 1003, 4:21–
`27, Fig. 2F; see Pet. 23.
`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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`Patent Owner’s Contentions and Our Analysis
`Patent Owner argues that several features of claim 1 are missing from
`Liu. PO Resp. 16–25. We address each of Patent Owner’s contentions in
`turn.
`
`“furnishing a substrate”
`Patent Owner argues that Liu does not disclose furnishing a three-
`layer substrate, as claimed, because Liu “first furnishes a single layer
`substrate” 18 (PO Resp. 16 (citing Ex. 1003, 3:63–68, Fig. 2A)) and, then,
`deposits three liquid phase epitaxial (LPE) layers 4, 6, 8 on top of substrate
`18 (id. at 17 (citing Ex. 1003, 2:7–9, Fig. 2B). See id. at 16–20. Patent
`Owner argues that “[t]hese additional layers comprise the imaging CCD—
`and cannot be a part of the furnished substrate, which is only a single
`layer.” Id. (citing Ex. 2001 ¶¶ 55–57, 62–64, 83–89). Patent Owner argues
`also that “Petitioner and Dr. Blanchard conflate the ‘furnishing’ and
`‘forming’ steps to argue that layers 4, 6, and 8, which are formed on the
`single layer GaAs substrate in Liu’s Step B, are somehow part of Liu’s
`furnished GaAs substrate.” Id. at 18. Patent Owner also focuses on the fact
`that layers 4, 6, and 8, which Petitioner maps to the certain layers of the
`furnished substrate, are all part of the CCD imager itself formed on substrate
`18, and are not part of substrate 18 shown in Figure 2A. Id. at 19.
`Based on our construction of “furnishing,” discussed above (see supra
`section II.A.1), we are not persuaded that the only substrate that is furnished
`in Liu is that shown in Figure 2A, as asserted by Patent Owner. In mapping
`Liu to the claims, Petitioner relies on Figure 2B as disclosing the claimed
`furnished substrate. Pet. 21–22. Whether Figure 2A includes a single layer
`or multiple layers is, thus, irrelevant in determining if Liu anticipates the
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`claims. In addition, whether Liu describes steps prior to the configuration of
`Figure 2B also is irrelevant to whether it is furnished or not, within the
`meaning of the claims.
`Further, regardless of the words Liu uses to describe the layers of its
`device, Liu can still anticipate the claims if it discloses each and every
`limitation therein. In re Gleave, 560 F.3d at 1334 (“[A] reference need not
`satisfy an ipsissimis verbis test.”). We agree with Petitioner’s mapping of
`the layers of Figure 2B of Liu to the substrate in the furnishing step of
`claim 1. As discussed above, substrate 18 of Liu is etched away using a
`selective etchant that removes substrate 18 without removing window
`layer 4, thus these layers disclose an etchable layer and etch-stop layer
`respectively. See Ex. 1003, 3:65–4:19, 4:53–58, Figs. 2F, 2G. Further, we
`are persuaded that absorber and channel layers 6, 8 disclose a wafer, as
`discussed in more detail below.
`
`“wafer”
`Patent Owner argues that Liu does not disclose a “wafer,” as claimed.
`PO Resp. 20–23. According to Patent Owner, “Liu refers to its entire device
`as its multi-layered wafer, which is inconsistent with the ’678 Patent’s use of
`the term as a single portion of material.” Id. at 20. Again, however,
`regardless of the particular language used in Liu, Liu can still anticipate the
`claims if it discloses each and every limitation therein. See In re Gleave,
`560 F.3d at 1334 (“[A] reference need not satisfy an ipsissimis verbis test.”).
`Patent Owner further argues that “Liu’s layers 6 and 8 are not the
`wafer claimed in the ’678 patent, or even part of the wafer, because even
`though they comprise semiconductor material, these layers comprise part of
`the device circuitry (e.g. they are part of the CCD).” PO Resp. 21 (citing
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`Ex. 2001 ¶¶ 70–71). Patent Owner also argues that Petitioner’s definition of
`wafer as being “used in the formation of microelectronic circuits” “is
`inconsistent with the term’s use in the ’678 Patent,” because “[t]he ’678
`Patent requires its wafer to be the top portion of the furnished substrate.” Id.
`(citing Ex. 2001 ¶¶ 59–60; Ex. 1001, claims 1, 11, 13). Patent Owner
`continues that “[w]hile a microelectronic circuit element is formed into or on
`top of the top wafer, the ’678 Patent’s wafer layer does not exclusively
`consist of microelectronic elements as do Liu’s layers 6 and 8.” Id. (citing
`Ex. 2001 ¶¶ 59–60, 70).
`In this regard, Patent Owner also argues that the claims of the ’678
`patent “require that, initially, the wafer must not have circuit elements within
`it,” and that “forming the microelectronic circuit element in the wafer takes
`place after furnishing the substrate with a wafer layer.” Id. at 22. As
`previously discussed in our construction of “wafer” (see supra section
`II.A.2), however, the claimed wafer is not limited to a layer that does not
`initially contain microelectronic circuit elements.
`The other limitation placed on the term “wafer” in the claims is that
`“microelectronic circuit elements [are formed] in the exposed side of the
`wafer . . . .” Ex. 1001, 8:10–12; see Pet. Reply 7. Petitioner, however, does
`not rely on any microelectronic circuit element present in layer 6 or 8 in
`Figure 2B also to describe the later formed microelectronic circuit elements,
`but instead relies on CCD circuit 10 that is fabricated on channel layer 8, as
`we have previously discussed. See Pet. 22–24; Ex. 1003, Fig. 2C.
`Accordingly, we are persuaded that absorber and channel layers 6, 8 of Liu
`disclose the claimed wafer.
`
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`“wafer layer overlying an etch-stop layer”
`Patent Owner argues that “Liu’s CCD layers, even if they were
`considered a part of the initial substrate (which they are not), still do not
`teach the etch-stop and wafer substrate layers in the ’678 Patent because
`Liu’s CCD layers do not satisfy the challenged claims’ requirements that
`layers ‘overl[ie]’ each other.” PO Resp. 23 (citing Ex. 2001 ¶¶ 90–92). In
`this regard, Patent Owner argues that channel layer 8 of Liu does not
`“overlie” layer 4 (which Petitioner relies upon as the claimed etch-stop
`layer), because absorber layer 6 is between these layers. Id. at 24. This
`argument is not persuasive for two reasons. First, Petitioner relies on both
`absorber layer 6 and channel layer 8 as disclosing the claimed wafer layer.
`Second, as previously discussed in our construction of “overlying” (see
`supra section II.A.3), the claims do not require direct contact of the layers
`for one layer to be overlying another layer.
`Patent Owner also argues that substrate 18 does not overlie any layer
`in the Liu device. PO Resp. 24. This argument is not persuasive because, as
`discussed above, Petitioner relies on substrate 18 only to disclose the
`claimed etchable layer, and not to disclose the claimed wafer.
`Accordingly we are persuaded that Liu discloses the claimed wafer
`layer overlying an etch-stop layer.
`
`“forming a microelectronic circuit element in the exposed side
`of the wafer”
`Patent Owner argues that Liu does not disclose forming a
`microelectronic circuit element in the exposed side of the wafer. PO
`Resp. 25. Patent Owner’s arguments in this regard are premised on its
`arguments that channel layer 8 does not disclose the claimed wafer.
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`However, as discussed above, we are not persuaded by this argument, and
`agree with Petitioner that absorber and channel layers 6, 8 of Liu disclose
`the claimed wafer. We also agree with Petitioner that formation of Liu’s
`CCD circuit 10 discloses the claimed forming step.
`
`Conclusion
`For the reasons discussed, we agree with Petitioner’s above-described
`mapping of Liu to claim 1, and are persuaded that Petitioner has shown, by a
`preponderance of the evidence, that Liu anticipates independent claim 1.
`
`Claims 2–4
`Claim 2 depends from claim 1, and further recites “patterning the
`etch-stop layer.” Ex. 1001, 8:17–19. Regarding claim 2, Petitioner points to
`the disclosure in Liu that “access to CCD device circuit 10 can be provided
`by etching through the thin LPE layers down to interconnect pads 16.”
`Pet. 26 (citing Ex. 1003, 4:59–61). “[T]he etchant can be confined to the
`periphery of the device to provide a border supporting interconnect pads
`16.” Ex. 1003, 4:64–66; Pet. 26. Petitioner further asserts that claim 2 of
`the ’678 patent “does not limit the ‘patterning’ . . . to any particular location
`on the device.” Pet. 26 (citing Ex. 1002 ¶ 108).
`Claim 3 and 4 depend from claim 2, and further recite “after the step
`of patterning, . . . forming an electrical connection to the microelectronic
`circuit element through the patterned etch-stop layer and through the wafer,”
`and “after the step of patterning, . . . forming an electrical connection to the
`wafer through the patterned etch-stop layer,” respectively. Ex. 1001, 8:20–
`28. Regarding claim 3, Petitioner points to the disclosure in Liu that
`“[p]ads 16 are extensions of CCD circuit 10,” upon which Petitioner relies to
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`disclose the claimed microelectronic circuit element. Pet. 27; Ex. 1003,
`3:59–60. According to Petitioner, the “connections are through the etch-stop
`layer and through the wafer, because the etch-stop layer and wafer have been
`removed around the periphery of the device to provide external access to the
`microelectronic circuit element.” Pet. 27; see also Ex. 1003, 3:56–59
`(“[T]he area of semiconductor layers 4, 6, and 8 is less than the area of
`support 12 thus providing a ledge or border upon which interconnect pads 16
`are positioned.”). Regarding claim 4, Petitioner po