IPR2016-01249
`U.S. Patent No. 6,538,324
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`——————————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`——————————
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`Taiwan Semiconductor Manufacturing Company Limited
`Petitioner,
`
`v.
`
`Godo Kaisha IP Bridge 1
`Patent Owner.
`
`——————————
`
`Inter Partes Review No. IPR2016-01249
`U.S. Patent No. 6,538,324
`
`——————————
`
`PETITIONER’S RESPONSES TO PATENT OWNER’S MOTION FOR
`OBSERVATIONS REGARDING THE
`CROSS-EXAMINATION OF SANJAY K. BANERJEE, PH.D.
`
`
`
`
`
`
`
`
`
`U.S. Patent No. 6,538,324
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`——————————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`——————————
`
`Taiwan Semiconductor Manufacturing Company Limited
`Petitioner,
`
`v.
`
`Godo Kaisha IP Bridge 1
`Patent Owner.
`
`——————————
`
`Inter Partes Review No. IPR2016-01249
`U.S. Patent No. 6,538,324
`
`——————————
`
`PETITIONER’S RESPONSES TO PATENT OWNER’S MOTION FOR
`OBSERVATIONS REGARDING THE
`CROSS-EXAMINATION OF SANJAY K. BANERJEE, PH.D.
`
`
`
`
`
`
`
`
`
`
`
`
`Petitioner provides the following responses to Patent Owner’s observations
`
`on the cross-examination testimony of Sanjay K. Banerjee, Ph.D. (Paper 28).
`
`Response to Observation No. 1:
`
`The cited testimony (Exhibit 2044, 53:3-16) is misleading and incomplete.
`
`His testimony at 52:3-53:16, which includes Patent Owner’s cited testimony,
`
`merely agreed with the M.P.E.P.’s statement that the phrase “composed of” may
`
`mean “consisting essentially of” depending on the context:
`
`Q So would it be fair to say under the broadest reasonable
`interpretation of the claims of the ’324 patent that the word
`“composed” or “composed of,” as it appears in the claims of the
`’324 patent, means consisting essentially of --
` MR. KABAKOFF: Objection to form.
`By MR. FINK:
`Q
`-- as that was defined on the previous page [of the M.P.E.P.]?
`A Yes. But as it says, it depends on the facts of that particular
`scenario.
`
`Id., 53:3-13. Dr. Banerjee’s testimony does not contradict Petitioner’s argument
`
`that the intrinsic evidence of the ’324 patent supports an interpretation of
`
`“composed of” that allows for portions of the film to be solely tantalum metal
`
`(β-Ta) without nitrogen. Reply (Paper 19), 6.
`
`
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`Case No.: IPR2016-001249
`Patent No. 6,538,324
`
`Response to Observation No. 2:
`
`The cited testimony (Exhibit 2044, 54:7-18) is incomplete and misleading.
`
`Dr. Banerjee was merely agreeing with a statement in the M.P.E.P. presented for
`
`the first time at his deposition. He further testified that “composed of” means
`
`added materials cannot impact the adhesive properties of the upper surface of the
`
`film and the blocking capabilities of the lower portion of the film:
`
`Q So you would understand reading the claims of the ’324
`patent where it used composed of should mean consisting
`essentially of?
`A Yes, essentially of, as in you do not negatively impact the
`adhesive properties of the copper to that film.
`* * *
`Q So the only part of the film then you care about is the surface?
`You don’t care about the rest of the film?
`A No. You care about everything: the surface in terms of the
`adhesion and the lower part in terms of the blocking capabilities of
`the copper.
`
`Id., 54:20-55:3, 55:16-21.
`
`Dr. Banerjee’s testimony supports Petitioner’s argument that the intrinsic
`
`evidence of the ’324 patent supports an interpretation of “composed of” that allows
`
`for the inclusion of other materials. Reply, 6. Dr. Banerjee’s testimony contradicts
`
`Patent Owner’s argument that “a crystalline metal film containing nitrogen
`
`2
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`
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`Case No.: IPR2016-001249
`Patent No. 6,538,324
`therein” cannot contain any amount of “pure metal,” “amorphous metal nitride,” or
`
`“crystalline metal nitride.” POR (Paper 14), 14.
`
`Response to Observation No. 3:
`
`The cited testimony (Exhibit 2044, 56:4-13) is incomplete. In the cited
`
`testimony, Dr. Banerjee was merely agreeing with a statement in the M.P.E.P.
`
`presented for the first time at his deposition. Dr. Banerjee’s testimony supports
`
`Petitioner’s argument that the intrinsic evidence of the ’324 patent supports an
`
`interpretation of “composed of” that allows the top film to have pockets of beta-
`
`tantalum crystallites having no nitrogen. Reply, 6.
`
`Response to Observation No. 4:
`
`The cited testimony (Exhibit 2044, 115:1-116:15) is incomplete. Moreover,
`
`his testimony about whether the district court’s construction, based on a different
`
`standard, appears “reasonable” is irrelevant. Cuozzo Speed Techs., LLC v. Lee, 136
`
`S. Ct. 2131 (2016). Dr. Banerjee testified he did not know how the district court
`
`arrived at its construction:
`
`BY MR. FINK:
`Q … Why should the Board accept your understanding of how
`a person of ordinary skill in the art would construe the phrase “said
`first film being composed of crystalline metal containing nitrogen
`therein” as to -- as opposed to accepting the District Court’s claim
`interpretation?
` MR. KABAKOFF: Objection, form.
`
`3
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`Case No.: IPR2016-001249
`Patent No. 6,538,324
`THE WITNESS: I don’t know if the District Court went
`
`through this discussion that we had earlier about the heterogeneity
`of the films versus homogeneity of the films and all that but --
`
`Id., 122:15-123:5; see also 121:5-10.
`
`Dr. Banerjee’s testimony supports Petitioner’s argument that the Board
`
`should reject Patent Owner’s attempts to import an unclaimed limitation of a
`
`crystalline metal containing nitrogen “throughout” based on manufacturing
`
`methods disclosed in embodiments of the ’324 patent. Reply, 3-4.
`
`Response to Observation No. 5:
`
`The cited testimony (Exhibit 2044, 48:6-51:12) is incomplete. His cited
`
`testimony relates to whether adding amorphous tantalum nitride to a crystalline
`
`metal film would affect the properties of the film, which he later testified would
`
`depend on the amount of amorphous nitride added:
`
`In your opinion would composed of be interpreted to mean
`Q
`comprising, which is more open ended?
`A
`I mean, if you look at the objectives of the ’324 patent, the
`role of the first film is to enable the copper to stick very well to
`that first film, so as long as the crystalline component of that was
`large enough to enable good adhesion properties, that’d be okay.
`But if you kept adding more and more of this amorphous nitride
`where it causes the copper to delaminate, I don’t think that would
`be okay.
`
`4
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`
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`Case No.: IPR2016-001249
`Patent No. 6,538,324
`Id., 53:17-54:6; see also 54:20-55:3. Dr. Banerjee’s testimony supports Petitioner’s
`
`argument that the intrinsic evidence supports an interpretation of “composed of”
`
`that allows for the inclusion of other materials. Reply, 6. His testimony also
`
`supports Petitioner’s arguments concerning the interface of Zhang’s top and
`
`bottom barrier films. Id., 9-10. Dr. Banerjee’s testimony contradicts Patent
`
`Owner’s argument that “a crystalline metal film containing nitrogen therein”
`
`cannot contain any amount of “pure metal,” “amorphous metal nitride,” or
`
`“crystalline metal nitride.” POR, 14.
`
`Response to Observation No. 6:
`
`The cited testimony (Exhibit 2044, 17:3-10) is not relevant to this
`
`proceeding because in Exhibit 2044, 14:8-17:21, Dr. Banerjee explained his
`
`experience with sputtering transition metals in the same category as tantalum prior
`
`to 1999. See id., 15:17-18. Dr. Banerjee, a professor at the University of Texas,
`
`also testified that he has been teaching a graduate course on semiconductor device
`
`fabrication since 1987 “where we discuss all these aspects in the course.” Id.,
`
`17:14-21.
`
`Response to Observation No. 7:
`
`The cited testimony (Exhibit 2044, 18:12-19:7) is not relevant to this
`
`proceeding because in Exhibit 2044, 17:22-20:3, Dr. Banerjee explained that he
`
`has experience with measuring nitrogen concentrations in similar materials prior to
`
`5
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`Case No.: IPR2016-001249
`Patent No. 6,538,324
`1999. See id., 15:17-18. Dr. Banerjee also testified that he has been teaching a
`
`graduate course on semiconductor device fabrication since 1987 “where we discuss
`
`all these aspects in the course.” Id., 17:14-21.
`
`Response to Observation No. 8:
`
`The cited testimony (Exhibit 2044, 94:8-96:14) contradicts Patent Owner’s
`
`arguments that shutting off the nitrogen flow during sputtering results in a film
`
`with no nitrogen (POR, 29-30), because Dr. Banerjee’s cited testimony explains
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`that shutting off the nitrogen flow results in a film with a “tail of nitrogen” as
`
`Petitioner submits and Zhang discloses.
`
`Q And then when you shut off the nitrogen flow, you -- the
`result would be pure tantalum?
`A But the devil’s in the details. So if you just shut off the
`nitrogen but then kept the sputtering process going between layer
`15 and 16, presumably there’d be a tail of nitrogen, and then it
`would gradually die off.
`Q And then it will be pure tantalum?
`A
`If you went thick enough where the nitrogen was essentially
`pumped out of the chamber.
`
`Exhibit 2044, 95:9-18. Dr. Banerjee’s testimony supports Petitioner’s arguments,
`
`and Zhang’s express disclosures, of a decreasing nitrogen concentration throughout
`
`the thickness of the top film 32 in Zhang. Reply, 7-12. Moreover, the cited
`
`testimony is in response to Patent Owner’s question on how Nogami forms a layer
`
`6
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`Case No.: IPR2016-001249
`Patent No. 6,538,324
`of pure tantalum and thus is not relevant to whether shutting off nitrogen flow will
`
`necessarily result in a pure surface of tantalum.
`
`Response to Observation No. 9:
`
`The cited testimony (Exhibit 2044, 36:4-16) does not contradict Petitioner’s
`
`assertions, as Patent Owner contends. Dr. Banerjee testified that the claimed “first
`
`film” allows some amount of amorphous tantalum nitride so long as it would not
`
`impact the properties of that film:
`
`In your opinion would composed of be interpreted to mean
`Q
`comprising, which is more open ended?
`A
`I mean, if you look at the objectives of the ’324 patent, the
`role of the first film is to enable the copper to stick very well to
`that first film, so as long as the crystalline component of that was
`large enough to enable good adhesion properties, that’d be okay.
`But if you kept adding more and more of this amorphous nitride
`where it causes the copper to delaminate, I don’t think that would
`be okay.
`
`Id., 53:17-54:6. Dr. Banerjee’s testimony supports Petitioner’s argument that the
`
`intrinsic evidence of the ’324 patent supports an interpretation of “composed of”
`
`that allows for the inclusion of other materials. Reply, 6. Dr. Banerjee’s testimony
`
`contradicts Patent Owner’s argument that “a crystalline metal film containing
`
`nitrogen therein” cannot contain any amount of “pure metal,” “amorphous metal
`
`nitride,” or “crystalline metal nitride.” POR, 14.
`
`7
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`Case No.: IPR2016-001249
`Patent No. 6,538,324
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`Response to Observation No. 10:
`
`The cited testimony (Exhibit 2044, 100:6-13) is not relevant because Dr.
`
`Banerjee was asked to compare a layer of pure tantalum to a layer of tantalum
`
`nitride rather than to a film composed of “crystalline metal containing nitrogen
`
`therein” as claimed. In Exhibit 2044, 100:14-102:7, Dr. Banerjee explained that a
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`surface of pure tantalum would provide better adhesion to copper than a tantalum
`
`film with nitrogen but only if the amount of nitrogen in the tantalum film “messed
`
`up” the wetting and adhesion properties of the copper:
`
`Q So at the time of the invention of the ’324 patent, would the
`understanding of a person of ordinary skill in the art be that a
`surface of pure tantalum would give better adhesion than a layer of
`tantalum with nitrogen, all things the same?
` MR. KABAKOFF: Objection, form.
`
`THE WITNESS: A surface of pure tantalum would give better
`adhesion than tantalum with nitrogen if the amount of nitrogen that
`you added messed up the crystalline structure of the tantalum
`nitride -- I shouldn’t use the word “tantalum nitride” -- the
`tantalum nitrogen alloy to the extent that it messed up the wetting
`and the adhesion properties of the copper.
`
`Id., 101:3-16. Dr. Banerjee’s testimony supports Petitioner’s argument that a small
`
`amount of nitrogen in a tantalum film would not affect the adhesion properties of
`
`the film. Petition (Paper 2), 32.
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`8
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`Case No.: IPR2016-001249
`Patent No. 6,538,324
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`Response to Observation No. 11:
`
`The cited testimony (Exhibit 2044, 101:3-102:7) does not contradict
`
`Petitioner’s arguments because Dr. Banerjee explained sufficient nitrogen needs to
`
`be added to a tantalum film before affecting the adhesion properties to copper.
`
`Dr. Banerjee also testified there are other reasons for adding nitrogen, including
`
`improving polishing of subsequently deposited copper:
`
`I’m just asking -- you’re asking for adhesion. You said the
`Q
`desire is for adhesion. Doesn’t pure tantalum adhere better to
`copper than tantalum nitride?
` MR. KABAKOFF: Objection to form.
`
`THE WITNESS: But there’s many aspects with a problem.
`Not only do you want things to adhere. There’s things like, you
`know, subsequent to the deposition of the copper you have to
`polish it down using chemical mechanical polishing, and there’s
`cited art where if you have a little bit of nitrogen added to the
`tantalum, it doesn’t degrade the crystalline properties. It’s an
`optimization problem, an engineering problem.
`
`Id., 99:1-21.
`
`Response to Observation No. 12:
`
`The cited testimony (Exhibit 2044, 109:5-111:15) is not relevant to this
`
`proceeding because Dr. Banerjee was discussing the increase of resistivity in the
`
`context of Exhibit 1033. In Exhibit 2044, 118:19-119:11, Dr. Banerjee further
`
`9
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`Case No.: IPR2016-001249
`Patent No. 6,538,324
`testified that adding a small amount of nitrogen would generally cause an initial
`
`decrease of resistivity:
`
`In general, what effect does adding a small amount of
`Q
`nitrogen to a tantalum film have on the resistivity of the film?
` MR. FINK: Object to form.
`
`THE WITNESS: But in the ’324 patent there’s actually a
`figure. Figure 9 is an exemplary plot of how resistivity depends on
`nitrogen flow rate and sputtering power, and it shows that for low
`nitrogen concentrations there’s a decrease of resistivity, but then
`higher nitrogen concentrations, the resistivity goes up.
`
`Id., 119:1-11. Dr. Banerjee’s testimony supports Petitioner’s argument that a
`
`POSITA would have known that adding a small amount of nitrogen in a tantalum
`
`film reduces its resistivity. Reply, 24. Dr. Banerjee’s testimony contradicts Patent
`
`Owner’s contention that introducing nitrogen into a tantalum film has a
`
`“deleterious effect on resistivity.” POR, 51.
`
`Response to Observation No. 13:
`
`The cited testimony (Exhibit 2044, 119:1-18) demonstrates the ’324 patent
`
`confirms the addition of a small amount of nitrogen causes an initial decrease of
`
`resistivity in a tantalum film, as was well understood in the art at the time of the
`
`’324 patent, for example, as taught in Exhibits 1015 and 2042. Reply, 24; see also
`
`Ex. 1036, 125:3-20. Dr. Banerjee’s testimony contradicts Patent Owner’s
`
`10
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`
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`Case No.: IPR2016-001249
`Patent No. 6,538,324
`contention that introducing nitrogen into a tantalum film has a “deleterious effect
`
`on resistivity.” POR, 51.
`
`Response to Observation No. 14:
`
`The cited testimony (Exhibit 2044, 36:18-39:4) demonstrates Dr. Banerjee
`
`applied the broadest reasonable interpretation (BRI) to the terms “amorphous” and
`
`“crystalline” based on the ’324 patent. See also id., 26:1-7. In Exhibit 2044, 36:17-
`
`38:12 and 92:3-10, Dr. Banerjee applied the BRI to the term “amorphous,”
`
`including both “very, very small grain” crystals as well as amorphous metal
`
`nitride. See also id., 92:3-10:
`
`Q Why? It says two layers.
`A No. The goal of ’324 is to have a top film with large
`crystalline grains so that the copper can attach to that, and the
`fourth film in Nogami corresponds to that, and there should be a
`lower layer with small grain or amorphous tantalum nitride so that
`it can block the diffusion of the copper. That’s the essence of the
`’324 patent.
`
`Dr. Banerjee’s testimony contradicts Patent Owner’s arguments concerning the
`
`claim construction of “amorphous.” POR, 15-16. In Exhibit 2044, 39:18-40:2, His
`
`testimony further demonstrates he applied the BRI to the term “crystalline metal,”
`
`including both “crystalline” or “large grain polycrystalline grains.” See also id.,
`
`26:1-7.
`
`11
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`
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`Case No.: IPR2016-001249
`Patent No. 6,538,324
`
`Response to Observation No. 15:
`
`The cited testimony (Exhibit 2044, 94:4-95:1) supports Petitioner’s position
`
`that the top film in Nogami can be a tantalum film containing nitrogen. See also
`
`id., 117:21-118:18; cf. Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 959 (Fed. Cir.
`
`2014) (finding optional components disclosed in prior art can anticipate a claim
`
`element); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (holding a
`
`combination may be obvious if there are only a finite number of identified,
`
`predictable solutions, with a reasonable expectation of success). Further, the cited
`
`testimony shows the meaning of “pure” depends on context, consistent with
`
`Petitioner’s argument that Ding uses “pure” in distinguishing a single-layer barrier
`
`film from a multi-layer barrier film. Reply, 15.
`
`12
`
`
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`Case No.: IPR2016-001249
`Patent No. 6,538,324
`
`Response to Observation No. 16:
`
`In the cited testimony (Exhibit 2044, 87:14-88:5), Dr. Banerjee testified that
`
`“Ta” is the symbol for tantalum. Dr. Banerjee’s testimony supports Petitioner’s
`
`arguments that β-Ta in the ’324 patent lacks nitrogen therein. Paper 20, 22.
`
`Response to Observation No. 17:
`
`The cited testimony (Exhibit 2044, 67:9-17) does not support any proposed
`
`construction of “throughout” in Substitute Claim 11 because neither party proposed
`
`a construction for that term. Dr. Banerjee’s also just provided his understanding of
`
`the claimed phrase.
`
`Response to Observation No. 18:
`
`The cited testimony (Exhibit 2044, 57:4-63:8) does not support Patent
`
`Owner’s arguments that nitrogen must be throughout the claimed “first film”
`
`because Dr. Banerjee testified (e.g., id., 61:4-64:4 and 57:4-17) the top film
`
`described in the ’324 patent would include pockets of beta-tantalum crystallites
`
`having no nitrogen:
`
`Q So if the tantalum nitrogen is on the top, middle, and bottom,
`isn’t that the same as saying there would be nitrogen on the top,
`bottom, and middle?
` MR. KABAKOFF: Objection to form.
`
`THE WITNESS: Once again, we are looking at now a
`heterogeneous system where there would be pockets of nitrogen
`where the tantalum nitrogen .1 crystallites lie, and there would be
`
`13
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`Case No.: IPR2016-001249
`Patent No. 6,538,324
`pockets which are deficient in terms of nitrogen, which are these
`beta tantalum crystallites ….
`
`Id., 61:4-14. Dr. Banerjee’s testimony supports Petitioner’s arguments that
`
`“therein” does not mean “throughout” because the first film contains localized
`
`regions containing only tantalum metal (β-Ta). Reply, 6. Dr. Banerjee’s testimony
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`further supports Petitioner’s arguments that the intrinsic evidence supports a broad
`
`interpretation of “composed of” by allowing the first film to include regions of
`
`tantalum metal (β-Ta) that are not “consisting essentially of crystalline metal
`
`containing nitrogen therein.” Id.
`
`Response to Observation No. 19:
`
`The cited testimony (Exhibit 2044, 76:12-80:3, 83:19-84:1, 85:11-16)
`
`supports Petitioner’s arguments that a solid solution requires a homogenous
`
`mixture of a substance in a single solid phase. Dr. Banerjee testified that multiple
`
`phases mixed together, such as the mixture of beta-tantalum and TaN0.1 phases in
`
`the ’324 patent, is not a solid solution:
`
`Q So depending upon how you look at it, what scale, it may be a
`solid solution or it might not be a solid solutions; is that right?
`
`14
`
`
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`Case No.: IPR2016-001249
`Patent No. 6,538,324
`A You have to look at length scales larger than atomic length
`scales because in a solid solution, because of these random
`locations of atoms, you will also have solute rich regions and
`solute poor regions, but that doesn’t -- that doesn’t imply that it is
`not a solid solution, but if you have multiple phases mixed together
`where on larger length scales it is homogeneous, that is not a solid
`solution.
`
`Id., 83:7-18; see also 44:15-45:19.
`
`Dated: July 26, 2017
`
`Respectfully submitted,
`
` By: / E. Robert Yoches /
`E. Robert Yoches, Lead Counsel
`Reg. No. 30,120
`
`15
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`Case No.: IPR2016-001249
`Patent No. 6,538,324
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`CERTIFICATE OF SERVICE
`
`Under 37 C.F.R. § 42.6(e), the undersigned certifies that the foregoing
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`PETITIONER’S RESPONSES TO PATENT OWNER’S MOTION FOR
`
`OBSERVATIONS REGARDING THE CROSS-EXAMINATION OF
`
`SANJAY K. BANERJEE, PH.D. was served on July 26, 2017, via electronic mail
`
`directed to counsel of record for the Patent Owner at:
`
`Michael J. Fink (Reg. No. 31,827)
`mfink@gbpatent.com
`
`Neil F. Greenblum (Reg. No. 28,394)
`ngreenblum@gbpatent.com
`
`Arnold Turk (Reg. No. 33,094)
`aturk@gbpatent.com
`
`Greenblum & Bernstein, P.L.C.
`1950 Roland Clarke Place
`Reston, Virginia 20191
`Tel: 703-716-1191
`
`
`Patent Owner has agreed to electronic service.
`
`Dated: July 26, 2017
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`By: /Lauren K. Young/
`Lauren K. Young
`Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
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