`U.S. Patent No. 6,538,324
`
`Filed on behalf of Godo Kaisha IP Bridge 1
`
`By: Michael J. Fink (mfink@gbpatent.com)
`Greenblum & Bernstein, P.L.C.
`1950 Roland Clarke Place
`Reston, Virginia 20191
`Tel: (703) 716-1191
`Fax: (703) 716-1180
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY LIMITED,
`Petitioner,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`____________
`
`Case IPR2016-01249
`U.S. Patent No. 6,538,324
`____________
`
`PATENT OWNER’S CONTINGENT MOTION TO AMEND
`PURSUANT TO 37 C.F.R. § 42.121
`
`
`
`Mail Stop PATENT BOARD, PTAB
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`Case IPR2016-01249 for
`U.S. Patent No. 6,538,324
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`Pursuant to 37 C.F.R. § 42.121 and the Order dated February 22, 2013
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`(Paper No. 13), Godo Kaisha IP Bridge 1 (“Patent Owner”) hereby submits this
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`Contingent Motion to Amend (“Motion”). This Motion is being filed separately in
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`both IPR2016-001249 and IPR2016-001264, and is substantively similar by
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`submitting the same Substitute Claims and pointing out, in the same manner, that
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`the contingent Substitute Claims are patentable over the documents of record in
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`each IPR proceeding, known to Patent Owner and of record in U.S. Patent No.
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`6,538,324 (“the ‘324 patent”).
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`Authorization is hereby provided to charge any fee that is necessary for
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`entry and/or consideration of this Motion and/or to substitute claims in the ‘324
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`patent to Deposit Account No. 19-0089.
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`I.
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`Statement of Relief Requested
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`Patent Owner hereby moves to amend the ‘324 patent contingent upon
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`whether instituted claims 5, 7 and/or 9 are found unpatentable in the present IPR
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`proceeding. See 37 C.F.R. § 42.121. If instituted claim 5 is found to be
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`unpatentable, Patent Owner requests that the Board cancel claim 5 and replace it
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`with Substitute Claim 11, and/or if instituted claim 9 is found to be unpatentable,
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`Patent Owner requests that the Board cancel claim 9, and replace it with Substitute
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`Claim 12 and/or if instituted claim 7 is found to be unpatentable, Patent Owner
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`1
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`requests that the Board cancel claim 7 and replace it with Substitute Claim 13. See
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`37 C.F.R. § 42.22(a)(1); see also 35 U.S.C. § 316(d).
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`II. The Motion and Proposed Amendments Comply with § 42.121
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`Consistent with the requirements of 37 C.F.R. § 42.121, Patent Owner
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`conferred with the Board on February 21, 2017.
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`Patent Owner’s proposed amendments are responsive to the ground of
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`unpatentability because trial was instituted on claims 1-3, 5-7, and 9 (“challenged
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`claims”), and the proposed amendments are to claims 5, 7 and 9. See Paper No. 7
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`at 16; see also 37 C.F.R. § 42.121(a)(2)(i). The sole instituted ground of
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`unpatentability for claims 1-3, 5-7, and 9 was under 35 U.S.C. § 103(a) over U.S.
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`Patent No. 6,887,353 to Ding in view of U.S. Patent No. 5,893,752 to Zhang. See
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`Paper No. 7 at 8-16. That ground involved Petitioner’s position that it would be
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`obvious to a person having ordinary skill in the art (“PHOSITA”) to include
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`nitrogen in Ding’s top Ta layer in view of Zhang. See Petition at 22-35.1
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`
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`1 The Board rejected Petitioner’s inherent anticipation argument that it would be
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`obvious to a PHOSITA that Ding’s top Ta layer contains nitrogen in view of
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`Zhang argued in the Petition at pp. 18-22. See Decision (Paper 7), p. 11-12. Thus,
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`Petitioner’s argument that Ding per se contains nitrogen is not an issue for
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`consideration in this proceeding.
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`2
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`The Board did not adopt Patent Owner’s proposed claim constructions for
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`limitations recited in independent claims 1 and 5 of the ‘324 patent. The Board
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`stated that the limitations construed by Patent Owner did not require express
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`construction, and did not require a mixture of crystalline metal with nitrogen
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`throughout or a noncrystalline metal nitride throughout. Decision (Paper 7), pp. 6-
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`8.
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`Institution of the IPR proceeding was granted because the Board concluded
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`that there is a reasonable likelihood Petitioner would prevail in showing that
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`Claims 1 and 5 would have been obvious over Ding in view of Zhang based upon
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`Petitioner’s argument that a PHOSITA would have employed Zhang’s teaching of
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`including some nitrogen in the second-formed layer of its barrier film (and in an
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`amount less than the nitrogen content of the first-formed layer) to modify Ding,
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`such that its crystalline tantalum film would contain nitrogen (and in an amount
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`less than its tantalum nitride layer) to achieve beneficial predictable results through
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`known techniques. Decision, pp. 12-14.
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`If the Board continues to refuse to adopt Patent Owner’s proposed claim
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`constructions, or finds that the challenged claims are unpatentable under Patent
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`Owner’s proposed claim constructions, Patent Owner amends claims 5, 7 and 9 to
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`more explicitly recite the claimed subject matter and add an additional limitation.
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`Proposed Substitute Claim 11 (which is to be substituted for claim 5), Substitute
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`Claim 12 (which is to be substituted for claim 9) and Substitute Claim 13 (which is
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`to be substituted for claim 7) more explicitly recite the claimed subject matter.
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`Additionally Substitute Claim 13 provides an additional limitation.
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`Thus, the proposed amendments even more explicitly recite the subject
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`matter of independent claim 5 and dependent claim 9 to address the Board’s
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`interpretation of these claims. While claims 5 and 9 of the ‘324 patent should be
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`construed to include language as included in the proposed Substitute Claims,
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`Patent Owner submits that these claims are contingently submitted in the event that
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`claims 5 and/or 9 of the ‘324 patent are held to be unpatentable. The proposed
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`amendment further defines the subject matter recited in dependent claim 7, and is
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`contingently submitted in the event that claim 7 of the ‘324 patent is held to be
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`unpatentable.
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`More specifically, Substitute Claims 11-13 are, as follows:
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`Claim 11
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`Substitute Claim 11 further defines independent claim 5 by more explicitly
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`reciting “the nitrogen being present throughout the first film.”
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`Claim 12
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`Substitute Claim 12 further defines claim 9 which depends upon and
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`therefore includes the limitations of independent claim 5, by more explicitly
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`reciting “said copper film being in direct contact with said first film, wherein said
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`first film contains nitrogen in a portion being in contact with said copper film.”
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`Substitute Claim 12 has been written in independent form including all the
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`Case IPR2016-01249 for
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`limitations of original claim 5.
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`Claim 13
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`Substitute Claim 13 further defines dependent claim 7 by even more
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`explicitly reciting “wherein said first film being composed of crystalline metal
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`containing nitrogen therein is a solid solution”; by reciting “wherein a copper film
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`is formed on and in direct contact with said first film”; and by changing its
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`dependency to depend upon Substitute Claim 11.
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`Thus, it is seen that the Substitute Claims include the original claim
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`language and additional language to either more explicitly recite the original claim
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`language (Substitute Claims 11-13) or recite an additional feature (Substitute
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`Claim 13). By reciting original claim language in its entirety, and by either more
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`explicitly reciting limitations or adding a limitation to a claim, the amendments do
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`not enlarge the scope of the claims. Furthermore, new subject matter is not
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`introduced. 37 C.F.R. §42.121(a)(2)(ii).
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`As will be set forth below, Substitute Claims 11-13 are patentable over the
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`instituted ground of patentability and also are patentable over the prior art of record
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`and prior art known to Patent Owner.
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`Patent Owner has presented a reasonable number of substitute claims: three
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`Substitute Claims are proposed, one substitute for independent claim 5; and one
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`substitute claim for each of dependent claims 7 and 9. 37 C.F.R. § 42.121(a)(3).
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`The Motion includes a claim listing (Appendix A) and identifies support in
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`the original disclosure for the proposed amendments. See 37 C.F.R. § 42.121(b)(1).
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`In this regard, it is noted that Patent Owner claims priority to Japanese Patent
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`Application No. 11-214110, filed June 24, 1999, which also supports the Substitute
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`Claims. However, because no intervening prior art has been asserted in the present
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`proceeding, an English translation of the Japanese priority application and
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`supporting disclosure therein is not presented with this Motion. See 37 C.F.R. §
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`42.121(b)(2). Patent Owner preserves its right to establish support for claimed
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`subject matter in the Japanese priority application in the event that intervening
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`prior art is asserted in this or any other proceeding. Accordingly, Patent Owner
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`has satisfied all requirements of 37 C.F.R. § 42.121.
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`III. Claim Listing
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`Patent Owner’s claim listing is attached hereto as Appendix A. See 37
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`C.F.R. §42.121(b). Currently, the ’324 patent contains claims 1-10. Trial was
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`instituted on only claims 1-3, 5-7 and 9. See Paper No. 7, p. 16.
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`The claim listing includes issued claims 1-10 and the proposed Substitute
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`Claims 11-13. Other than reformatting claim 9 into independent form, the only
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`amendments made to the claims are the explicit recitations noted in Section II
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`above.
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`IV. Claim Constructions
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`Patent Owner asserts that the broadest reasonable interpretation (“BRI”) of
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`“said first film being composed of crystalline metal containing nitrogen therein” is
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`“a first film consisting essentially of a mixture of single crystalline or
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`polycrystalline metal with nitrogen throughout.”
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`For the reasons set forth in Patent Owner’s Response at pp. 7-16, in an IPR,
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`claim terms in an unexpired patent are given their broadest reasonable construction
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`in light of the specification of the patent. 37 C.F.R. § 42.100(b). Under the BRI
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`standard, claim terms generally are given their ordinary and customary meaning, as
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`would be understood by one of ordinary skill in the art in the context of the entire
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`disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
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`Claims, however, must be construed reasonably in light of the specification and
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`the patent’s prosecution history. A construction that is “unreasonably broad” and
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`which does not “reasonably reflect the plain language and disclosure” will not pass
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`muster. Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015).
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`However, to the extent that the Board construes the claims of the ‘324 patent
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`to not include a first film wherein the nitrogen is present throughout, claim 5 as
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`Substitute Claim 11; claim 9 as Substitute Claim 12; and claim 7 as Substitute
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`Claim 13 are presented herein.
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`As noted above, Substitute Claim 11 further defines independent claim 5 by
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`more explicitly reciting “the nitrogen being present throughout the first film;”
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`Substitute Claim 12 further defines claim 9 by more explicitly reciting “said
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`copper film being in direct contact with said first film, wherein said first film
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`contains nitrogen in a portion being in contact with said copper film;” and
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`Substitute Claim 13 further defines Substitute Claim 11 by more explicitly reciting
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`“wherein said first film being composed of crystalline metal containing nitrogen
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`therein is a solid solution” and by reciting “wherein a copper film is formed on and
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`in direct contact with said first film.”
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`In the context of the ‘324 patent, the entire specification, including the
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`general description of the invention, each of the examples and the brief description
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`of drawings describes a diffusion barrier that a PHOSITA would readily
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`understand necessarily includes nitrogen throughout the crystalline metal film.
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`The presence of nitrogen throughout the crystalline metal film is not only readily
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`apparent from its description of being a mixture or a solid solution, but also from
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`the manner in which the first film is formed. Exhibit 2037, ¶¶ 33-36.
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`The ‘324 patent specification differentiates a “crystalline metal film
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`containing nitrogen therein” (Exhibit 1001, 12:19-23) from pure crystalline metal
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`film (Id., 12:15-18), from amorphous metal nitride film (Id., 12:24-28), and from
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`crystalline metal nitride film. (Id., 12:29-31). The ‘324 patent specification
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`discloses mixtures and solid solutions. See Id., 12:19-24; 12:62-67; 13:4-24;
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`13:57-63; 16:41-47; 8:24-28; 13:16-20; Fig. 21; Exhibit 2010; Exhibit 2037, ¶¶ 34,
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`35.
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`Because the ‘324 patent describes the first film as “crystalline metal film
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`containing nitrogen therein” as a mixture or a solid solution, a PHOSITA would
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`understand that the film contains crystalline metal and nitrogen throughout from
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`the top of the upper surface to the bottom of the first film. Exhibit 2037, ¶35.
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`The understanding that the first film contains crystalline metal and nitrogen
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`throughout from the top of the upper surface to the bottom of the first film is
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`apparent not only from the description of the barrier film in the ‘324 patent, but
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`also upon the discovery upon which the invention is indicated to be based. Exhibit
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`1001, 12:32-41. Each generally disclosed embodiment and each disclosed example
`
`in the ‘324 patent includes the “nitrogen in plasma gas being kept constant” when
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`forming the amorphous and crystalline layers. See Id., 6:63-7:12; Patent
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`Application No. 09/596,415 (“the ‘415 application), pp. 9:29-10:7; 11:22-12:1;
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`21:20-25; 31:23-28 (Exhibit 1002; pp. 62-65, 74, 84; Exhibit 2037, ¶36.
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`The ‘324 patent teaches that increasing the RF power while maintaining the
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`N2 gas ratio will change the film’s structural characteristics from amorphous to
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`crystalline metal film containing nitrogen therein. Exhibit 1001, 12:58-67. A
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`PHOSITA would have understood a film that is produced with “nitrogen in plasma
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`gas being kept constant” would have nitrogen present throughout the “crystalline
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`metal film containing nitrogen therein” so that a film “composed of crystalline
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`metal containing nitrogen therein” would be understood to contain nitrogen
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`throughout the film, i.e., from the surface contacting the amorphous metal nitride
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`layer to the upper surface for contacting the copper wiring layer. Exhibit 2037,
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`¶¶35, 36.
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`Thus, a PHOSITA would readily understand that nitrogen is present
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`throughout the “crystalline metal film containing nitrogen therein”; that the first
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`film contains nitrogen in the upper surface for contacting a copper film; and that
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`the first film being composed of crystalline metal containing nitrogen therein is a
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`crystalline metal film containing nitrogen in mixture or solid solution. Exhibit
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`2037, ¶36.
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`Accordingly, the Substitute Claims that more explicitly recite these features
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`should not be considered to be changing claim scope.
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`V.
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`Support in the Originally Filed Application Disclosure for Each
`Proposed Amended Claim
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`Patent Application No. 09/596,415 (“the ‘415 application”), which issued as
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`the ‘324 patent, was originally filed on June 19, 2000 (Exhibit 1002) provides
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`support for the Substitute Claims.
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`A.
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`Support for Substitute Claims 11, 12 and 13 in the Originally
`Filed U.S. Application
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`Support for the Substitute Claims is present in the originally filed U.S.
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`application as shown in the Tables below (Exhibit 2037, ¶¶31-41):
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`Substitute Claim 11
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`Support in ‘415 application
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`A multi-layered wiring structure
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`At least p. 8:21-22; and claim 5 at
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`comprising
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`line 1 (p. 33); Ex. 1002, pp. 61, 86.
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`a barrier film which prevents diffusion
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`At least p. 8:22-23; and claim 5 at
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`of copper from a copper wiring layer
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`lines 1-3 (p.33); Ex. 1002, pp. 61, 86.
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`formed on a semiconductor substrate,
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`said barrier film having a multi-layered
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`At least p. 8:23-24; and claim 5, at
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`structure of first and second films,
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`line 4; Ex. 1002, pp. 61, 86.
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`said first film being composed of
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`At least p. 8:24-25; and claim 5 at
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`crystalline metal containing nitrogen
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`lines 5-6 (p.33); Ex. 1002, pp. 61,86.
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`therein,
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`the nitrogen being present throughout
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`See Item A below*
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`the first film,
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`said second film being composed of
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`At least p. 8:25-26; and claim 5 at
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`amorphous metal nitride,
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`line 7 (p.33); Ex. 1002, pp. 61, 86.
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`said barrier film being constituted of
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`At least p. 8:26-27; and claim 5 at
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`common metal atomic species,
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`line 8 (p.33); Ex. 1002, pp. 61, 86.
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`said first film being formed on said
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`At least p. 8:16; and claim 6 (pp.33-
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`second film,
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`34); Ex. 1002, pp. 61, 86 and 87.
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`said first film in direct contact with said
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`At least p. 15:27-16:2; and Fig. 4B,
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`second film,
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`amorphous metal nitride film 15 and
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`11
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`a crystalline metal film 16 containing
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`nitrogen therein; Ex. 1002, pp. 68, 69
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`and 95.
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`said first film containing nitrogen in a
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`At least pp. 23:8-15; 28:17-20; Ex.
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`smaller content than that of said second
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`1002, pp. 76, 81.
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`film.
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`*Item A - The nitrogen being present throughout the first film: The presence of
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`nitrogen throughout the first film is not only readily apparent from its description
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`of being a mixture or solid solution, but also from the manner in which the first
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`film is formed. Exhibit 2037, ¶¶33-36, 50-65.
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`The ‘415 application specification consistently describes a “crystalline metal
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`film containing nitrogen therein” as a film composed of crystalline metal and
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`nitrogen “in mixture.” Exhibit 1002, pp. 74 (21:4-7); see also pp. 75 (22:6-10); 75
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`(22:13-28); 76 (23:25-24:1); 81 (28:17-26); Exhibit 2037, ¶34.
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`As depicted in Fig. 21, the crystalline metal film containing nitrogen therein
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`is a “solid solution,” i.e., a homogenous, solid mixture of substance. Exhibit 1002,
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`pp. 67 (14:8-11); 75 (22:22-25); and Fig. 21; Exhibit 2010; Exhibit 2036. Because
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`the ‘415 application describes the first film as “crystalline metal film containing
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`nitrogen therein” as a mixture or solid solution, a PHOSITA would understand that
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`the film is homogeneous, i.e., contains crystalline metal and nitrogen throughout
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`from the top of the upper surface to the bottom of the first film. Exhibit 2037,
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`¶¶34, 35, 52, 53.
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`The discovery upon which the invention is indicated to be based, as
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`discussed in the ‘324 application, for example, at p. 21:13-19, is included in each
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`generally disclosed embodiment and each example in the ‘415 application. This
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`discovery includes the “nitrogen in plasma gas being kept constant” when forming
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`the amorphous and crystalline layers. See ‘415 application, pp. 9:29-10:7; 11:22-
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`12:1; 21:20-25; 31:23-28 (Exhibit 1002; pp. 62-65, 74, 84); Exhibit 2037, ¶¶36, 64,
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`65. The ‘415 application teaches that increasing the RF power while maintaining
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`the N2 gas ratio will change the film’s structural characteristics from amorphous to
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`crystalline metal film containing nitrogen therein. Exhibit 1002, pp. 64-65, 84
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`(11:22-12:1; 31:23-28); Exhibit 2037, ¶36. “In accordance with this method, an
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`upper film in the diffusion-barrier film inevitably contains nitrogen therein.”
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`Exhibit 1002, p. 84 (31:27-28). A PHOSITA would have understood a film that is
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`produced with “nitrogen in plasma gas being kept constant” and increased RF
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`power would have nitrogen present throughout the “crystalline metal film
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`containing nitrogen therein.” Exhibit 2037, ¶36.
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`Substitute Claim 12
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`Support in ‘415 application
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`A multi-layered wiring structure
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`At least p. 8:21-22; and claim 5 at
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`comprising
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`line 1 (p. 33); Ex. 1002, pp. 61, 86.
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`a barrier film which prevents diffusion of At least p. 8:22-23; and claim 5 at
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`copper from a copper wiring layer formed
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`lines 1-3 (p.33); Ex. 1002, pp. 61,
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`on a semiconductor substrate,
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`86.
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`said barrier film having a multi-layered
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`At least p. 8:23-24; and claim 5, at
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`structure of first and second films,
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`line 4; Ex. 1002, pp. 61, 86.
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`said first film being composed of
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`At least p. 8:24-25; and claim 5 at
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`crystalline metal containing nitrogen
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`lines 5-6 (p.33); Ex. 1002, pp. 61,
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`therein,
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`86.
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`said second film being composed of
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`At least p. 8:25-26; and claim 5 at
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`amorphous metal nitride,
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`line 7 (p.33); Ex. 1002, pp. 61, 86.
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`said barrier film being constituted of
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`At least p. 8:26-27; and claim 5 at
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`common metal atomic species,
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`line 8 (p.33); Ex. 1002, pp. 61, 86.
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`said first film being formed on said second
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`At least p. 8:16; and claim 6
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`film,
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`(pp.33-34); Ex. 1002, pp. 61, 86
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`said first film in direct contact with said
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`At least p. 15:27-16:2; and Fig.
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`and 87.
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`second film,
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`
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`4B, amorphous metal nitride film
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`15 and a crystalline metal film 16
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`containing nitrogen therein; Ex.
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`1002, pp. 68, 69 and 95.
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`said first film containing nitrogen in a
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`At least pp. 23:8-15; 28:17-20; Ex.
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`smaller content than that of said second
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`1002, pp. 76, 81.
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`film,
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`a copper film formed on said first film,
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`At least p. 9:1-2; and claim 10 (p.
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`34); Ex. 1002, pp. 62 and 87.
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`said copper film being in direct contact
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`At least p. 10:29-11:3; Ex. 1002,
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`with said first film,
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`pp. 63-64.
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`wherein said first film contains nitrogen in
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`At least p. 30:20-24; Ex. 1002, p.
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`a portion being in contact with said copper
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`83; and see Item B below*
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`film.
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`*Item B - wherein said first film contains nitrogen in a portion being in
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`contact with said copper film: As discussed in Item A above, nitrogen is present
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`throughout the first film. Accordingly, with the copper film being in direct contact
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`with the first film, the first film would contain nitrogen in a portion being in
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`contact with the copper film. Exhibit 1002, p. 83 (30:20-24); Exhibit 2037, ¶¶38,
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`39.
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`Substitute Claim 13
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`Support in ‘415 application
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`The multi-layered wiring structure as set
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`At least p. 8:21-22; and claim 5 at
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`forth in claim [[5]] 11,
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`line 1 (p. 33); Ex. 1002, pp. 61, 86.
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`wherein said first film has a thickness in
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`At least p. 9:19-20; and claim 8
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`the range of 60 angstroms to 300
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`(p.34); Ex. 1002, pp. 62, 87.
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`angstroms both inclusive;
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`wherein said first film being composed
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`At least pp. 14:8-11; 22:22-25; and
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`of crystalline metal containing nitrogen
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`Fig. 21, Ex. 1002, pp. 67, 75.
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`therein is a solid solution; and
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`a copper film is formed on and in direct
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`At least pp. 9:1-2; 10:29-11:3; claim
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`contact with said first film.
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`5, at line 7, and claim 10 (pp. 33-34);
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`Ex. 1002, pp. 62-64 and 87.
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`VI. The Substitute Claims are Patentable.
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`No prior art of record or other prior art known to Patent Owner anticipates or
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`renders obvious Substitute Claims 11-13.
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`With regard to anticipation, Petitioner has not proposed any grounds of
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`rejection based on anticipation against any challenged claim of the ‘324 patent.
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`With regard to obviousness, Petitioner has asserted obviousness rejections
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`based upon Ding in view of Zhang, and Zhang in view of Ding, with or without
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`Sun, in the ‘1249 and ‘1264 IPR proceedings. Patent Owner submits that all prior
`
`art known to Patent Owner, including the prior art of record in these proceedings,
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`and the prior art of record in the ‘324 patent, does not teach or suggest the subject
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`matter recited in Substitute Claims 11-13 for the reasons set forth in Patent Owners
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`Responses and the reasons set forth below.
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`A. Description of the State of the Prior Art and Patentable
`Differences Thereover
`
`
`In the late 1990s, there was a desire to use copper wiring layers in the
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`manufacture of semiconductor devices. Exhibit 1001, 1:16. Copper, however, is
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`corrosive, and has a high diffusion rate in both silicon (Si) and silicon dioxide
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`(SiO2). Id., 1:21-25; Exhibit 2037, ¶42.
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`The ‘324 patent describes prior art attempts which formed unsatisfactory
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`copper diffusion-barriers. Exhibit 1001, Fig. 2, 2:62-64 (depicting a single layer
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`metal film composed of crystallized pillar structures); Fig. 3, 3:21-23 (depicting
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`single layer metal film composed of amorphous particles). Barriers composed of
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`crystallized pillar structures did not provide sufficient barrier characteristics to
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`prevent copper diffusion. Id., 3:1-4. Barriers composed of amorphous particles did
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`not allow subsequent copper to adhere well. Id., 3:29-33; Exhibit 2037, ¶¶43, 44.
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`The ‘324 patent discloses an improved diffusion-barrier over the prior art
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`diffusion barriers including the disclosed and claimed multi-layered barrier film
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`that prevents copper diffusion and sufficiently adheres to copper. The barrier film
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`has first and second films wherein the first film is composed of crystalline metal
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`containing nitrogen therein, and the second film is composed of amorphous metal
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`nitride. The barrier film is constituted of common metal atomic species, the first
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`film is formed on the second film and in direct contact with the second film, and
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`the first film contains nitrogen in a smaller content than that of the second film.
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`Exhibit 1001, 18:65-19:3; Exhibit 2037, ¶¶45, 46.
`
`The ‘324 patent teaches that an improved diffusion-barrier can be created by
`
`first forming an amorphous metal nitride film, and then forming a crystalline metal
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`film containing nitrogen therein on the amorphous metal nitride film. The ‘324
`
`patent discloses that increasing the RF power while maintaining the nitrogen gas
`
`ratio will change the film’s structural characteristics from amorphous to crystalline
`
`metal film containing nitrogen therein. Id., 12:58-67. In fact, the ‘324 patent
`
`discloses the invention is based on the discovery relating to the possibility “to
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`control characteristics of a film to be formed by sputtering, by controlling both a
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`concentration of nitrogen gas in sputtering gas and RF power.” Id., 12:37-39. As
`
`such, the multi-layered barrier film taught by the ‘324 patent does not have a pure
`
`metal surface, but rather has a crystalline metal layer containing nitrogen
`
`throughout the film, including the upper surface for contacting a copper layer. This
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`is very different from the prior art films which purposefully stop the nitrogen flow
`
`to form a layer with a pure metal surface. Exhibit 2037, ¶¶36, 47-50, 74.
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`Moreover, this is different from prior art known to Patent Owner which
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`either used single layers as the barrier film or used various combinations of layers
`
`combined in a multi-layered barrier film. The single layers used in the prior art do
`
`not teach or suggest the multi-layered barrier film recited in the Substitute Claims.
`
`Exhibit 2037, ¶¶43, 44, 66-72. Moreover, multi-layered barrier films described in
`
`the prior art do not teach or suggest the specific structural relationship of the first
`
`film with the second film, and the features of the first film and second film recited
`
`in the Substitute Claims. Exhibit 2037, ¶¶66-72. This is readily apparent from the
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`fact that neither Petitioner nor Petitioners in other IPR proceedings involving the
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`‘324 patent have contended that the claims are unpatentable over any combination
`
`of the prior art cited during prosecution of the ‘324 patent.
`
`Patent Owner has reviewed prior art of which it is aware, including the prior
`
`art cited in the ‘324 patent and asserted in pending litigation. This prior art
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`discloses single layer or multi-layered barrier films, but a PHOSITA would not
`
`have arrived at the subject matter recited in the Substitute Claims. Exhibit 2037,
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`¶¶70-84.
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`More specifically, Substitute Claims 11 and 12 are directed to multi-layered
`
`wiring structure comprising a barrier film which prevents diffusion of copper from
`
`a copper wiring layer formed on a semiconductor substrate. The barrier film is
`
`specifically recited to have a multi-layered structure of first and second films. The
`
`first film is composed of crystalline metal containing nitrogen therein. The second
`
`film is composed of amorphous metal nitride. The barrier film is constituted of
`
`common metal atomic species. The first film is formed on the second film, and the
`
`first film is in direct contact with the second film and contains nitrogen in a smaller
`
`content than that of the second film. Exhibit 2037, ¶67.
`
`In addition to the recited features of Substitute Claims 11 and 12 noted
`
`above, Substitute Claim 11 expressly recites that the nitrogen is present throughout
`
`the first film, and Substitute Claim 12 further includes a copper film formed on the
`
`first film, the copper film being in direct contact with the first film, and the first
`
`film contains nitrogen in a portion being in contact with the copper film. Exhibit
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`2037, ¶68.
`
`There is no prior art by itself nor is there any combination of prior art that
`
`teaches or suggests the recited combination of features. There is no teaching or
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`suggestion in the prior art to provide a multi-layered barrier film having a film
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`composed of amorphous metal nitride upon which is directly another film
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`composed of crystalline metal containing nitrogen which contains nitrogen in a
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`smaller content than that the film composed of amorphous metal nitride, wherein
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`the nitrogen is present throughout the first film (Substitute Claim 11), or which
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`further includes a copper film formed on the first film, the copper film being in
`
`direct contact with the first film, and the first film contains nitrogen in a portion
`
`being in contact with the copper film (Substitute Claim 12). Exhibit 2037, ¶¶69-
`
`70. Still further, Substitute Claim 13 further recites that the first film being
`
`composed of crystalline metal containing nitrogen therein is a solid solution; and
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`that a copper film is formed on and in direct contact with said first film. There is
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`no prior art that teaches or suggests this combination of features. Exhibit 2037,
`
`¶71.
`
`To achieve the barrier film structure recited in the Substitute Claims, it was
`
`necessary to arrive at a method capable of achieving the recited structure. Patent
`
`Owner submits that techniques for forming barrier films at the time of the
`
`invention of the ‘324 patent would not have arrived at the recited barrier film. The
`
`‘324 patent teaches that an improved diffusion-barrier can be created by first
`
`forming an amorphous metal nitride film, and then forming a crystalline metal film
`
`containing nitrogen therein on the amorphous metal nitride film. As noted above,
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`the ‘324 patent discloses that increasing the RF power while maintaining the
`
`nitrogen gas ratio will change the film’s structural characteristics from amorphous
`
`to crystalline metal film containing nitrogen therein. Id., 12:58-67. As such, the
`
`multi-layered barrier film taught by the ‘324 patent does not have a pure metal
`
`surface, but rather has a crystalline metal layer containing nitrogen throughout the
`
`film, including the surface which contacts a copper layer. Moreover, the nitrogen
`
`in the crystalline metal layer containing nitrogen throughout directly contacts the
`
`amorphous metal nitride film and contains nitrogen in a smaller content than that
`
`of the amorphous metal nitride film. Exhibit 2037, ¶72.
`
`This is patentably different from the prior art films, such as disclosed in
`
`Ding and Zhang, which stop the nitrogen flow to form a layer with a pure metal
`
`surface; and is different from other prior art known to Patent