Inter Partes Review
`United States 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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`Taiwan Semiconductor Manufacturing Company Limited
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`Petitioner
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`v.
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`Godo Kaisha IP Bridge 1
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`Patent Owner
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`
`
`Inter Partes Review Nos. IPR2016-01264 and IPR2016-01249
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`
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S CONTINGENT
`MOTION TO AMEND FOR INTER PARTES REVIEW
`OF UNITED STATES PATENT NO. 6,538,324
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`
`United States 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 Nos. IPR2016-01264 and IPR2016-01249
`
`
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S CONTINGENT
`MOTION TO AMEND FOR INTER PARTES REVIEW
`OF UNITED STATES PATENT NO. 6,538,324
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`
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`I.
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`II.
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`Inter Partes Review
`United States Patent No. 6,538,324
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`
`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 1
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`PATENT OWNER OMITS MATERIAL PRIOR ART FROM ITS
`ANALYSIS ...................................................................................................... 1
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`III. THE SUBSTITUTE CLAIMS DO NOT DISTINGUISH THE
`PRINCIPAL PRIOR ART IN THE INSTITUTED GROUNDS .................... 6
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`IV. PATENT OWNER FAILS TO DEMONSTRATE THE
`SUBSTITUTE CLAIMS ARE PATENTABLY DISTINCT OVER
`OTHER KNOWN PRIOR ART .................................................................... 11
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`A.
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`B.
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`Patent Owner does not perform the analysis the law requires. ........... 11
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`Patent Owner fails its burden of proving the Substitute Claims
`are patentably distinct over Zhang and Ding in view of Nogami ....... 13
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`V.
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`SUBSTITUTE CLAIM 13 LACKS SUPPORT IN THE ’324
`PATENT WRITTEN DESCRIPTION .......................................................... 19
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`A.
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`B.
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`The Board should construe “solid solution” according to its
`plain meaning as “a homogeneous mixture of a substance in a
`single solid phase” ............................................................................... 20
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`The ’324 patent lacks written description support for “said first
`film . . . is a solid solution” as recited in Substitute Claim 13 ............ 21
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`VI. CONCLUSION .............................................................................................. 23
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`Inter Partes Review
`United States Patent No. 6,538,324
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Cuozzo Speed Techs., LLC v. Lee,
`579 U.S. 2131 (June 20, 2016) ............................................................................. 5
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`Idle Free Systems, Inc. v. Bergstrom Inc.,
`IPR2012-00027, Paper 26 (P.T.A.B. June 11, 2013) ........................... 1, 4, 13, 19
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`MasterImage 3D, Inc. v. Reald Inc.,
`IPR2015-00040, Paper 42 (P.T.A.B. July 15, 2015) ...................................passim
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`Nike, Inc. v. Adidas AG,
`No. 2014-1719, slip op. (Fed. Cir. Feb. 11, 2016) ............................................... 4
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`Statutes
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`35 U.S.C. § 102(e) ................................................................................................... 10
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`Other Authorities
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`37 C.F.R. § 42.6 ....................................................................................................... 24
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`37 C.F.R. § 42.11 ................................................................................................. 2, 12
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`37 C.F.R. § 42.20 ................................................................................................. 5, 23
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`37 C.F.R. § 42.24 ....................................................................................................... 6
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`37 C.F.R. § 42.100 ................................................................................................... 20
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`37 C.F.R. § 42.105 ................................................................................................... 23
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`37 C.F.R. § 42.121 ............................................................................................... 1, 19
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`M.P.E.P. 2131.01(III)............................................................................................... 10
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`ii
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`I.
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`INTRODUCTION
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`Inter Partes Review
`United States Patent No. 6,538,324
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`Petitioner files this Opposition to Patent Owner’s Contingent Motion to
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`Amend proposing Substitute Claims 11-13, in which Patent Owner seeks to amend
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`independent claim 5 and dependent claims 7 and 9 to require nitrogen content
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`throughout the claimed “first film” and in contact with a copper layer. Patent
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`Owner fails to meet its burden—procedurally and substantively—of establishing
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`that the Substitute Claims are novel, non-obvious, and supported by the ’324
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`patent’s written description.
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`II.
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`PATENT OWNER OMITS MATERIAL PRIOR ART FROM ITS
`ANALYSIS
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`Patent Owner fails to comply with the requirements for filing a Motion to
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`Amend as set forth in the Board’s decisions in Idle Free Systems, Inc. v. Bergstrom
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`Inc., IPR2012-00027, Paper 26 (June 11, 2013) (informative) and MasterImage 3D,
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`Inc. v. Reald Inc., IPR2015-00040, Paper 42 (July 15, 2015) (precedential). For at
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`least this reason alone, the Board should deny Patent Owner’s motion.
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`The Board has articulated a procedure for properly offering substitute
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`amended claims under 37 C.F.R. § 42.121: “For each proposed substitute claim,
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`we expect a patent owner: (1) in all circumstances, to make a showing of
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`patentable distinction over the prior art . . . .” Idle Free at 6-7. “The burden is not
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`on the petitioner to show unpatentability, but on the patent owner to show
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`patentable distinction over the prior art of record and also prior art known to the
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`patent owner.” Id. at 7. In MasterImage 3D, the Board clarified that “prior art
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`known to the patent owner” refers to material prior art that Patent Owner makes of
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`record pursuant to its duty of candor and good faith under 37 C.F.R. § 42.11.
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`MasterImage 3D at 3. This is not limited to only material prior art in the
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`prosecution history or of record in PTO proceedings. Id. at 2-3.
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`While Patent Owner represents to the Board that the Substitute Claims are
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`patentable over “all prior art known to Patent Owner” (Motion at 16), it fails to
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`mention several material prior-art references it was aware of from the related
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`district-court litigation, let alone show any patentable distinction over them.
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`Patent Owner possessed detailed invalidity claim charts mapping the
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`challenged ’324 patent claims 1, 3, 5, 7, and 9 to prior art identified in the related
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`litigation. Ex. 1037 (June 20, 2016, Patent Rule 3-3 Invalidity Contentions) at 2,
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`26-28, 60-229 (invalidity claim charts B-1 to B-15 served on Patent Owner as part
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`of invalidity contentions in the related district court litigation). Patent Owner fails
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`to mention at least the following relevant prior art from those contentions:
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`UK Patent 2,298,657 (Exhibit 1025) in chart B-1;
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`US 5780908 (Exhibit 1026) in chart B-3;
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`US 5869902 (Exhibit 1027) in chart B-4;
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`US 5882399 (Exhibit 1028) in chart B-5;
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`US 6057237 (Exhibit 1029) in chart B-7;
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`United States Patent No. 6,538,324
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`US 6136682 (Exhibit 1030) in chart B-8;
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`US 6242804 (Exhibit 1031) in chart B-11.
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`Ex. 1037 at 60-70 (chart B-1), 81-94 (chart B-3), 95-112 (chart B-4), 113-126
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`(chart B-5), 138-148 (chart B-7), 149-157 (chart B-8), 186-197 (chart B-11). The
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`fact that the invalidity claim charts mapped each of these prior-art references to
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`the ’324 patent claims on an element-by-element basis establishes their materiality.
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`Although Patent Owner’s expert submitted a declaration supporting the
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`patentability of the Substitute Claims, Patent Owner never provided him with the
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`invalidity contentions or claim charts from the related litigation. Indeed, Patent
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`Owner’s expert admits he had not analyzed any invalidity contentions or claim
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`charts from the related district-court case. Id. 21:8-16, 25:7-13; see also id. 234:11-
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`15. He also testifies he had never seen any of the prior-art references—Exhibits
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`1025-1031—before his deposition. Ex. 1036 (Harris Tr.), 17:7-21:7.
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`These prior-art references are highly relevant, and Patent Owner’s and its
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`expert’s omission of them is fatal to the Motion to Amend. For example, U.K.
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`Patent No. 2,298,657 (“Cho,” Ex. 1025) in invalidity claim chart B-1 served on
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`Patent Owner teaches a barrier film structure with a “lower or first layer is
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`composed of titanium nitride 5 that exists as an amorphous layer, the middle or
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`second layer is composed of titanium nitride 6 that exists as a crystalline layer, and
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`the upper or third layer is composed of titanium nitride 7 that exists as a nitrogen-
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`rich crystalline layer.” Ex. 1037 at 61 (Cho, 6:1-10); see also id. at 62 (Cho, 6:18-
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`21, 6:22-27). Upper layer 7 is a crystalline nitride film and thus contains nitrogen
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`“throughout,” which is the new limitation Patent Owner seeks to add in Substitute
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`Claim 11 to avoid obviousness. The upper nitride layer 7 in Cho is also in contact
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`with a copper layer 8, as the new limitation in Substitute Claim 12 recites. Id. at 70
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`(Cho at 6:22-27). Cho is also material to the “solid solution” limitation added in
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`Substitute Claim 13 given Cho’s disclosure of an upper titanium nitride film 7 with
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`both titanium metal and nitrogen. Id. at 61 (quoting Cho, 6:1-10). Other omitted
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`prior art from the invalidity contentions similarly discloses nitrogen throughout a
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`crystalline upper film of a barrier structure. See also, e.g., Ex. 1026, 10:27-44
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`(disclosing nitrogen throughout a crystalline tungsten nitride WNx film), Fig. 11;
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`Ex. 1030, Figs. 1-3; Ex. 1031, 1:25-28.
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`Because Patent Owner’s Motion to Amend ignored Cho, as well as each of
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`the other Exhibits 1026-1031 that it received in the district-court litigation, Patent
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`Owner failed to satisfy its burden of showing a patentable distinction for each
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`Substitute Claim over all the “prior art known to the patent owner.” MasterImage
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`3D at 3. Under its duty of candor to the Office, Patent Owner was required to
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`disclose these known, material prior-art references and distinguish them. Nike, Inc.
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`v. Adidas AG, No. 2014-1719, slip op. at 40 (Fed. Cir. Feb. 11, 2016) (“At the
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`heart of Idle Free, as interpreted by MasterImage 3D, is the question of whether
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`the patent owner has submitted the necessary information to comply with its duty
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`of candor to the office”). Patent Owner cannot remedy this failure in a future reply,
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`since its motion was required to establish it is entitled to the requested relief. See
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`37 C.F.R. § 42.20(c).
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`Patent Owner also cannot excuse its failure to comply with its disclosure
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`obligations by arguing these known, but omitted, prior-art references (Exhibits
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`1025-1031) are not material because the defendant in the related litigation chose
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`not to pursue them all the way through trial. Patent Owner’s duty of candor does
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`not depend on another party’s litigation decisions. District courts often require
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`defendants to choose or drop prior-art references, and Patent Owner does not know
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`why a reference was not pursued, which could be for a myriad of reasons unrelated
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`to materiality (e.g., to streamline trial). And, of course, prior art that is not pursued
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`in district court still may be materially relevant in these IPR proceedings because
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`(1) the analysis is of amended claims not present in the district court; and (2) the
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`analysis in these proceedings is under a broader BRI standard. See Cuozzo Speed
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`Techs., LLC v. Lee, 579 U.S. 2131, 2146 (June 20, 2016). Regardless, Patent
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`Owner knew of these material prior-art references as a result of the district-court
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`United States Patent No. 6,538,324
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`litigation, yet failed to disclose and discuss them in its Motion to Amend and
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`distinguish them as the law requires.1
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`III. THE SUBSTITUTE CLAIMS DO NOT DISTINGUISH THE
`PRINCIPAL PRIOR ART IN THE INSTITUTED GROUNDS
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`Patent Owner’s Substitute Claims 11-13 attempt to rewrite the challenged
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`independent claim 1 and dependent claims 7 and 9 to include Patent Owner’s
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`proposed requirement of nitrogen “throughout” the claimed “first film,” which it
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`unsuccessfully proposed as a construction in its Patent Owner Preliminary
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`Response. Motion at 8 (stating “to the extent that the Board construes the claims of
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`the ’324 patent to not include a first film wherein the nitrogen is present
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`throughout, claim 5 as Substitute Claim 11; claim 9 as Substitute Claim 12; and
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`claim 7 as Substitute Claim 13 are presented herein”). Patent Owner also
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`erroneously denies the disclosure of nitrogen throughout the top tantalum-rich
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`tantalum “nitride” film 32 in Zhang. The instituted obviousness grounds based on
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`1 In addition, Patent Owner’s Motion to Amend, which was slightly under the 25
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`page limit permitted in 37 C.F.R. § 42.24, is also procedurally improper because it
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`incorporates more than 10 pages from its expert’s declaration, which if properly
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`contained in the Motion itself, would have made the Motion far exceed the page
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`limit. Motion at 23 (citing Ex. 2037, Paragraph 83, sub-parts a-y, spanning pages
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`34-45, discussing dozens of prior-art references not mentioned in the Motion).
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`Zhang and Ding already include the newly-added limitations Patent Owner seeks
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`to add in its Substitute Claims 11-13. Thus, the Substitute Claims 11-13 remain
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`unpatentable over each of the instituted grounds.
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`Patent Owner only attempts to distinguish the Substitute Claims from Zhang
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`and Ding because both Zhang and Ding teach a “pure metal surface” and “[t]o the
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`extent that a PHOSITA would attempt to combine Ding and Zhang, a PHOSITA
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`would ensure that the top layer remained pure tantalum.” Id. at 21-22. Zhang and
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`Ding, however, do not require a pure tantalum top layer, and the combinations of
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`Zhang and Ding, with or without Sun, would render obvious each of the Substitute
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`Claims. Ex. 1038 (Banerjee Dec.), ¶¶ 13, 15-16.
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`1.
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`Zhang discloses nitrogen throughout its top tantalum-rich
`tantalum nitride film 32
`Top film 32 in Zhang is called a tantalum-rich tantalum “nitride” film 32
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`(see, e.g., Ex. 1004, 3:14-16), which means it is a film containing nitrogen. Patent
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`Owner’s attempt to characterize this film as a pure tantalum film (Ex. 1036, 62:17-
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`19) conflicts with Zhang’s teachings to the contrary. See, e.g., Ex. 1004, Abstract
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`(“The nitrogen percentage for the second portion (32) is lower than the nitrogen
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`atomic percentage for the first portion (22)”).
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`Zhang repeatedly discloses a small amount of nitrogen at the upper surface
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`of top film 32 in contact with a copper layer. Zhang discloses, for example, “By
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`keeping the nitrogen concentration at the surface that contacts copper relatively
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`low, better adhesion can be achieved.” Id. 5:57-59. “Low” does not mean only zero.
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`Zhang further discloses, “At the upper surface, the atomic percent tantalum
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`may be at least 95% and the atomic percent nitrogen may be less than 5% if copper
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`adhesion is particularly problematic.” Id. 3:59-62. Patent Owner’s expert admits
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`that Zhang, at col. 3, lines 59-62, refers to the upper surface of top film 32 (Ex.
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`1036, 33:13-22), and this disclosure in Zhang teaches the nitrogen content at the
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`upper surface of top film 32 can be as much as 5% nitrogen by atomic percentage,
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`which is certainly not zero.
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`Claim 7 of Zhang recites forming the top film 32 using a constant flow of
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`nitrogen, i.e., to incorporate nitrogen throughout the film, in contrast to its
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`dependent claim 9 where the nitrogen gas is “reduced to zero” when forming film
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`32. Ex. 1004, 6:47-54, 6:58-60; see also Ex. 1036, 170:1-18 (testifying the claimed
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`“first” and “second” portions in Zhang’s claims correspond to the bottom and top
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`films 22 and 32 in the specification). Claim 7 is a clear disclosure of forming
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`Zhang’s top film 32 with nitrogen throughout, including at its upper surface, since
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`the nitrogen-containing gas has a non-zero “flowrate” during formation of the top
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`film. Compare Ex. 1004, 6:52-54 with 6:58-60.
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`Zhang never describes the upper surface of the top film 32 as containing no
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`nitrogen. Instead, it discloses a “lower” percent nitrogen, “approximately” zero
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`percent nitrogen, “essentially” no nitrogen, or “substantially” pure tantalum, each
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`time acknowledging that at least some nitrogen exists at the upper surface. Ex.
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`1004, 3:53-59. This is also consistent with Zhang Fig. 4, illustrating that the top
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`film 32 is not pure tantalum, as the tantalum atomic percent never reaches 100% at
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`the upper surface (i.e., at a distance of zero). See Ex. 1032; Ex. 1004, Fig. 4.
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`Patent Owner’s expert admitted the upper surface of Zhang’s top film 32
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`contains some nitrogen content. See Ex. 1036, 40:1-6 (“Zhang discloses that there
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`may be a 5 percent nitrogen only at -- as an upper boundary”); 42:2-9 (“the person
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`skilled in the art would understand that that means extremely low, approaching
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`zero”); 42:15-21 (“I can't say that with a high degree of certainty, absolutely no
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`nitrogen . . .”); 54:14-20.
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`Because Zhang discloses a top tantalum-rich tantalum nitride film 32
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`containing a small amount of nitrogen, Patent Owner has lost its sole basis for
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`distinguishing the Substitute Claims over Zhang. See, e.g., Motion at 8 (arguing
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`Substitute Claims are presented “to the extent that the Board construes the claims
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`of the ‘324 patent to not include a first film wherein the nitrogen is present
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`throughout”) (emphasis in original).
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`2.
`Ding also discloses nitrogen throughout its top barrier film
`Ding, which teaches every element of independent claims 1 and 5 in
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`the ’324 patent without expressly disclosing the top crystalline tantalum film
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`contains nitrogen (Petition at 18), has a small amount of nitrogen in its top film.
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`The inventors of the Ding patent disclose in their co-pending application, U.S.
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`Patent No. 6,458,255 (Exhibit 1033 to Chiang)2 that the surface of Ding’s top
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`barrier film may contain “a small amount of nitrogen (typically less than about 15
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`atomic percent).” Id. at 1:44-57; see also Ex. 1036, 136:1-17. Thus, contrary to the
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`assertion upon which Patent Owner bases its distinction of Ding, Ding’s top barrier
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`film does not require a “pure” tantalum top film. See M.P.E.P. 2131.01(III).
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`Although the Board did not agree that Ding inherently anticipates nitrogen in
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`its top crystalline film (see IPR2016-01249, Paper 7, at 12), at least a combination
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`of Ding with its related Chiang patent, clarifies that it would have been obvious
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`that the upper surface of Ding’s top film would contain “a small amount of
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`nitrogen.” Ex. 1033, 1:44-57; Ex. 1038, ¶¶ 15-16. At least a combination of Ding
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`and Zhang further in view of Chiang would render obvious the added limitations of
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`requiring nitrogen throughout the “first film” in Patent Owner’s Substitute Claims.
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`Id. A POSITA would have understood that Ding alone, or further in view of
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`2 Exhibit 1033 is prior art to the ’324 patent under pre-AIA 35 U.S.C. § 102(e)
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`because it was filed on January 25, 2001, and issued on October 1, 2002, and is a
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`continuation of U.S. App. No. 09/160,638, filed on September 24, 1998. The
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`Patent Office did not consider this patent during prosecution of the ’324 patent.
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`Chiang, discloses a crystalline Ta film containing nitrogen as required in the
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`Substitute Claims.
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`In sum, although Patent Owner has the burden of proving the Substitute
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`Claims are patentably distinct over the prior art of record (MasterImage 3D at 3), it
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`fails to distinguish the newly-added limitations in the Substitute Claims 11-13 over
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`Zhang and Ding, which disclose and render obvious the added limitations in the
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`Substitute Claims.
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`IV. PATENT OWNER FAILS TO DEMONSTRATE THE SUBSTITUTE
`CLAIMS ARE PATENTABLY DISTINCT OVER OTHER KNOWN
`PRIOR ART
`A.
`Patent Owner’s Motion to Amend relies on its expert’s analysis of various
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`Patent Owner does not perform the analysis the law requires.
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`prior-art references, but, aside from failing to look at all the art, the expert admits
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`he did not compare individual claim elements of the Substitute Claims to each of
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`the prior-art references. Instead, he examined many of the prior art “for
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`comparability using my expertise,” rather than performing “any kind of claim
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`element comparison.” Ex. 1036, 206:21-207:8. Dr. Harris’s belief that the
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`Substitute Claims are so different from the prior art ring hollow without an
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`explanation for which claim elements are missing from each prior-art reference.
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`Patent Owner’s expert does no such analysis for most of the prior art in his
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`declaration. Id. 207:9-21.
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`Further, neither Patent Owner’s Motion to Amend nor its expert’s
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`declaration (Exhibit 2037) properly addresses whether any of the identified “prior
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`art known to the patent owner” could be combined with Zhang and Ding to render
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`obvious the added limitations proposed in Substitute Claims 11-13. The Board has
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`held that “when considering its duty of candor and good faith under 37 C.F.R.
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`§ 42.11 in connection with a proposed amendment, Patent Owner should place
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`initial emphasis on each added limitation. Information about the added limitation
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`can still be material even if it does not include all of the rest of the claim
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`limitations.” MasterImage 3D at 3 (citing VMWare, Inc. v. Clouding Corp., IPR
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`2014-01292, Paper 23 at 2 (April 7, 2015)).
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`At least U.S. Patent No. 6,346,745 (“Nogami”) identified in Paragraph 83(v)
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`of Exhibit 2037 teaches a first film with “the nitrogen being present throughout the
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`first film” (Substitute Claim 11), the “first film contains nitrogen in a portion being
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`in contact with said copper film” (Substitute Claim 12), and “wherein said first
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`film being composed of crystalline metal containing nitrogen therein is a solid
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`solution” (Substitute Claim 13).
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`Patent Owner’s expert testifies that Zhang (Ex. 1004) and Ding (Ex. 1005)
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`are the closest prior art to the challenged claims of the ’342 patent, but he chose
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`not to address whether a secondary reference, such as Nogami, would remedy any
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`alleged deficiencies in the closest art. Ex. 1036, 217:17-218:6; see also VMWare,
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`IPR2014-01292, Paper 23 at 2 (“With respect to the duty of candor under 37 C.F.R.
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`§ 42.11, counsel for Patent Owner acknowledged a duty for Patent Owner to
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`disclose not just the closest primary reference, but also closest secondary
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`reference(s) the teachings of which sufficiently complement that of the closest
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`primary reference to be material”). Patent Owner fails to address the instituted
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`invalidity grounds for the Substituted Claims based on Zhang and Ding in view of
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`Nogami or any other secondary reference.
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`B.
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`Patent Owner fails its burden of proving the Substitute Claims
`are patentably distinct over Zhang and Ding in view of Nogami
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`Patent Owner fails to meet its burden of showing the Substitute Claims are
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`patentable, i.e., being both novel and nonobvious, over the “prior art known to the
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`patent owner” (MasterImage 3D at 3), as its Motion contains no more than a
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`piecemeal attack and conclusory statement about the prior art. Idle Free at 7-8 (“A
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`mere conclusory statement by counsel, in the motion to amend, to the effect that
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`one or more added features are not described in any prior art, and would not have
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`been suggested or rendered obvious by prior art, is on its face inadequate”). Patent
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`Owner fails to analyze the newly added claim limitations in the known prior art,
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`much less consider any combination of Zhang and Ding further in combination
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`with additional known prior art that would render the Substitute Claims obvious.
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`This is another reason to deny the Motion.
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`13
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`Inter Partes Review
`United States Patent No. 6,538,324
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`Nogami, for example, teaches the added limitations of Substitute Claims 11-
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`13, and a POSITA would have found it obvious to combine Nogami’s teaching
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`with the relevant teachings of Zhang and Ding. Ex. 1038, ¶¶ 13, 17-29.
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`1.
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`Nogami teaches a multi-layer diffusion barrier structure
`similar to those in Ding and Zhang
`Nogami discloses a multi-layered barrier layer for preventing copper
`
`diffusion, where the barrier layer includes a lower layer of amorphous TaN and an
`
`upper layer of Ta or TaN having a nitrogen content less than the lower layer’s. Ex.
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`2039, Abstract. The upper layer is in contact with a copper layer. Id., 3:8-15
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`(disclosing a barrier layer “comprising: a first layer . . . ; a second layer . . . ; a third
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`layer [the lower layer] comprising TaN having a nitrogen content less than that of
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`the TaN of the second layer . . . ; and a fourth layer [the upper layer], comprising
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`Ta or TaN having a nitrogen content less than the TaN of the third layer, on the
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`third layer and in contact with a surface the Cu or Cu alloy feature”). The upper
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`layer having “a nitrogen content less than 15 at. % enhances the adhesion of Cu to
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`the third layer, thereby improving electromigration resistance.” Id., 5:39-42. Ex.
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`1038, ¶ 17.
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`To the extent Nogami does not expressly disclose a crystalline upper layer, it
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`would have been obvious to a POSITA to modify Nogami to ensure its upper layer
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`is crystalline, for example, in view of Ding, for enhancing the adhesion of Cu and
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`electromigration resistance. See, e.g., Ex. 1005, Abstract, 8:1-4; Ex. 1036, 82:22-
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`14
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`Inter Partes Review
`United States Patent No. 6,538,324
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`83:7 (Patent Owner’s expert testifying Ding describes a crystalline orientation in
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`order to improve adhesion and formation of the copper layer). Ex. 1038, ¶¶ 18-19.
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`A POSITA would have found it obvious to have combined Nogami’s
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`disclosure of nitrogen content throughout an upper layer with Ding and Zhang to
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`achieve the predictable benefits of such a combination, as each reference aims to
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`improve adhesion of the barrier layer with copper, and Ding discloses a crystalline
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`upper layer that improves adhesion. Id., 8:1-4; Ex. 1004, Abstract; Ex. 1036, 78:6-
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`83:7; Ex. 2039, 5:39-42; Ex. 1038, ¶ 19. Further, a POSITA would have found it
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`obvious to further modify Ding and Zhang in view of Nogami to yield a crystalline
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`tantalum layer containing a small amount of nitrogen throughout the film (e.g., less
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`than 15% as disclosed by Nogami) because adding a small amount of nitrogen was
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`known to reduce the resistivity of the film. See, e.g., Ex. 1036, 125:3-20; Ex. 2039,
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`4:26-30; Ex. 2042, Fig. 1 (showing a tantalum film containing less than 20%
`
`nitrogen with a lower resistivity than a pure tantalum film); Ex. 1015, Table 1
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`(showing resistivity of a Ta film formed at a low nitrogen flow rate (1.5 sccm) has
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`~25% lower resistivity than a tantalum film formed without nitrogen flow).
`
`The combination of Nogami with Ding and Zhang applies known techniques
`
`to yield predictable results. Nogami, similar to Ding and Zhang, sputters the barrier
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`layer in “a single sputter deposition chamber comprising a Ta target and adjusting
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`the amount of nitrogen in the sputter deposition chamber to form the [multi-layered
`
`15
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`Inter Partes Review
`United States Patent No. 6,538,324
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`barrier layer] having different nitrogen contents.” Ex. 2039, 5:11-16; Ex. 1004,
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`3:37-62; Ex. 1005, 7:21-29. Ex. 1038, ¶ 20.
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`2.
`
`The combinations of Ding and Zhang in view of Nogami
`render obvious Substitute Claim 11
`Nogami alone or with the combination of Ding and Zhang discloses the
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`added subject matter in Substitute Claim 11, which recites the limitations in claim
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`5 and the newly-added limitation that “the nitrogen being present throughout the
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`first film.” Ex. 1038, ¶ 21. As the Board found in its Institution Decisions, the
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`combined teachings of Ding and Zhang render obvious claim 5. Nogami further
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`discloses the new limitation as it discloses the upper Ta or TaN layer contains
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`nitrogen less than about 15% and the layer was formed using a certain amount of
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`nitrogen during sputtering. Ex. 2039, 3:38-39 (“fourth layer of Ta or TaN having a
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`nitrogen content less than about 15 at %.”); 5:11-16 (“a single sputter deposition
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`chamber comprising a Ta target and adjusting the amount of nitrogen in the sputter
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`deposition chamber to form the second, third, and fourth layers 15 having different
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`nitrogen contents”). A POSITA would have understood that Nogami teaches an
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`upper layer containing nitrogen throughout, from the upper surface to the bottom
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`surface of the layer, because the layer was formed using a certain amount of
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`nitrogen during sputtering. Ex. 1038, ¶ 22. In this manner, Nogami discloses the
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`sole deficiency Patent Owner alleges regarding Ding and Zhang relative to
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`Substitute Claim 11. Ex. 1038, ¶ 22-23.
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`16
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`United States Patent No. 6,538,324
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`3.
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`The combinations of Ding and Zhang in view of Nogami
`render obvious Substitute Claim 12
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`Nogami alone or with the combination of Ding and Zhang discloses the
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`added subject matter in Substitute Claim 12, which recites the limitations in claim
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`9 and adds the new limitation “said copper film being in direct contact with said
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`first film, wherein said first film contains nitrogen in a portion being in contact
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`with said copper film.” Ex. 1038, ¶ 24. Claim 9 depends from claim 5 and adds “a
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`copper film formed on said first film.” As the Board found in its Institution
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`Decisions, the combined teachings of Ding and Zhang render obvious claim 9.
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`Nogami discloses the added limitation “said copper film being in direct contact
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`with said first film, wherein said first film contains nitrogen in a portion being in
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`contact with said copper film,” since it discloses the upper Ta or TaN layer
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`contains nitrogen throughout, from the upper surface to the bottom surface of the
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`layer, as discussed above; and the layer is in contact with copper. See, e.g., Ex.
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`2039, 3:12-15. Ex. 1038, ¶ 25. Nogami, when combined with Ding and Zhang,
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`renders obvious Substitute Claim 12. Id.
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`4.
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`The combinations of Ding and Zhang in view of Nogami
`renders obvious Substitute Claim 13
`Nogami alone or with the combination of Ding and Zhang discloses the
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`subject matter in Substitute Claim 13, which depends from Substitute Claim 11 and
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`recites limitations from claim 7, “wherein said first film has a thickness in the
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`17
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`Inter Partes Review
`United States Patent No. 6,538,324
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`range of 60 angstroms to 300 angstroms both inclusive,” and new limitations,
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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 a copper film is formed on and in direct contact with
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`said first film.” Ex. 1038, ¶ 26.
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`Nogami discloses “said first film has a thickness in the range of 60
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`angstroms to 300 angstroms both inclusive” as Substitute Claim 13 recites. Ex.
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`2039, 3:38-40 (“depositing the fourth layer of Ta or TaN having a nitrogen content
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`less than about 15 at. % at a thickness of about 50 (cid:1344) to about 150 (cid:1344).”); Ex. 1038,
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`¶ 26. Nogami further discloses the added limitation “said first film being composed
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`of crystalline metal containing nitrogen therein is a solid solution; and a copper
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`film is formed on and in direct contact with said first film,” as it discloses the
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`upper Ta or TaN layer contains nitrogen throughout, from the upper surface to the
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`bottom surface of the layer, as discussed above; and Nogami does not refer to the
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`upper Ta or TaN layer as a mixture of distinct material phases. See Ex. 2039, 3:38-
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`40; Ex. 1038, ¶¶ 27-29. A POSITA would have understood that Nogami’s
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`disclosure of the upper Ta or TaN layer containing less than about 15 atomic
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`percent nitrogen would include a solid solution of TaNx in the upper layer, i.e., a
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`homogeneous mixture of a substance in a single solid phase, like the TaN0.1 solid
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`solution taught in the ’324 patent. Id., ¶ 41; see also id. ¶¶ 27-34.
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`Inter Partes Review
`United States Patent No. 6,538,324
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`5.
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`Patent Owner fails to meet its burden to substitute clai
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