throbber
Case IPR2016-01264 for
`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
`___________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.
`and GLOBALFOUNDRIES U.S. INC.,
`Petitioners,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`____________
`
`Case IPR2016-012641
`U.S. Patent No. 6,538,324
`____________
`
`
`PATENT OWNER’S MOTION FOR OBSERVATIONS REGARDING THE
`CROSS-EXAMINATION OF SANJAY K. BANERJEE, PH.D.
`
`
`
`
`
`
`1 GlobalFoundries U.S. Inc.’s motion for joinder in Case IPR2017-00920 was
`
`granted.
`
`
`
`
`
`

`

`Case IPR2016-01264 for
`U.S. Patent No. 6,538,324
`
`Pursuant to the Scheduling Order dated December 21, 2016 (Paper 8), Patent
`
`Owner provides the following observations on the cross-examination testimony of
`
`Sanjay K. Banerjee, Ph. D., a reply declarant of Petitioner. The transcript of this
`
`cross-examination testimony was previously filed as Exhibit 2044.
`
`Observation No. 1:
`
`
`
`In Exhibit 2044, on p. 53:3-16, the witness testified that the broadest
`
`reasonable interpretation of “composed of” as recited in the challenged claims of
`
`the ‘324 patent and the proposed Substitute Claims (together “Claims”) means
`
`“consisting essentially of” or “consisting of”:
`
`Q So composed of can mean either consisting of or consisting
`
`essentially of, correct?
`
`A Yes.
`
`Id., p. 53:14-16.
`
`The testimony is relevant to the issue of claim construction. The testimony
`
`contradicts Petitioner’s argument that “composed of” does not mean “consisting
`
`essentially of.” Reply, Paper 19, p. 6. The testimony also supports Patent Owner’s
`
`claim construction (PO Response, Paper 14, pp. 12-13), and evidences how a
`
`person of ordinary skill in the art (“POSITA”) would have understood and
`
`construed “composed of” as recited in the Claims.
`
`
`
`1
`
`

`

`Observation No. 2:
`
`
`
`Case IPR2016-01264 for
`U.S. Patent No. 6,538,324
`
`
`In Exhibit 2044, on p. 54:7-18, the witness testified that “composed of” as
`
`recited in the Claims of the ‘324 patent means “consisting essentially of” as stated
`
`in the MPEP (Exhibit 2012):
`
`Q So my question is, how are you applying your understanding of
`
`the term "composed of"? Is it more in line with comprising, which is
`
`open ended, or more limited as consisting essentially of, which we
`
`saw on the previous page means it’s limited to the scope of a claim
`
`to the specified materials or steps and those that do not materially
`
`affect the basic and novel characteristics of the claimed invention?
`
`MR. KABAKOFF: Objection, form.
`
`THE WITNESS: I interpreted that as described in page 9 [of the
`
`MPEP section, Exhibit 2012], consisting essentially of.
`
`Id., p. 54:7-18.
`
`The testimony is relevant to the issue of claim construction. The testimony
`
`contradicts Petitioner’s argument that “composed of” does not mean “consisting
`
`essentially of.” Reply, Paper 19, p. 6. The testimony also supports Patent Owner’s
`
`claim construction (PO Response, Paper 14, pp. 12-13), and evidences how a
`
`POSITA would have understood and construed “composed of” as recited in the
`
`Claims.
`
`
`
`
`
`2
`
`

`

`Observation No. 3:
`
`
`
`Case IPR2016-01264 for
`U.S. Patent No. 6,538,324
`
`
`In Exhibit 2044, on p. 56:4-13, the witness testified:
`
`Q So we’re just talking about a first film composed of crystalline
`
`metal containing nitrogen therein, and claim 11 adds the nitrogen
`
`being present throughout the first film. Again, I just want to make
`
`sure that you agree that composed of as used in that claim
`
`limitation would be properly construed to mean consisting
`
`essentially of as set forth in the MPEP section that we read, Exhibit
`
`2012.
`
`A Yes.
`
`The testimony is relevant to the issue of claim construction. The testimony
`
`contradicts Petitioner’s argument that “composed of” does not mean “consisting
`
`essentially of.” Reply, Paper 19, p. 6. The testimony also supports Patent Owner’s
`
`claim construction (PO Response, Paper 14, pp. 12-13), and evidences how a
`
`POSITA would have understood and construed “composed of” as recited in the
`
`Claims.
`Observation No. 4:
`
`
`
`In Exhibit 2044, on pp. 115:1-116:15, the witness testified that the district
`
`court’s claim construction of a film being composed of crystalline metal containing
`
`nitrogen therein, which in pertinent part states that “the first film consists
`
`essentially of a mixture of crystalline or polycrystalline metal with nitrogen
`
`throughout” looks reasonable:
`
`Q Okay. Do you disagree with the court’s construction?
`
`
`
`3
`
`

`

`A As I said, I didn’t analyze it in depth, but offhand it looks reasonable.
`
`Case IPR2016-01264 for
`U.S. Patent No. 6,538,324
`
`
`Id., p. 116:12-15.
`
`The testimony is relevant to Petitioner’s arguments regarding claim
`
`construction. Petitioner’s Reply, Paper 19, pp. 2-6. The testimony is relevant
`
`because it contradicts Petitioner’s claim construction arguments, and supports
`
`Patent Owner’s claim construction arguments. PO Response, Paper 14, pp. 8-19.
`
`Observation No. 5:
`
`
`
`In Exhibit 2044, on pp. 48:6-51:12, the witness testified that “consisting
`
`essentially of” means that the material can consist of what’s specified in the claim
`
`limitations and other components which do not impact those limitations, and that
`
`amorphous tantalum nitride added to a film composed of crystalline metal
`
`containing nitrogen therein would impact the properties of the film:
`
`Q Do you understand what the definition here of consisting
`
`essentially of means?
`
`A Yes.
`
`Q And what does it mean to you that it limits the scope of the
`
`claim to the specified materials or steps and those that do not
`
`materially affect the basic and novel characteristics of the claimed
`
`invention?
`
`MR. KABAKOFF: Objection, scope.
`
`
`
`4
`
`

`

`Case IPR2016-01264 for
`U.S. Patent No. 6,538,324
`
`
`THE WITNESS: To me it means that the material can consist of
`
`what’s specified in the claim limitations, but then it can also add
`
`components which do not impact those limitations.
`
`***
`
`BY MR. FINK:
`
`Q So going back to the example we said earlier where a first film
`
`being composed of crystalline metal containing nitrogen therein, if
`
`you added amorphous metal nitride to that same film, that would
`
`materially affect the basic and novel characteristics of that first
`
`film; is that correct?
`
`MR. KABAKOFF: Objection, scope.
`
`THE WITNESS: Yes, if you added amorphous tantalum nitride,
`
`that would impact the adhesion properties of the copper to the film,
`
`and in that sense it would impact properties.
`
`The testimony is relevant to Petitioner’s arguments regarding claim
`
`construction. The testimony is also relevant because it contradicts Petitioner’s
`
`arguments about the composition of Zhang’s top film 32, and further contradicts
`
`Petitioner’s arguments of unpatentability based on combinations with Zhang.
`
`Reply, Paper 19, pp. 9-12; Opposition To Patent Owner’s Contingent Motion To
`
`Amend, Paper 20, pp. 7-11.
`
`Observation No. 6:
`
`
`
`In Exhibit 2044, on p. 17:3-10, the witness testified that he does not have
`
`actual experience with the sputtering of tantalum or tantalum nitride layers:
`
`
`
`5
`
`

`

`Case IPR2016-01264 for
`U.S. Patent No. 6,538,324
`
`
`Q Dr. Banerjee, do you have any recollection of any actual
`
`experience with the sputtering of tantalum or tantalum nitride
`
`layers?
`
`MR. KABAKOFF: Objection.
`
`THE WITNESS: Offhand at this point, I do not recall […]
`
`The testimony is relevant because it shows the witness’ lack of actual
`
`experience with the sputtering of tantalum or tantalum nitride layers.
`
`Observation No. 7:
`
`
`
`In Exhibit 2044, on pp. 18:12-19:7, the witness testified that he does not
`
`have experience working with a combination of tantalum and nitrogen, and does
`
`not have experience where there was a flow of nitrogen and the nitrogen was
`
`turned off:
`
`Q As far as you know, you’ve not conducted any procedures
`
`involving nitrogen with tantalum or titanium or a similar metal?
`
`MR. KABAKOFF: Objection to form.
`
`THE WITNESS: I cannot remember working specifically with a
`
`combination of tantalum and nitrogen.
`
`BY MR. FINK:
`
`Q Have you been involved in any sputtering processes where there
`
`was a flow of nitrogen and the nitrogen was turned off?
`
`MR. KABAKOFF: Objection to form.
`
`THE WITNESS: At this point offhand, I do not recall, but I have
`
`worked with sputtering systems involving reactive sputtering
`
`where we change the flow of one gas at some point or the other,
`
`
`
`6
`
`

`

`Case IPR2016-01264 for
`U.S. Patent No. 6,538,324
`
`
`but I don’t recall specifically turning off nitrogen in the middle of
`
`the process.
`
`The testimony is relevant because it shows the witness’ lack of actual
`
`experience with any procedures involving nitrogen with tantalum, or any sputtering
`
`processes where there was a flow of nitrogen and the nitrogen was turned off.
`
`Observation No. 8:
`
`
`
`In Exhibit 2044, on pp. 94:8-96:14, the witness testified that one would
`
`know to cut off the nitrogen flow in a sputtering chamber to form a layer of pure
`
`tantalum. At p. 96:8-14, the witness testified:
`
`Q But the purpose of shutting off the nitrogen is so you can get a
`
`pure surface of tantalum?
`
`MR. KABAKOFF: Objection to form.
`
`THE WITNESS: You want to shut off the nitrogen in this case to
`
`get a tantalum film devoid of nitrogen, yes.
`
`The testimony is relevant because it contradicts Petitioner’s unpatentability
`
`arguments, e.g., see Reply, Paper 19, pp. 7-22, by further evidencing that a
`
`POSITA would have known that shutting off the nitrogen flow during the
`
`sputtering process results in a layer of tantalum devoid of nitrogen.
`
`Observation No. 9:
`
`
`
`In Exhibit 2044, on p. 36:4-16, the witness testified that a film which is an
`
`admixture of amorphous tantalum nitride and crystalline tantalum with nitrogen in
`
`
`
`7
`
`

`

`Case IPR2016-01264 for
`U.S. Patent No. 6,538,324
`
`
`it, would not satisfy the limitation “said first film being composed of crystalline
`
`metal containing nitrogen therein.” That testimony is relevant because it
`
`contradicts Petitioner’s unpatentability assertions. Petition; Reply, Paper 19, pp. 7-
`
`22; Opposition To Motion To Amend, Paper 20, pp. 7-11.
`
`Observation No. 10:
`
`
`
`In Exhibit 2044, on p. 100:6-13, the witness testified that pure tantalum will
`
`adhere better to copper than tantalum nitride:
`
`Q So is it true that pure tantalum will adhere better to copper than
`
`tantalum nitride?
`
`MR. KABAKOFF: Objection to form.
`
`THE WITNESS: Everything else being the same?
`
`BY MR. FINK:
`
`Q Yes.
`
`A Yes. In most cases, yes.
`
`The testimony is relevant because it contradicts Petitioner’s unpatentability
`
`arguments as evidence that a POSITA would not have added nitrogen to a film
`
`with a surface of pure tantalum where better adherence to copper is desired. Reply,
`
`Paper 19, pp. 7-22; Opposition To Motion To Amend, Paper 20, pp. 7-11.
`
`
`
`8
`
`

`

`Observation No. 11:
`
`
`
`Case IPR2016-01264 for
`U.S. Patent No. 6,538,324
`
`
`In Exhibit 2044, on pp. 101:3-102:7, the witness testified that adding a
`
`sufficient amount of nitrogen to a crystalline layer of pure tantalum is going to
`
`mess up the crystalline structure and impact the adhesion properties:
`
`Q So at the time of the invention of the ‘324 patent, would the
`
`understanding of a person of ordinary skill in the art be that a
`
`surface of pure tantalum would give better adhesion than a layer of
`
`tantalum with nitrogen, all things the same?
`
`MR. KABAKOFF: Objection, form.
`
`THE WITNESS: A surface of pure tantalum would give better
`
`adhesion than tantalum with nitrogen if the amount of nitrogen that
`
`you added messed up the crystalline structure of the tantalum
`
`nitride -- I shouldn’t use the word "tantalum nitride" -- the
`
`tantalum nitrogen alloy to the extent that it messed up the wetting
`
`and the adhesion properties of the copper.
`
`BY MR. FINK:
`
`Q So adding nitrogen to tantalum can mess up, using your words,
`
`the adhesion properties of the crystalline structure to copper?
`
`A If you added sufficient nitrogen. I mean, hypothetically if you
`
`had a layer of tantalum and you added a single nitrogen atom, that
`
`wouldn’t mess it up obviously. So there’s thresholds.
`
`Q So if there’s a sufficient amount of nitrogen, however, it is
`
`going to mess up the crystalline structure of the pure tantalum
`
`layer?
`
`
`
`9
`
`

`

`Case IPR2016-01264 for
`U.S. Patent No. 6,538,324
`
`
`A Yes, and if that happened, then that would impact the adhesion
`
`properties.
`
`The testimony is relevant because it contradicts Petitioner’s unpatentability
`
`arguments by evidencing that a POSITA would have known that adding nitrogen
`
`could mess up the crystalline structure of a pure tantalum layer and impact the
`
`adhesion properties. Reply, Paper 19, pp. 7-22; Opposition To Motion To Amend,
`
`Paper 20, pp. 7-11.
`
`Observation No. 12:
`
`
`
`In Exhibit 2044, on pp. 109:5-111:15, the witness testified that Ex.1033
`
`teaches that the resistivity of a pure tantalum film or a tantalum film having no
`
`nitrogen is lower than the tantalum film containing nitrogen, and that adding
`
`nitrogen increases the resistivity of a film and you want the resistivity to be as low
`
`as possible. At p.111:6-15, the witness testified:
`
`Q Do you have an understanding why all of the less-preferred
`
`alternative embodiments or methods are disclosed as including
`
`nitrogen as compared to the preferred embodiments which use pure
`
`tantalum or just 98 percent pure tantalum films?
`
`A Okay. The context of this patent, that’s because the addition of
`
`nitrogen increases the resistivity of the film, and in general in these
`
`interconnects, you want the resistivity to be as low as possible.
`
`The testimony is relevant to Petitioner’s argument as to whether a POSITA
`
`would have added nitrogen to a pure tantalum film. The testimony is relevant
`
`
`
`10
`
`

`

`Case IPR2016-01264 for
`U.S. Patent No. 6,538,324
`
`
`because it contradicts Petitioner’s argument (Reply, Paper 19, pp. 23-24), supports
`
`Patent Owner’s argument (PO Response, Paper 14, pp. 32, 59-60), and evidences
`
`that the general understanding of a POSITA at the time of invention was that
`
`adding nitrogen increases the resistivity of a film.
`
`Observation No. 13:
`
`
`
`In Exhibit 2044, on p. 119:1-18, the witness testified
`
`Q In general, what effect does adding a small amount of nitrogen
`
`to a tantalum film have on the resistivity of the film?
`
`MR. FINK: Object to form.
`
`THE WITNESS: But in the ‘324 patent there’s actually a figure.
`
`Figure 9 is an exemplary plot of how resistivity depends on
`
`nitrogen flow rate and sputtering power, and it shows that for low
`
`nitrogen concentrations there’s a decrease of resistivity, but then
`
`higher nitrogen concentrations, the resistivity goes up.
`
`BY MR. KABAKOFF:
`
`Q Would a person of ordinary skill in the art at the time of the
`
`‘324 patent have understood that adding a small content of
`
`nitrogen to a tantalum film would reduce resistivity and then
`
`increase it as shown in figure 9?
`
`A Yes, as shown in this figure.
`
`The testimony is relevant to Petitioner’s argument (Reply, Paper 19, pp. 23-
`
`24), because it evidences that Petitioner is relying on the teachings of the ‘324
`
`patent for motivation to add a small amount of nitrogen to a tantalum film.
`
`
`
`11
`
`

`

`Observation No. 14:
`
`
`
`Case IPR2016-01264 for
`U.S. Patent No. 6,538,324
`
`
`In Exhibit 2044, on pp. 36:18-39:4, the witness testified that he did not apply
`
`the ordinary and accustomed meanings of “crystalline” and “amorphous” as used
`
`in solid state physics in his analysis. The testimony is relevant to all of Petitioner’s
`
`arguments as Petitioner’s expert did not apply the broadest reasonable
`
`interpretation to either of these claim terms. The testimony is additionally relevant
`
`as it evidences that Petitioner’s arguments and the statements and opinions
`
`contained in the supporting declarations referring to “crystalline” and
`
`“amorphous”, Exhibits 1003 and 1038, use the same words but ascribe different
`
`meanings to those words.
`
`Observation No. 15:
`
`
`
`In Exhibit 2044, on pp. 94:4-95:1, the witness testified that Nogami
`
`discloses that the top layer 16 [Fig. 1] can be pure tantalum or tantalum nitride.
`
`The testimony is relevant to the argument in Petitioner’s Opposition To Patent
`
`Owner’s Contingent Motion To Amend, Paper 20, pp. 11-19, regarding the
`
`patentability of the Substitute Claims over Zhang and Ding in view of Nogami.
`
`The testimony is relevant because it evidences that a POSITA would have known
`
`that Nogami discloses that the top layer 16 can be pure tantalum.
`
`
`
`12
`
`

`

`Observation No. 16:
`
`
`
`Case IPR2016-01264 for
`U.S. Patent No. 6,538,324
`
`
`In Exhibit 2044, on pp. 87:14-88:5, the witness testified that “Ta” is the
`
`symbol for tantalum, which means tantalum with no nitrogen. The testimony is
`
`relevant as it evidences that a POSITA would understand the symbol “Ta”
`
`appearing in prior art documents as meaning tantalum not containing nitrogen.
`
`Observation No. 17:
`
`
`
`In Exhibit 2044, on p. 67:9-17, the witness testified:
`
`Q Okay. When you read the words “the nitrogen being present
`
`throughout the first film,” what is your understanding? I don’t
`
`want what you think IP Bridge means. I want your understanding
`
`of that phrase.
`
`A Yeah, I interpret that as being present everywhere.
`
`Q Meaning top surface included?
`
`A Yeah, top to the bottom.
`
`The testimony is relevant to the issue of claim construction of proposed
`
`Substitute Claim 11. The testimony supports Patent Owner’s claim construction of
`
`the term “throughout.” PO Contingent Motion To Amend, Paper 16, p. 9.
`
`Observation No. 18:
`
`
`
`In Exhibit 2044, on pp. 57:4-63:8, the witness testified about the
`
`specification of the ‘324 patent teaching nitrogen present throughout the first film.
`
`Excerpts from this portion of testimony include:
`
`
`
`13
`
`

`

`Q Okay. Would the tantalum nitrogen .1 be throughout the film?
`
`There’d be some on the top; some on the bottom; some in the middle.
`
`Case IPR2016-01264 for
`U.S. Patent No. 6,538,324
`
`
`MR. KABAKOFF: Objection to form.
`
`THE WITNESS: Presumably.
`
`Id., pp. 60:20-61:2, and:
`
`Q Right. But there’s still going to be nitrogen throughout the film;
`
`isn’t that true?
`
`A There'd be nitrogen in the tantalum nitrogen .1s, which would
`
`be randomly distributed toward [sic] the film.
`
`Id., p. 63:4-8.
`
`The testimony is relevant because it supports Patent Owner’s claim
`
`construction that “said first film being composed of crystalline metal containing
`
`nitrogen therein,” should be construed to mean “a first film consisting essentially
`
`of a mixture of crystalline or polycrystalline metal with nitrogen throughout.” PO
`
`Response, Paper 14, pp. 14-15; Reply, Paper 19, pp. 2-6.
`
`Observation No. 19:
`
`
`
`In Exhibit 2044, on pp. 76:12-80:3, pp. 83:19-84:1, and pp. 85:11-16, the
`
`witness testified that a “solid solution” can consist of one solid phase dispersed
`
`homogenously in another solid phase, and that a POSITA would understand the
`
`meaning of the term “solid solution.” The testimony is relevant to the argument in
`
`Petitioner’s Opposition To Patent Owner’s Contingent Motion To Amend, Paper
`
`20, pp. 19-22, regarding adequate written description for Substitute Claim 13. The
`
`
`
`14
`
`

`

`Case IPR2016-01264 for
`U.S. Patent No. 6,538,324
`
`
`testimony is relevant because it contradicts Petitioner’s arguments and evidences
`
`that there is adequate written description of “solid solution” in the ‘324 patent.
`
`
`
`Dated: July 12, 2017
`
`Respectfully Submitted by:
`
`
`
`
`
`
`
`/Michael J. Fink/
`Michael J. Fink
`Registration No. 31,827
`Greenblum & Bernstein, P.L.C.
`1950 Roland Clarke Place
`Reston, Virginia 20191
`Tel: 703-716-1191
`Fax: 703-716-1180
`Email: mfink@gbpatent.com
`
`Attorney for Patent Owner,
`IP Bridge
`
`
`
`
`
`{R50502 03159547.DOC}
`
`15
`
`

`

`Case IPR2016-01264 for
`U.S. Patent No. 6,538,324
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true copy of the foregoing:
`
`PATENT OWNER’S MOTION FOR OBSERVATIONS REGARDING THE
`CROSS-EXAMINATION OF SANJAY K. BANERJEE, PH.D.
`
`was served by electronic mail on this 12th day of July, 2017, upon Counsel for
`
`Petitioners, as follows:
`
`E. Robert Yoches (bob.yoches@finnegan.com);
`Stephen E. Kabakoff (stephen.kabakoff@finnegan.com);
`Joshua L. Goldberg (joshua.goldberg@finnegan.com);
`TSMC-IPB-PTAB@finnegan.com;
`Christopher P. Carroll (christopher.carroll@whitecase.com); and
`Shamita Etienne-Cummings (setienne@whitecase.com).
`
`
`
`
`
`/Michael J. Fink/
`Michael J. Fink
`Registration No. 31,827
`Greenblum & Bernstein, P.L.C.
`1950 Roland Clarke Place
`Reston, Virginia 20191
`Tel: 703-716-1191
`Fax: 703-716-1180
`Email: mfink@gbpatent.com
`
`Attorney for Patent Owner,
`IP Bridge
`
`
`
`
`
`
`

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