UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
` Taiwan Semiconductor Manufacturing Company, Ltd.
`Petitioner
`
`v.
`
`GODO KAISHA IP BRIDGE 1
`Patent Owner
`____________
`
`Case IPR2016-01376
`Patent 6,197,696
`____________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
`
`
`
`
`
`
`
`
`
`

`
`I. 
`
`II. 
`
`III. 
`
`Table of Contents
`
`
`Page
`Introduction ...................................................................................................... 1 
`
`Claim Construction .......................................................................................... 4 
`
`A. 
`
`“using the [first resist pattern [step f]/second resist pattern and
`the mask pattern [step h]/patterned third insulating film [step i]]
`as a mask” (claim 13) ............................................................................ 4 
`Petitioner Fails to Show That Grill Is Prior Art .............................................. 9 
`
`A. 
`
`The ’696 patent is entitled to its claimed priority date of March
`26, 1998 ............................................................................................... 10 
`Step 13(g) – “removing the first resist pattern and then forming
`1. 
`a second resist pattern on the third insulating film and the mask
`pattern, the second resist pattern having openings for forming
`contact holes” ............................................................................ 11 
`
`2. 
`
`3. 
`
`Step 13(h) – “dry-etching the third insulating film using the
`second resist pattern and the mask pattern as a mask, thereby
`patterning the third insulating film to have the openings for
`forming contact holes” .............................................................. 12 
`
`Step 13(i) – “dry-etching the second insulating film using the
`patterned third insulating film as a mask, thereby patterning the
`second insulating film to have the openings for forming contact
`holes”......................................................................................... 16 
`
`B. 
`
`Petitioner has not shown, and cannot show, that Grill is entitled
`to the priority date of the ’628 application .......................................... 20 
`Petitioner never attempts to argue that Grill is entitled to the
`1. 
`priority date of the ’628 application in the Petition .................. 20 
`
`2. 
`
`The ’628 application does not provide written description
`support for the claims of Grill because it does not disclose
`“transferring the via pattern in the patterned first hard mask
`layer into the second dielectric layer, while concurrently
`removing said via patterned second layer of resist” ................. 26 
`
`(a)  Dr. Smith’s reliance on a disclosure relating to etch
`characteristics in the Background of the ’628 application
`is misplaced .................................................................... 28 
`
`i
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`

`
`Table of Contents (continued)
`
`
`Page
`
`(b)  Dr. Smith’s opinion that concurrent etching of the
`photoresist layer and the dielectric layer is the only
`possibility is unsupported by and contradictory to
`the ’628 application ........................................................ 30 
`(c)  Dr. Smith’s opinions are not credible because they are
`based on problems inapplicable to the relevant
`embodiments ................................................................... 33 
`Petitioner fails to show that the ’628 patent application provides
`written description support for the Grill subject matter alleged
`to disclose claim 13 of the ’696 patent ..................................... 37 
`
`3. 
`
`IV.  Petitioner fails to demonstrate that Grill discloses or renders obvious “using
`the second resist pattern and the mask pattern as a mask” ............................ 38 
`
`V. 
`
`Petitioner fails to demonstrate that Grill discloses or renders obvious “dry-
`etching the third insulating film” ................................................................... 46 
`
`VI.  Petitioner fails to demonstrate that it would have been obvious to combine
`Grill and Aoyama .......................................................................................... 48 
`
`VII.  Conclusion ..................................................................................................... 53 
`
`ii
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`

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`IPR2016-01376
`U.S. Patent No. 6,197,696
`
`LIST OF EXHIBITS
`
`
`Description
`N. Sclater & J. Markus, McGraw-Hill Electronics Dictionary
`(6th ed. 1997) (excerpted)
`R. F. Graf, Modern Dictionary of Electronics (6th ed. 1984)
`(excerpted)
`R. F. Graf, Modern Dictionary of Electronics (7th ed. 1999)
`(excerpted)
`S. M. Kaplan, Wiley Electrical and Electronics Engineering
`Dictionary (2004) (excerpted)
`October 7, 2016 Preliminary Constructions, Godo Kaisha IP
`Bridge 1 v. Broadcom Ltd., et al., Case. No. 2:16-cv-134
`Declaration of Seung Woo Hur
`
`Exhibit
`EX2001
`
`EX2002
`
`EX2003
`
`EX2004
`
`EX2005
`
`EX2006
`
`
`
`
`
`i
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`

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`IPR2016-01376
`U.S. Patent No. 6,197,696
`Pursuant to 37 C.F.R. § 42.107, 1 Patent Owner Godo Kaisha IP Bridge 1
`
`(“IP Bridge”) submits this Preliminary Response to the above-captioned Petition
`
`for Inter Partes Review of U.S. Patent No. 6,197,696 challenging independent
`
`claim 13 and its dependent claim 15 (“Pet.,” Paper 2), which should be denied in
`
`its entirety.
`
`I.
`
`Introduction
`
`On its face, Petitioner Taiwan Semiconductor Manufacturing Company,
`
`Ltd.’s (“Petitioner’s”) submission fails to provide the Board with the basic
`
`evidence required to institute any inter partes review. If the Board nonetheless
`
`institutes trial on any of the challenged claims, Patent Owner will address in detail
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`in its § 42.120 Response the numerous substantive errors and shortcomings that
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`underlie each of Petitioner’s arguments and its purported evidence. In this paper,
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`however, where any testimonial evidence raising an issue of material fact “will be
`
`viewed in the light most favorable to the petitioner” (Rule §42.108), Patent Owner
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`addresses only the meaning of one of the challenged claims’ pertinent terms and
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`the single issue made pertinent by Rule 42.107: Petitioner’s failure to demonstrate,
`
`as to any of the challenged claims, a reasonable likelihood of success on any
`
`
`1 All emphasis herein is added, and all statutory and regulatory citations are to
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`either 35 U.S.C. or 37 C.F.R., as the context indicates, unless otherwise stated.
`
`
`
`1
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`

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`IPR2016-01376
`U.S. Patent No. 6,197,696
`asserted ground of invalidity. Because of this clear threshold failure, the Petition
`
`should be denied and no inter partes review should be instituted under 35 U.S.C. §
`
`314.
`
`To justify institution of an inter partes review, Petitioner’s papers must
`
`make a prima facie showing that, as a factual and legal matter for each asserted
`
`ground, Petitioner has shown a reasonable likelihood of proving at least one
`
`challenged claim unpatentable. See, e.g., 37 C.F.R. § 42.108(c); 35 U.S.C. § 314;
`
`77 Fed. Reg. 48680, 48694 (Aug. 14, 2012). But it is apparent even from
`
`Petitioner’s own arguments and evidence that it cannot meet that burden for any
`
`asserted ground. Its Petition must be denied, and no inter partes review should be
`
`instituted.
`
`As detailed below, each of Petitioner’s asserted grounds relies on U.S.
`
`Patent No. 6,140,226 (“Grill”), which Petitioner has failed to show is prior art to
`
`the ’696 patent. To begin with, Petitioner’s purported attacks on ’696’s
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`entitlement to its own foreign priority document are unfounded and simply ignore
`
`the pertinent words and passages. And while Petitioner clearly knew the ’696
`
`claimed priority to that foreign application (as evidenced by Petitioner’s
`
`unsupported attack on its priority claim), Petitioner failed to make the showing
`
`required to establish Grill as prior art. Again, Petitioner’s own actions reveal its
`
`understanding of the problem: the Petition attempts to get around the Board’s word
`
`
`
`2
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`

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`IPR2016-01376
`U.S. Patent No. 6,197,696
`limits by providing Petitioner’s priority argument only in an attachment to a
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`declaration and then purporting to incorporate it by reference, while indicating
`
`Petitioner expects to get additional briefing prior to the institution decision. Even
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`that improper declaration attachment fails to make the required showing, and
`
`Petitioner has failed to demonstrate that Grill is prior art. Accordingly, every one
`
`of Petitioner’s grounds is deficient, and Petitioner cannot show a reasonable
`
`likelihood of proving at least one challenged claim unpatentable.
`
`Furthermore, if it were assumed that Petitioner had demonstrated a
`
`reasonable likelihood of prevailing in showing that Grill is prior art (it has not),
`
`Petitioner fails to demonstrate a reasonable likelihood of showing that Grill
`
`discloses or renders obvious all of the elements of independent claim 13 (and thus
`
`of the other challenged claim 15, which depends from claim 13), including, inter
`
`alia, “using the second resist pattern and the mask pattern as a mask” and “dry-
`
`etching the third insulating film.” In addition, Petitioner fails to demonstrate a
`
`reasonable likelihood of showing that a person of ordinary skill would combine
`
`Grill and U.S. Patent No. 5,592,024 (“Aoyama”), and thus cannot rely on this
`
`combination to render the claims obvious. These multiple failures confirm that
`
`Petitioner cannot succeed on any of its asserted grounds.
`
`The very purpose of the § 314 threshold is to avoid the empty, wasteful
`
`exercise Petitioner asks this Board to commence: because the Petition on its face
`
`
`
`3
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`

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`IPR2016-01376
`U.S. Patent No. 6,197,696
`fails to show a reasonable likelihood of success as to any asserted ground,
`
`Petitioner’s request for a trial should be denied.
`
`II. Claim Construction
`For purposes of inter partes review, “[a] claim in an unexpired patent . . .
`
`shall be given its broadest reasonable construction in light of the specification of
`
`the patent in which it appears.” 37 C.F.R. § 42.100(b); see Pet. 28. However,
`
`“[e]ven under the broadest reasonable interpretation, the Board’s construction
`
`cannot be divorced from the specification and the record evidence, and must be
`
`consistent with the one that those skilled in the art would reach.” Microsoft Corp.
`
`v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (internal quotations and
`
`citations omitted). While reserving further discussion of claim construction as may
`
`be appropriate for its § 42.120 Patent Owner Response2 if any trial is instituted, or
`
`as may arise in another proceeding, Patent Owner notes here as a preliminary
`
`matter one claim term that needs proper construction.
`
`A.
`
`“using the [first resist pattern [step f]/second resist pattern and
`the mask pattern [step h]/patterned third insulating film [step i]]
`as a mask” (claim 13)
`
`Claim 13 requires etching “using” various layers—for example, the second
`
`2 Again, Patent Owner’s § 42.120 response may present supporting expert
`
`testimony that would not be “viewed in the light most favorable to the petitioner.”
`
`Cf., e.g., 37 C.F.R. §42.107(c); §42.108.
`
`
`
`4
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`

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`IPR2016-01376
`U.S. Patent No. 6,197,696
`resist pattern and the mask pattern (step h)—“as a mask.” Despite acknowledging
`
`the claims must be given their “broadest reasonable construction in light of the
`
`specification of the patent in which it appears” (“BRI”), Petitioner violates 37
`
`C.F.R. § 42.104(b)(3) by flatly asserting “[t]he broadest reasonable construction
`
`should apply to all claims of the ‘696 patent” without providing the Board (and
`
`Patent Owner) the required statement of what Petitioner asserts that construction
`
`should be for any term under the broadest reasonable construction. The Petition
`
`provides no constructions at all. Compare Pet. 28; with § 42.104(b)(3). In fact, the
`
`broadest reasonable construction of this term in light of the specification is “using
`
`the [first resist pattern/second resist pattern and the mask pattern/patterned third
`
`insulating film] to define areas for etching.”
`
`Although it provides no construction, Petitioner’s later attempts to argue this
`
`limitation is somehow met (e.g., Pet. 45-46) reveal that Petitioner is, in fact,
`
`applying a different and erroneous meaning for “using . . . as a mask” that departs
`
`from the broadest reasonable interpretation of this term. See infra, § IV.
`
`Accordingly, Petitioner has failed to define a key term applied in its invalidity
`
`arguments, while tacitly applying an unstated (and incorrect) definition to conceal
`
`Petitioner’s failure to explain “[h]ow the challenged claim is to be construed” and,
`
`when construed properly, “[h]ow the construed claim is unpatentable.” C.F.R. §
`
`42.104(b)(3)-(4). The Petition’s grounds should all be rejected on this basis. See,
`
`
`
`5
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`

`
`IPR2016-01376
`U.S. Patent No. 6,197,696
`e.g., Synopsys, Inc. v. Mentor Graphics Corp., IPR2012-00041, Paper 16 (Inst.
`
`Dec.), at 5-7 (Feb. 22, 2013) (rejecting Petitioner’s implicitly proffered
`
`construction and denying institution); Macronix Int’l Co. v. Spansion LLC,
`
`IPR2014-00106, Paper 13 (Inst. Dec.), at 8-13 (Apr. 24, 2014) (same).
`
`Properly applying the BRI standard, Patent Owner’s proposed construction
`
`confirms that “using” something “as a mask” during etching means using it to
`
`define areas for etching. This is consistent with the use of the term throughout
`
`the ’696 specification, which discloses numerous examples of structures being
`
`used as masks during etching; in each case the structures are defining areas for
`
`etching. See, e.g., EX1001 (’696 patent) at 22:47-24:19, 24:54-26:34, 26:52-27:60,
`
`27:62-29:20, 29:62-31:26, 31:49-32:9; Figs. 21-37. Thus, for the limitation “using
`
`the second resist pattern and the mask pattern as a mask” in step 13(h), for example,
`
`both the second resist pattern and the mask pattern must actually be used to define
`
`areas for etching—it would not satisfy this limitation to have either a second resist
`
`pattern that does not define such an area or a mask pattern that does not define
`
`such an area.
`
`By way of example, the ’696 patent teaches how both the second resist
`
`pattern and the mask pattern are used to define areas for etching: the underlying
`
`layer is patterned (etched) where the openings of the resist pattern and the openings
`
`of the mask pattern overlap. See, e.g., EX1001 at 8:1-6 (“[T]he openings of the
`
`
`
`6
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`

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`IPR2016-01376
`U.S. Patent No. 6,197,696
`patterned third insulating film for forming contact holes are formed in respective
`
`regions where the openings of the second resist pattern for forming contact holes
`
`overlap with corresponding openings of the mask pattern for forming wiring
`
`grooves.”), 7:62-8:7, 25:52-57, 26:63-27:3, 27:19-60, 31:60-67, Figs. 25(c), 27(b),
`
`34(b), 37(a)-(b). Figures 25(c) and 27(b), for example, together illustrate using
`
`both the second resist pattern and the mask pattern as a mask, showing that the
`
`underlying insulating film (556A) is etched only where the openings of the second
`
`resist pattern (560) and the mask pattern (559) overlap, and that both the second
`
`resist pattern (560) and the mask pattern (559) define the area to be etched:
`
`EX1001, FIG. 25(c) (annotated).
`
`
`
`
`
`7
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`

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`IPR2016-01376
`U.S. Patent No. 6,197,696
`
`
`
`EX1001, FIG. 27(b) (annotated).
`
`Contemporaneous dictionary definitions further support Patent Owner’s
`
`construction. For example, the McGraw-Hill Electronics Dictionary defines
`
`masking as “[a]pplying a covering or coating on a semiconductor surface to
`
`provide a masked area for selective deposition or etching.” EX2001 at 3. The
`
`Modern Dictionary of Electronics defines a mask as “[a] device . . . used to shield
`
`selected portions of a base during a deposition process,” and a “template used to
`
`etch circuit patterns on semiconductor wafers.” EX2002 at 3; see also EX2003 at
`
`4. Finally, the Wiley Electrical and Electronics Engineering Dictionary defines a
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`mask as “[a]n object, stencil, or other device which is applied or placed upon a
`
`surface, so as to permit the selective passing of particles, beams, rays, substances,
`
`and so on, to form any desired patterns,” and the use of said object “to selectively
`
`shield portions of semiconductor wafers, or other materials, during manufacturing.”
`
`EX2004 at 3. Again, these definitions confirm that, to be “us[ed] … as a mask,”
`
`
`
`8
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`

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`IPR2016-01376
`U.S. Patent No. 6,197,696
`
`something must actually define areas for etching.
`
`This construction is also consistent with the District Court’s preliminary
`
`claim construction of the same term issued in concurrent proceedings (2:16-cv-
`
`134). See, e.g., EX2005 at 2 (defining the same term as “using the [first resist
`
`pattern/second resist pattern and the mask pattern/patterned third insulating film] to
`
`define areas for etching.”).
`
`Thus, the broadest reasonable construction of “using the [first resist
`
`pattern/second resist pattern and the mask pattern/patterned third insulating film]
`
`as a mask” is “using the [first resist pattern/second resist pattern and the mask
`
`pattern/patterned third insulating film] to define areas for etching.” The Petition
`
`should be denied for its conspicuous failure to construe this term and, as discussed
`
`below, its implicit application of a different (erroneous) construction in a failed
`
`attempt to argue this element is disclosed.
`
`III. Petitioner Fails to Show That Grill Is Prior Art
`As noted above, to justify institution Petitioner’s papers must make a prima
`
`facie showing that, as a factual and legal matter for each asserted ground,
`
`Petitioner has a reasonable likelihood of proving at least one challenged claim
`
`unpatentable. Petitioner asserts three grounds of unpatentability in its Petition, all
`
`of which depend on Grill, either alone or in combination with other references.
`
`But Petitioner fails to show in its Petition a reasonable likelihood of proving that
`
`
`
`9
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`

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`IPR2016-01376
`U.S. Patent No. 6,197,696
`Grill is prior art to the ’696 patent. Accordingly, all of its grounds must fail, as
`
`Petitioner cannot show a reasonable likelihood of proving any challenged claim
`
`unpatentable.
`
`A.
`
`The ’696 patent is entitled to its claimed priority date of March
`26, 1998
`
`Despite acknowledging the ’696 patent’s express claim of priority to JP 10-
`
`079371 (the “’371 application”), which was filed on March 26, 1998, Petitioner
`
`argues that the challenged claims are not entitled to priority to the ’371 application
`
`because the embodiments disclosed in that application allegedly do not disclose
`
`steps (g), (h), and (i) of claim 13 of the ’696 patent. Pet. 20-27. However, as
`
`shown below, the ’371 application’s third embodiment and third embodiment
`
`variant disclose each of those steps in words or passages Petitioner simply ignores.
`
`Because, as demonstrated herein, the “specific points and contentions raised by
`
`Petitioner” to argue against priority fail even on this preliminary record,
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`Petitioner’s prior art must be measured against the ’371 application’s March 26,
`
`1998 filing date for purposes of the Board’s institution decision. See, e.g., Polaris
`
`Wireless, Inc. v. TruePosition, Inc., IPR2013-00323, Paper 9 (Inst. Dec.), at 29
`
`(Nov. 15, 2013).3
`
`
`3 As the Board has explained, “the issue [of entitlement to earlier effective filing
`
`dates] first has to be raised by Petitioner in its petition, by identifying, specifically,
`
`
`
`
`
`10
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`

`
`1.
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`IPR2016-01376
`U.S. Patent No. 6,197,696
`Step 13(g) – “removing the first resist pattern and then
`forming a second resist pattern on the third insulating film
`and the mask pattern, the second resist pattern having
`openings for forming contact holes”
`
`The Petitioner never argues this step is missing in the ’371 application’s
`
`third embodiment or its third embodiment variant (cf. Pet. 21-23 (raising this issue
`
`only in connection with first, second, and fourth embodiments)), and for good
`
`reason: the third embodiment and its variant disclose this step. See, e.g., EX1014
`
`(’371 application) ¶ 79 (“Subsequently, as shown in Figure 13(a), the first resist
`
`pattern 307 is removed and then a second resist pattern 309 having openings for
`
`the formation of contact holes is formed on the second organic constituent-
`
`incorporated silicon dioxide film 305.”), ¶ 93 (“Subsequently, as shown in Figure
`
`16(a), the first resist pattern 357 is removed and then a second resist pattern 359
`
`having openings for the formation of contact holes is formed on the second silicon
`
`dioxide film 355.”). Thus, because Patent Owner’s showing here is that the third
`
`
`the features, claims, and ancestral applications allegedly lacking § 112, first
`
`paragraph, written description and enabling disclosure support for the claims based
`
`on the identified features. Then, the Patent Owner has to make a sufficient showing
`
`of entitlement to earlier filing date or dates, in a manner that is commensurate in
`
`scope with the specific points and contentions raised by Petitioner.” Id.
`
`
`
`11
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`

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`IPR2016-01376
`U.S. Patent No. 6,197,696
`and third variant embodiments provide the required support, Petitioner’s step 13(g)
`
`argument does not apply.
`
`2.
`
`Step 13(h) – “dry-etching the third insulating film using the
`second resist pattern and the mask pattern as a mask,
`thereby patterning the third insulating film to have the
`openings for forming contact holes”
`
`Contrary to Petitioner’s contention (Pet. 23-25), the ’371 application’s third
`
`embodiment and its variant disclose step 13(h). For example, the ’371 application
`
`discloses that the second resist pattern may be misaligned during fabrication. To
`
`address this misalignment, the underlying mask pattern is etched using the second
`
`resist pattern as a mask. As an effect of such etching, edges of the second resist
`
`pattern line up and become flush with the edges of the mask pattern. Accordingly,
`
`when the underlying third insulating film is subsequently patterned, both the
`
`second resist pattern and the mask pattern together define areas for the
`
`patterning—i.e., they are both “used . . . as a mask,” as claimed. Specifically,
`
`the ’371 application discloses:
`
`If there is a concern that the second resist pattern 309 has been
`misaligned with the first resist pattern 307, then the mask pattern 308
`should be dry-etched using the second resist pattern 309 as a mask
`before the second organic constituent-incorporated silicon dioxide
`film 305 is dry-etched using the second resist pattern 309 as a mask.
`That is to say, if the mask pattern 308 is exposed to the openings of
`the second resist pattern 309 for the formation of contact holes
`because of the misalignment of the second resist pattern 309 with
`
`
`
`12
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`

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`IPR2016-01376
`U.S. Patent No. 6,197,696
`the first resist pattern 307, then the mask pattern 308 is dry-etched
`using the second resist pattern 309 as a mask. In this manner, the
`openings of the mask pattern 308 are expanded to include the
`openings for the formation of wiring grooves and contact holes.
`
`
`EX1014 ¶ 81 (third embodiment); see also ¶ 96 (equivalent disclosure for the third
`
`embodiment’s variant).
`
`The demonstratives below illustrate this patterning in case of misalignment,
`
`according to the disclosure above. The first demonstrative below shows the state
`
`of the layers “if the mask pattern 308 is exposed to the openings of the second
`
`resist pattern 309 for the formation of contact holes because of the misalignment[.]”
`
`EX1014 ¶ 81.
`
`
`EX1014 at Figure 13(a) modified (see annotation) according to EX1014 ¶ 81.
`
`
`
`The second demonstrative below shows the layers after “the mask pattern
`
`308 is dry-etched using the second resist pattern 309 as a mask.” EX1014 ¶ 81.
`
`
`
`13
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`

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`IPR2016-01376
`U.S. Patent No. 6,197,696
`
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`EX1014 at Figure 13(a) modified (see annotation) according to EX1014 ¶ 81.
`
`
`
`The third demonstrative below shows that, when the underlying third
`
`insulating film (305) is thereafter etched, both the second resist pattern (309) and
`
`the mask pattern (308) necessarily define the areas for etching of the third
`
`insulating film (305)—i.e., etching of the “third insulating film [305]” is done
`
`“using the second resist pattern [309] and the mask pattern [308] as a mask” as
`
`required by limitation 13(h) (see § II). EX1014 ¶ 79.
`
`Second Resist Pattern 309 and
`Mask Pattern 308 as a mask
`
`
`EX1014 at Figure 13(b) modified according to EX1014 ¶¶ 79, 81. The ’371
`
`
`
`application also contains equivalent disclosures for the variant of the third
`
`
`
`14
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`

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`IPR2016-01376
`U.S. Patent No. 6,197,696
`embodiment. EX1014 ¶¶ 93-96. Thus, contrary to Petitioner’s arguments (which
`
`never address the disclosures concerning misalignment cited above (Pet. 23-25)),
`
`the third embodiment and its variant each disclose the recited step “dry-etching the
`
`third insulating film using the second resist pattern and the mask pattern as a mask,
`
`thereby patterning the third insulating film to have the openings for forming
`
`contact holes.”
`
`Patent Owner further notes that while (as discussed infra in § V) Grill’s
`
`Figures 5D and 5E fail to teach step 13(h), to the extent Grill’s Figure 5 were
`
`considered enough to disclose step (h) of the ’696 patent’s claim 13, as Petitioner
`
`argues, then the ’371 application’s Figures 13(a) and 13(b) (third embodiment) by
`
`themselves (as well as Figures 16(a) and 16(b) (third embodiment’s variant) by
`
`themselves) would also support step (h).4
`
`
`4 In particular, Petitioner’s basis for arguing Grill discloses step (h) is its assertion
`
`that Grill’s Figs 5D-E disclose “the exact same thing” as ’696 patent Figs. 22(b)-
`
`(c). Pet. 43-44. While those figures by themselves do not, in fact, disclose step
`
`13(h) (see infra § IV), under Petitioner’s reasoning the figures of the ’371
`
`application (without the need to resort to additional text) also disclose the “same
`
`thing” as ’696 patent Figs. 22(b)-(c): they show the same type of arrangement of
`
`the resist and mask patterns and the same type of patterning of the underlying layer:
`
`
`
`
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`15
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`3.
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`IPR2016-01376
`U.S. Patent No. 6,197,696
`Step 13(i) – “dry-etching the second insulating film using
`the patterned third insulating film as a mask, thereby
`patterning the second insulating film to have the openings
`for forming contact holes”
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`Contrary to Petitioner’s assertions (Pet. 25-27), the third embodiment in
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`the ’371 application and its variant both disclose this limitation. For mapping the
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`variant of the third embodiment to claim 13, Petitioner identifies “the second
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`insulating film” as layer 354, and then argues the ’371 application does not
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`disclose using “the patterned third insulating film” (355A) as a mask as required by
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`EX1001 (’696 patent), Figs. 22(b)-(c).
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`EX1014 (’371 application) at Figs. 13(a)-(b).
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`EX1014 (’371 application) at Figs. 16(a) and (b).
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`IPR2016-01376
`U.S. Patent No. 6,197,696
`step (i). Pet. 26 (citing ’371 application’s ¶ 93 disclosure that “the second silicon
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`dioxide film 355 and the organic film 354 are sequentially dry-etched using the
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`second resist pattern 359 as a mask”). In fact, however, the very disclosure of
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`the ’371 application cited by Petitioner teaches dry-etching the second insulating
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`film (354) using the patterned third insulating film (355A) as a mask, as required
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`by step (i).
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`In particular, the ’371 application discloses that layers 355 and 354 are
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`“sequentially” etched using the pattern 359 as a mask. EX1014 ¶ 93.
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`EX1014 at Figs. 16(a) and (b). Thus, the following sequence necessarily occurs:
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`(1) First, layer 355 is etched using pattern 359 as a mask, and as a result,
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`edges of layer 355A line up and become flush with edges of 359; and then
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`IPR2016-01376
`U.S. Patent No. 6,197,696
`(2) Second,5 layer 354 is etched “using” pattern 359 and layer 355A (“the
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`patterned third insulating film”) “as a mask”—because they together define
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`areas for patterning of layer 354.
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`Accordingly, and contrary to Petitioner’s arguments (which ignore the ’371
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`application’s disclosure of “sequential” etching (Pet. 25-27)), the ’371 application
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`discloses dry-etching the second insulating film (354) using the patterned third
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`insulating film (355A) as a mask, as claimed in step 13(i). Petitioner’s contention
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`that the third embodiment does not disclose this limitation is incorrect for the same
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`reasons. Again, contrary to Petitioner’s contention, the very disclosure of the ’371
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`application cited by Petitioner teaches etching the second insulating film (303 or
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`304) using the patterned third insulating (304A or 305A) film as a mask. The ’371
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`application’s disclosure that the layers 305, 304, and 303 are “sequentially” etched
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`using the pattern 309 as a mask necessarily indicates that the edges of the layers
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`304A and 305A sequentially line up and become flush with the edge of the
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`5 That layer 355A is used as a mask for etching layer 354 is further supported by
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`the ’371 application’s disclosure that “the second resist pattern 359 is removed
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`during the step of etching the organic film 354,” EX1014 ¶ 93, which indicates that
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`layer 355A must act as a mask during the patterning of layer 354 due to the
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`removal of resist 359.
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`IPR2016-01376
`U.S. Patent No. 6,197,696
`overlying layer (i.e., 304A lines up with 305A, and 305A lines up with 309).
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`EX1014 ¶ 79. Thus, each of layers 304 and 305, together with the resist pattern
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`309, defines for etching areas of its respective underlying layer (303 or 304).
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`Accordingly, the third embodiment also discloses that the third insulating film
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`(304A or 305A) acts as a mask for etching the layer below it, the second insulating
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`film (303 or 304).
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`EX1014 at Figs. 13(a) and (b).
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`* * *
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`Patent Owner has thus shown that all three arguments raised by Petitioner to
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`challenge the ’696 patent’s entitlement to its claimed foreign priority date are
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`without merit: in each instance, the ’371 application in fact discloses what
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`Petitioner argues it does not.
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`B.
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`IPR2016-01376
`U.S. Patent No. 6,197,696
`Petitioner has not shown, and cannot show, that Grill is entitled to
`the priority date of the ’628 application
`1.
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`Petitioner never attempts to argue that Grill is entitled to
`the priority date of the ’628 application in the Petition
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`As discussed above (§III.A), the Petition fails to show a reasonable
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`likelihood (or any likelihood) of prevailing against the ’696 patent’s priority claim
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`to March 26, 1998 for the challenged claims. Thus, the Petition’s reliance on
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`Grill’s later July 30, 1998 filing date fails to show a reasonable likelihood of
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`proving that Grill is actually prior art to the challenged ’696 claims. See, e.g.,
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`Alarm.com Inc. v. Vivint, Inc., IPR2016-00129, Paper 13 (Inst. Dec.), at 16 (May 3,
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`2016) (denying institution where petitioner failed to show prior art reference was
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`entitled to claim benefit of the filing date of its provisional). For this reason, as
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`Petitioner clearly understood, 6 all of its arguments hinge on Grill’s claim of
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`priority to U.S. Provisional Patent App. No. 60/071,628 (the “’628 application”).
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`But because Petitioner has not shown (and could not show) a reasonable likelihood
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`of demonstrating Grill is entitled to that priority date, every ground in the Petition
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`must be rejected.
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`6 See, e.g., Pet. 28 (“[b]ecause of the ’628 application, Grill would still qualify as
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`prior art under §102(e) even if the challenged claims were entitled to the benefit of
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`foreign priority”).
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`IPR2016-01376
`U.S. Patent No. 6,197,696
`In order for Grill to be considered prior art as of the filing date of its
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`provisional application under § 102(e), Grill’s provisional must “provide[] written
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`description support” for both: “(1) the subject matter Petitioner relies upo