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 No. IPR2016-01377
`Patent Number 6,197,696
`
`Before JUSTIN T. ARBES, MICHAEL J. FITZPATRICK, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`DECLARATION OF TAKEO OHASHI, Ph.D.
`
`IP Bridge Exhibit 2013
`TSMC v. IP Bridge
`IPR2016-01377
`Page 0001
`
`

`

`TABLE OF CONTENTS
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`
`Page
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`Qualifications ................................................................................................... 1
`
`I.
`
`II. Materials Considered ....................................................................................... 2
`III. Translation of the Word マスク ...................................................................... 3
`IV. Translation of the Word 及び .......................................................................... 8
`
`
`
`i
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`IPR2016-01377 Page 0002
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`

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`I, Takeo Ohashi, hereby declare under penalty of perjury under the laws of the
`
`
`
`United States of America:
`
`I.
`
`Qualifications
`
`1.
`
`I am currently President and owner of Ohashi High Technology
`
`Corporation of New York, New York; a role I have had since July 2001. In my
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`work with Ohashi High Technology Corporation, I translate Japanese patents,
`
`technical articles, and business/legal documents and perform interpretations.
`
`2.
`
`From 1995 to July 2001, I was a sole proprietor for Ohashi High
`
`Technology of New York, New York. In that capacity, I translated Japanese
`
`patents,
`
`technical articles, and business/legal documents and performed
`
`interpretations.
`
`3.
`
`I have over 22 years of professional experience as an interpreter and
`
`translator, and am well acquainted with the Japanese language and the English
`
`language.
`
`4.
`
`I received a Bachelors of Engineering degree in Applied Physics from
`
`the University of Tokyo in 1980; a Doctor of Philosophy degree in Electrical
`
`Engineering from Cornell University in 1985; and a Masters in Business
`
`Administration from New York University in 1993. At Cornell University, I
`
`worked on epitaxial growths of semiconductors, chip processing such as metal
`
`depositions and etching, and photolithography. From 1985 to 1990, I was
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`1
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`IPR2016-01377 Page 0003
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`

`
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`employed at IBM East Fishkill facilities and worked in a development team
`
`relating to computer chips, including epitaxial growths of semiconductors. A copy
`
`of my Curriculum Vitae is attached to this report as Exhibit A.
`
`5.
`
`I have been retained on behalf of Patent Owner Godo Kaisha IP
`
`Bridge 1 (“IP Bridge” or “Patent Owner”) to offer opinions regarding the
`
`translation of paragraphs [0025], [0080], [0094], and [0095] of Japanese Patent
`
`Application No. 10-079371 to Aoi, entitled “Method of forming wiring structure,”
`
`which I understand has been marked in this proceeding as Exhibit 1013. I have
`
`personal knowledge of the facts and opinions set forth in this declaration, I believe
`
`them to be true, and if called upon to do so, I would testify competently to them. I
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`have been warned that willful false statements and the like are punishable by fine
`
`or imprisonment, or both.
`
`6.
`
`I charge an hourly rate of $100 per hour plus expenses for my work
`
`performed in connection with this Inter Partes Review. I have received no
`
`additional compensation for my work in this Inter Partes Review, and my
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`compensation does not depend on the contents of this report, any testimony I
`
`provide, or the ultimate outcome of this or any other Inter Partes Review.
`
`II. Materials Considered
`
`7.
`
`In developing my opinions below, I have considered the following
`
`materials:
`
`2
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`IPR2016-01377 Page 0004
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`
`
`• Japanese Patent Application No. 10-079371 to Aoi (Exhibit 1013)
`
`• Certified Translation of Japanese Patent Application No. 10-
`079371 to Aoi (Exhibit 1014)
`
`• Certified Translation of Japanese Patent Application No. 10-
`079371 to Aoi submitted during the prosecution of European
`Patent Application No. 99 105 946.0 (Exhibit 2012)
`
`• Kenkyusha’s New Japanese-English Dictionary, 4th Edition, 35th
`Impression (1997) (Exhibit 2021)
`
`• All other materials referenced herein
`
`III. Translation of the Word マスク
`
`8.
`
`I have reviewed Japanese Patent Application No. 10-079371, as it is
`
`set forth in Exhibit 1013, and translated paragraphs [0080], [0094], and [0095]. I
`
`have also reviewed the Certified Translation of Japanese Patent Application No.
`
`10-079371 to Aoi submitted during the prosecution of European Patent
`
`Application No. 99 105 946.0 (Exhibit 2012; the “EP Translation”). I agree with
`
`the EP Translation of each of those paragraphs. The EP Translation of each of
`
`those paragraphs is set forth below (with emphasis added for the reasons discussed
`
`below):
`
`9.
`
`[0080] “Next, as shown in Figure 13 (c), the second resist pattern 309
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`is removed and the patterned second organic-containing silicon dioxide film 305A
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`is dry-etched using the mask pattern 308 as a mask, thereby forming openings for
`
`forming wiring grooves in the patterned second organic-containing silicon dioxide
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`film 305A. Thereafter, the patterned low-dielectric-constant SOG film 304A is
`
`dry-etched using the mask pattern 308 and the patterned second organic-containing
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`3
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`IPR2016-01377 Page 0005
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`silicon dioxide film 305A having the openings for wiring grooves as a mask,
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`thereby forming the wiring grooves 311. In forming the wiring grooves 311, by
`
`selecting such etching conditions that the first organic-containing silicon dioxide
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`film 303A is etched at a rate sufficiently lower than that of the low-dielectric-
`
`constant SOG film 304A, sufficient selectivity can be secured for the patterned
`
`first organic-containing silicon dioxide film 303A. Accordingly, the depth of the
`
`wiring grooves 311 can be determined univocally at the sum of the thicknesses of
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`the second organic-containing silicon dioxide film 305 and the low-dielectric-
`
`constant SOG film 304.” See EX2012 at 30:7-23.
`
`10.
`
`[0094] “Next, as shown in Figure 16(c), the first silicon dioxide film
`
`353 is dry-etched using the patterned second silicon dioxide film 355A and the
`
`patterned organic film 354A as a mask, thereby forming a patterned first silicon
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`dioxide film 353A having contact holes 361. In this etching process step, the mask
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`pattern 358 is transferred to the patterned second silicon dioxide film 355A.
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`Accordingly, openings for forming wiring grooves are formed in the patterned
`
`second silicon dioxide film 355A.” EX2012 at 34:20-27.
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`11.
`
`[0095] “Thereafter, as shown in Figure 16 (d) , the patterned organic
`
`film 354A is dry-etched using the mask pattern 358 and the patterned second
`
`silicon dioxide film 355A having the openings for forming wiring grooves as a
`
`mask, thereby forming the wiring grooves 362. In forming the wiring grooves 362,
`
`4
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`IPR2016-01377 Page 0006
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`
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`by selecting such etching conditions that the first silicon dioxide film 353A is
`
`etched at a rate sufficiently lower than that of the organic film 354A, sufficient
`
`selectivity can be secured for the patterned first silicon dioxide film 353A.
`
`Accordingly, the depth of the wiring grooves 362 can be determined univocally at
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`the sum of the thicknesses of the second silicon dioxide film 355 and the organic
`
`film 354.” EX2012 at 35:1-11.
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`12.
`
`I have also reviewed Petitioner’s Certified Translation of these
`
`paragraphs, as set forth in Exhibit 1014, and compared that language to the
`
`language in the translations above. In doing so, I have discovered an inconsistency
`
`in Petitioner’s Certified Translation. In particular, in paragraph [0080], the
`
`sentence “その後、マスクパターン３０８及び配線溝形成用開口部を有する
`
`パターン化された第２の有機含有シリコン酸化膜３０５Ａをマスクとして
`
`パターン化された低誘電率ＳＯＧ膜３０４Ａに対してドライエッチングを
`
`行なって配線溝３１１を形成する。” is translated to mean: “Thereafter, the
`
`patterned low-dielectric-constant SOG film 304A is dry-etched using the mask
`
`pattern 308 and the patterned second organic constituent-incorporated silicon
`
`dioxide film 305A having the openings for wiring grooves as a mask, thereby
`
`forming the wiring grooves 311.” EX1014 at 14 (emphasis added). Here, the
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`5
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`IPR2016-01377 Page 0007
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`translator has translated the word マスク to mean “a mask” (singular) in the
`
`context of the phrase “dry-etched using [two layers] as” マスク.
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`13. However, in paragraph [0094], the similar sentence “次に、図１６
`
`（ｃ）に示すように、パターン化された第２のシリコン酸化膜３５５Ａ及
`
`びパターン化された有機膜３５４Ａをマスクとして第１のシリコン酸化膜
`
`３５３に対してドライエッチングを行なって、コンタクトホール３６１を
`
`有するパターン化された第１のシリコン酸化膜３５３Ａを形成する。” is
`
`translated to mean: “Next, as shown in Figure 16(c), the first silicon dioxide film
`
`353 is dry-etched using the patterned second silicon dioxide film 355A and the
`
`patterned organic film 354A as masks, thereby forming a patterned first silicon
`
`dioxide film 353A having contact holes 361.” EX1014 at 15 (emphasis added).
`
`Here, the translator has translated the same word マスク to mean “masks” (plural)
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`in the context of the same phrase “dry-etched using [two layers] as” マスク.
`
`14. Furthermore, in paragraph [0095], the similar sentence “次に、図１
`
`６（ｄ）に示すように、マスクパターン３５８及び配線溝形成用開 口部を
`
`有するパターン化された第２のシリコン酸化膜３５５Ａをマスクとしてパ
`
`ターン化された有機膜３５４Ａに対してドライエッチングを行なって配線
`
`溝３６２を形成する。” is translated to mean: “Thereafter, as shown in Figure
`
`6
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`IPR2016-01377 Page 0008
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`16(d), the patterned organic film 354A is dry-etched using the mask pattern 358
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`and the patterned second silicon dioxide film 355A having the openings for the
`
`formation of wiring grooves as masks, thereby forming the wiring grooves 362.”
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`EX1014 at 15 (emphasis added). Here again, the translator has translated the same
`
`word マスク to mean “masks” (plural) in the context of the same phrase “dry-
`
`etched using [two layers] as” マスク.
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`15.
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`In the Japanese language, unlike in the English language, nouns do
`
`not have different singular or plural forms, thus the translator must use context to
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`determine whether the singular or plural form of the noun is meant when
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`translating from Japanese to English. Here, Petitioner’s Certified Translation
`
`inconsistently and improperly translates the same word, when used in the same
`
`context, to be singular in paragraph [0080] and plural in both [0094] and [0095].
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`16. This inconsistency is improper. Instead, it is my opinion that the
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`context suggests that the word マスク, as used in each of these three paragraphs,
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`should be translated consistently as the singular noun, to mean “a mask.”
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`Furthermore, this is consistent with how that word is translated in other portions of
`
`the Japanese Patent Application, where the translator consistently translated the
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`word マスク to mean “a mask.” See, e.g., EX1014 at 13 ([0078]), 14 ([0082]), 16
`
`([0097]).
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`7
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`IPR2016-01377 Page 0009
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`17. Consistent with my opinion, the EP Translation translates the word マ
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`スク in paragraphs [0080], [0094], and [0095] to mean “a mask.” See EX2012 at
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`30:7-23, 34:20-35:11.
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`IV. Translation of the Word 及び
`
`18.
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`I have further translated the eighth and ninth steps in paragraph [0025]
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`and the eighth and ninth steps of [claim 8] of Japanese Patent Application No. 10-
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`079371. My translations of each of those portions of those paragraphs match the
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`EP Translations of each of those paragraphs. The EP Translations of each of these
`
`paragraphs are set forth below (with emphasis added for the reasons discussed
`
`below):
`
`19.
`
`[0025] “…an eighth step of dry-etching the third insulating film using
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`the first and second resist patterns as a mask under such conditions that the third
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`insulating film is etched at a relatively high rate and that the second insulating film
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`and the first and second resist patterns are etched at a relatively low rate, thereby
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`patterning the third insulating film to have the openings for forming contact holes;
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`a ninth step of dry-etching the second insulating film using the first and second
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`resist patterns as a mask under such conditions that the second insulating film is
`
`etched at a relatively high rate and that the first and third insulating films and the
`
`first and second resist patterns are etched at a relatively low rate, thereby
`
`8
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`IPR2016-01377 Page 0010
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`patterning the second insulating film to have the openings for forming contact
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`holes; …” EX2012 at 13:19-14:5.
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`20.
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`[Claim 8] “… an eighth step of dry-etching the third insulating film
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`using the first and second resist patterns as a mask under such conditions that the
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`third insulating film is etched at a relatively high rate and that the second insulating
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`film and the first and second resist patterns are etched at a relatively low rate,
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`thereby patterning the third insulating film to have the openings for forming
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`contact holes;
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`a ninth step of dry-etching the second insulating film using the first and second
`
`resist patterns as a mask under such conditions that the second insulating film is
`
`etched at a relatively high rate and that the first and third insulating films and the
`
`first and second resist patterns are etched at a relatively low rate, thereby
`
`patterning the second insulating film to have the openings for forming contact
`
`holes; …” EX2012 at 4:18-5:4.
`
`21.
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`I have also reviewed Petitioner’s Certified Translation of these
`
`paragraphs, as set forth in Exhibit 1014, and compared that language to the
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`language in the translations above. In doing so, I have discovered at least one error
`
`in Petitioner’s Certified Translation. In particular, the word 及び, which appears
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`twice in paragraph [0025] and twice in [claim 8], is translated to mean “or” in the
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`context of the phrase “using the first resist pattern 及び the second resist pattern as
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`9
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`IPR2016-01377 Page 0011
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`the mask.” EX1014 at 5, 8. These translations are incorrect, as the proper
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`translation of the word 及び is “and.” See, e.g., EX2021 (Kenkyusha’s New
`
`Japanese-English Dictionary (1997)) at 1335 (defining 及び as “and; as well as.”
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`Thus, the phrase should be translated to mean “using the first and second resist
`
`patterns as a mask.”
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`22. Consistent with my opinion, the EP Translation translates the word 及
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`び in the eighth and ninth steps in paragraph [0025] and the eighth and ninth steps
`
`of [claim 8] to mean “and.” See EX2012 at 4:18-5:4, 13:19-14:5.
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`I declare under penalty of perjury under the laws of the United States of
`
`America that the foregoing is true and correct.
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`
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`Executed on this 13th day of April, 2017
`
`
`
`
`
`
`
`
`
`______________________
`Takeo Ohashi, Ph.D.
`At: 5121 Rosemead Blvd Apt F, San Gabriel, CA 91776
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`10
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`IPR2016-01377 Page 0012
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`IPR2016-01377 Page 0013
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`EXHIBIT A
`
`EXHIBIT A
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`
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`IPR2016-01377 Page 0013
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`OHASHI
` High Technology Corp.
`
`
`The Empire State Building, 350 Fifth Avenue, 59th Fl, New York, NY 10118 Tel: 212-695-9275 Fax: 212-656-1713 www.ohashi-ht.com
`
`
`
`
`
`Takeo Ohashi, Ph.D.
`
`
`
`Summary:
`Translation and interpretation experiences over twenty years.
`Hands-on experiences of epitaxial growths of semiconductors, chip processing such
`as metal depositions and etching, and photolithography at Cornell Univ. and IBM.
`Registered U.S. patent agent (Reg. No. 69,701)
`
`
`Work History:
`
`
`
`
`
`
`
`President and owner
`Ohashi High Technology Corporation (NY, NY)
`Ohashi established the firm.
`Ohashi assists Japanese customers with U.S. patent filing and prosecutions.
`Ohashi translates Japanese patents, technical articles, and business/legal
`documents and performs interpretations.
`
`
`
`
`
`
`
`
`
`
`
`7/01 - Present
`
`
`
`
`
`
`
`Sole Proprietor
`Ohashi High Technology (NY, NY)
`Ohashi established the sole proprietorship.
`Ohashi translated Japanese patents, technical articles, and business/legal
`documents and performed interpretations.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1995 – 7/01
`
`
`
`Director, Business Development
`Yamada International Corp. (NY, NY)
`Helped establish and grow export business for American aerospace firms as a
`consultant. Provided technical interfaces between U.S. hardware suppliers and
`Japanese customers.
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`
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`
`
`
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`1/90 – 1/98
`
`
`
`
`
`
`
`
`Staff Engineer
`IBM Corp. (East Fishkill, NY)
`Was employed at IBM East Fishkill facilities and worked in a development team
`of computer chips.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`10/85 – 1/90
`
`
`
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`
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`Education:
`M.B.A.
`Ph.D.
`
`B.E.
`
`
`
`
`
` New York University
`
`
` Cornell University (Elec. Eng.)
` University of Tokyo (Applied Physics)
`
`
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`
`
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`
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`
`
`9/89 – 7/93
`6/81 – 9/85
`4/75 – 3/80
`
`
`Others:
` Native speaker of the Japanese language
`
`
`Naturalized U.S. Citizen
`Studied several law courses (contracts, torts, criminal law, constitutional law, civil
`and criminal procedures, evidence, real properties, remedies, corporation)
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`
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`IPR2016-01377 Page 0014
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