Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 11
`Entered: January 18, 2017
`
`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 IPR2016-01378
`Patent 6,197,696 B1
`____________
`
`
`
`
`
`
`
`Before JUSTIN T. ARBES, MICHAEL J. FITZPATRICK, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`571-272-7822
`
`
`Paper No. 11
`Entered: January 18, 2017
`
`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 IPR2016-01378
`Patent 6,197,696 B1
`____________
`
`
`
`
`
`
`
`Before JUSTIN T. ARBES, MICHAEL J. FITZPATRICK, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2016-01378
`Patent 6,197,696 B1
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`
`I.
`
`INTRODUCTION
`Taiwan Semiconductor Manufacturing Company, Ltd. (“Petitioner”)
`filed a Petition for inter partes review of claims 13 and 14 (“the challenged
`claims”) of U.S. Patent No. 6,197,696 B1 (Ex. 1001, “the ’696 patent”).
`Paper 2 (“Pet.”). Godo Kaisha IP Bridge 1 (“Patent Owner”) filed a
`Preliminary Response to the Petition. Paper 6 (“Prelim. Resp.”). Pursuant
`to our authorization (Paper 7), Petitioner filed a Reply (Paper 9, “Reply”)
`and Patent Owner filed a Sur-Reply (Paper 10, “Sur-Reply”), directed to the
`issue of the parties’ respective burdens of production if disputes arise prior
`to institution as to whether a challenged claim or cited prior art is entitled to
`the benefit of an earlier priority date.
`We have authority to determine whether to institute inter partes
`review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Upon consideration of
`the Petition, the Preliminary Response, Petitioner’s Reply, and Patent
`Owner’s Sur-Reply, and for the reasons explained below, we determine that
`the information presented shows a reasonable likelihood that Petitioner
`would prevail on at least one asserted ground with respect to all of the
`challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute trial
`as to claims 13 and 14 of the ’696 patent.
`
`A. Related Proceedings
`The parties indicate that the ’696 patent has been asserted in Godo
`Kaisha IP Bridge 1 v. Broadcom Ltd., No. 2-16-cv-00134 (E.D. Tex. 2016).
`Paper 4, 2; Pet. 68. Petitioner has filed three additional petitions challenging
`claims of the ’696 patent—namely, in IPR2016-01376, IPR2016-01377, and
`IPR2016-01379. Pet. 67–68; Paper 4, 2–3.
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`B. The Applied References and Evidence
`Petitioner relies on the following references.
`Exhibit
`Reference
`Date
`U.S. Patent No. 6,140,226 (“Grill”)
`Oct. 31, 2000 Ex. 1005
`U.S. Patent No. 5,592,024 (“Aoyama”)
`Jan. 7, 1997
`Ex. 1018
`U.S. Patent No. 5,920,790 (“Wetzel”)
`July 6, 1999
`Ex. 1019
`
`Petitioner further relies on the Declaration of Bruce W. Smith, Ph.D.
`(Ex. 1002, “Smith Declaration”).
`
`C. The Asserted Grounds
`Petitioner sets forth its challenges to claims 13 and 14 as follows.
`Pet. 31–67.
`Reference(s)
`Grill
`Grill and Aoyama
`Grill and Wetzel
`Grill, Aoyama, and Wetzel
`
`Claim(s) Challenged
`13, 14
`13, 14
`14
`14
`
`Basis
`§ 102(e)
`§ 103
`§ 103
`§ 103
`
`D. The ’696 Patent
`The ’696 patent relates to a “method for forming an interconnection
`structure in a semiconductor integrated circuit.” Ex. 1001, 1:5–7.
`According to the ’696 patent, “[a]n object of the present invention is
`providing a method for forming an interconnection structure in which an
`insulating film with a low dielectric constant can be formed by an ordinary
`resist application process.” Id. at 3:2–5.
`The ’696 patent describes various embodiments of methods of
`forming an interconnection structure. Id. at Abstract. The manufacturing
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`process for a modified example of the sixth embodiment is depicted in
`Figures 33(a)–(c), 34(a)–(c), and 35(a)–(c). Id. at 29:62–32:9.
`Figure 33(a) of the ’696 patent is reproduced below.
`
`
`Figure 33(a), reproduced above, is a cross-sectional view of a partially-
`formed interconnection structure during a process step for forming the same.
`Ex. 1001, 9:60–63. As seen in Figure 33(a), silicon nitride film 652 is
`formed over first metal interconnects 651, which are formed on
`semiconductor substrate 650. Id. at 30:1–3. First organic film 653, silicon
`dioxide film 654, second organic film 655, and titanium nitride film 656 are
`deposited sequentially. Id. at 30:6–16.
`Figure 33(b) of the ’696 patent, illustrating a subsequent step in the
`method of this embodiment, is reproduced below.
`
`
`Figure 33(b), reproduced above, is a cross-sectional view of a partially-
`formed interconnection structure during a process step for forming the same.
`Id. at 9:60–63. In this step, first resist pattern 657 is formed on titanium
`nitride film 656. Id. at 30:36–37. First resist pattern 657 includes openings
`for forming wiring grooves of the interconnection structure. Id.
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`Figure 33(c) of the ’696 patent, illustrating a subsequent step in the
`method of this embodiment, is reproduced below.
`
`
`Figure 33(c), reproduced above, is a cross-sectional view of a partially-
`formed interconnection structure during a process step for forming the same.
`Ex. 1001, 9:60–63. In this step, titanium nitride film 656 is dry-etched using
`first resist pattern 657 as a mask, thereby forming mask pattern 658. Id. at
`30:38–40.
`Figure 34(a) of the ’696 patent, illustrating a subsequent step in the
`method of this embodiment, is reproduced below.
`
`
`Figure 34(a), reproduced above, is a cross-sectional view of a partially-
`formed interconnection structure during a process step for forming the same.
`Id. at 9:64–67. In this step, first resist pattern 657 is removed. Id. at 30:44–
`45.
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`Figure 34(b) of the ’696 patent, illustrating a subsequent step in the
`method of this embodiment, is reproduced below.
`
`
`Figure 34(b), reproduced above, is a cross-sectional view of a partially-
`formed interconnection structure during a process step for forming the same.
`Ex. 1001, 9:64–67. In this step, second resist pattern 659 is formed on mask
`pattern 658. Id. at 30:49–51. Second resist pattern 659 includes openings
`for forming contact holes of the interconnection structure. Id. In this
`embodiment, the openings in second resist pattern 659 are larger than the
`designed size of the contact holes “in respective directions vertical and
`parallel to the wiring grooves.” Id. at 30:51–56.
`Figure 34(c) of the ’696 patent, illustrating a subsequent step in the
`method of this embodiment, is reproduced below.
`
`
`Figure 34(c), reproduced above, is a cross-sectional view of a partially-
`formed interconnection structure during a process step for forming the same.
`Id. at 9:64–67. In this step, second organic film 655 is dry-etched using both
`second resist pattern 659 and mask pattern 658 as a mask, thereby forming
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`patterned second organic film 655A. Id. at 30:58–62. In this embodiment,
`second resist pattern 659 also is removed during this etching. See id. at
`30:66–31:1.
`A three-dimensional depiction of etching using both second resist
`pattern 659 and mask pattern 658 as a mask is provided in the ’696 patent
`with respect to the modified fifth embodiment in Figure 27(b). Figure 27(b)
`of the ’696 patent is reproduced below.
`
`
`Figure 27(b), reproduced above, is a perspective view of a partially-formed
`interconnection structure during a process step for forming the same,
`according to the modified fifth embodiment. Ex. 1001, 9:40–42. Second
`resist pattern 560 of Figure 27(b) is similar to second resist pattern 659 of
`Figure 34(b); mask pattern 559 of Figure 27(b) is similar to mask pattern
`658 of Figure 34(b); and patterned second silicon dioxide film 556A of
`Figure 27(b) is similar to patterned second organic film 655A of Figure
`34(c). Patterned second organic film 655A (element 556A in Figure 27(b))
`is etched only where the openings in the second resist pattern 659 (element
`560 in Figure 27(b)) and mask pattern 658 (element 559 in Figure 27(b))
`overlap.
`According to the ’696 patent, using larger openings in second resist
`pattern 659 allows “openings of the patterned second organic film 655A for
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`forming contact holes [to] be formed to be self-aligned with the openings of
`the mask pattern 658 for forming wiring grooves,” “even if the openings of
`the second resist pattern 659 for forming contact holes have misaligned with
`the openings of the mask pattern 658 for forming wiring grooves.” Id. at
`31:54–60. This self-alignment occurs “because the openings of the
`patterned second organic film 655A for forming contact holes are formed in
`respective regions where the openings of the second resist pattern 659 for
`forming contact holes overlap with corresponding openings of the mask
`pattern 658 for forming wiring grooves.” Id. at 31:60–67.
`Figure 35(a) of the ’696 patent, illustrating a subsequent step in the
`method of the modified sixth embodiment, is reproduced below.
`
`
`Figure 35(a), reproduced above, is a cross-sectional view of a partially-
`formed interconnection structure during a process step for forming the same.
`Id. at 10:1–4. In this step, silicon dioxide film 654 is dry-etched using
`patterned second organic film 655A as a mask, thereby forming patterned
`second silicon dioxide film 654A. Id. at 31:7–10; see also id. at Fig. 28(a)
`(showing a similar step of the modified fifth embodiment).
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`Figure 35(b) of the ’696 patent, illustrating a subsequent step in the
`method of this embodiment, is reproduced below.
`
`
`Figure 35(b), reproduced above, is a cross-sectional view of a partially-
`formed interconnection structure during a process step for forming the same.
`Ex. 1001, 10:1–4. In this step, patterned second organic film 655A (Fig.
`35(a)) is dry-etched using mask pattern 658 as a mask, and first organic film
`653 (Fig. 35(a)) is dry-etched using patterned silicon dioxide film 654A as a
`mask. Id. at 31:12–15; see also id. at Fig. 29(a) (showing a similar step of
`the modified fifth embodiment). This etching forms patterned second
`organic film 655B having wiring grooves 660 and patterned first organic
`film 653A having contact holes 661. Id. at 31:15–17.
`Figure 35(c) of the ’696 patent, illustrating a subsequent step in the
`method of the modified sixth embodiment, is reproduced below.
`
`
`Figure 35(c), reproduced above, is a cross-sectional view of an
`interconnection structure formed by the method of the modified sixth
`embodiment. Id. at 10:1–4. In this step, patterned silicon dioxide film 654A
`is dry-etched using mask pattern 658 as a mask, and silicon nitride film 652
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`is dry-etched using patterned first organic film 653A as a mask. Id. at
`31:19–22. This etching forms patterned silicon dioxide film 654B having
`wiring grooves and patterned silicon nitride film 652A having contact holes,
`and also exposes first metal interconnects 651 within contact holes 661. Id.
`at 31:22–26. Then, a metal film is deposited over the surface of the
`substrate to fill in contact holes 661 and wiring grooves 660, thus forming
`second metal interconnects 662 and contacts 663. Id. at 31:30–44.
`
`E. Illustrative Claim
`Of the challenged claims, claim 13 is independent, and claim 14
`depends therefrom. Claim 13 of the ’696 patent, reproduced below, is
`illustrative of the challenged claims:
`13. A method for forming an interconnection structure,
`comprising the steps of:
`a) forming a first insulating film over lower-level metal
`interconnects;
`b) forming a second insulating film, having a different
`composition than that of the first insulating film, over the first
`insulating film;
`c) forming a third insulating film, having a different
`composition than that of the second insulating film, over the
`second insulating film;
`d) forming a thin film over the third insulating film;
`e) forming a first resist pattern on the thin film, the first
`resist pattern having openings for forming wiring grooves;
`f) etching the thin film using the first resist pattern as a
`mask, thereby forming a mask pattern out of the thin film to
`have the openings for forming wiring grooves;
`g) removing the first resist pattern and then forming a
`second resist pattern on the third insulating film and the mask
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`pattern, the second resist pattern having openings for forming
`contact holes;
`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;
`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;
`j) dry-etching the patterned third insulating film and the
`first insulating film using the mask pattern and the patterned
`second insulating film as respective masks, thereby forming
`wiring grooves and contact holes in the patterned third
`insulating film and the first insulating film, respectively; and
`k) filling in the wiring grooves and the contact holes with
`a metal film, thereby forming upper-level metal interconnects
`and contacts connecting the lower- and upper-level metal
`interconnects together.
`Ex. 1001, 34:58–36:10.
`
`II. ANALYSIS
`
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed
`Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of
`the broadest reasonable interpretation standard). Under the broadest
`reasonable construction standard, claim terms generally are given their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art in the context of the entire disclosure. See In re Translogic
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`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The claims, however,
`“‘should always be read in light of the specification and teachings in the
`underlying patent,’” and “[e]ven under the broadest reasonable
`interpretation, the Board’s construction ‘cannot be divorced from the
`specification and the record evidence.’” Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292, 1298 (Fed. Cir. 2015) (citations omitted). Further, any
`special definition for a claim term must be set forth in the specification with
`reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, however,
`limitations are not to be read from the specification into the claims. In re
`Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`Petitioner does not propose an express construction for any limitation,
`but asserts that the broadest reasonable interpretation should be applied to all
`claim terms. Pet. 24. Patent Owner proposes express construction for the
`phrase “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,”
`which we discuss below. Prelim. Resp. 5–9. No issue in this Decision
`requires express construction of any other claim terms. See, e.g., Wellman,
`Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim
`terms need only be construed ‘to the extent necessary to resolve the
`controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999))).
`Claim 13 recites etching “using” various layers—for example, first
`resist pattern [step f]/second resist pattern and the mask pattern
`[step h]/patterned third insulating film [step i]—“as a mask.” Patent Owner
`argues that the “broadest reasonable construction of this term in light of the
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`specification is ‘using the [first resist pattern/second resist pattern and the
`mask pattern/patterned third insulating film] to define areas for etching.’”
`Prelim. Resp. 5.
`A mask can be used to shield selected areas during an etching process.
`See Mask Definition, MERRIAM-WEBSTER.COM (last accessed Dec. 17, 2016)
`(Ex. 3001) (2d: “a pattern of opaque material used to shield selected areas of
`a surface (as of a semiconductor) in deposition or etching (as in producing
`an integrated circuit)”); see also Ex. 2001,1 280; Ex. 2002,2 601–02;
`Ex. 2003,3 456; Ex. 2004,4 454. The Specification of the ’696 patent
`includes many examples of various layers being used as masks during
`etching. For instance, Patent Owner points to an example in “the ’696 patent
`[that] 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.” Prelim. Resp. 6–7 (citing Ex. 1001, 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), 37(b)). By way
`of illustration, Patent Owner provides annotated versions of Figures 25(c)
`and 27(b) of the ’696 patent (id. at 7–8), reproduced below.
`
`
`1 NEIL SCLATER & JOHN MARKUS, MCGRAW-HILL ELECTRONICS
`DICTIONARY (6th ed. 1997).
`2 RUDOLF F. GRAF, MODERN DICTIONARY OF ELECTRONICS (6th ed., 7th prtg.
`1992).
`3 RUDOLF F. GRAF, MODERN DICTIONARY OF ELECTRONICS (7th ed. 1999).
`4 STEVEN M. KAPLAN, WILEY ELECTRICAL AND ELECTRONICS ENGINEERING
`DICTIONARY (2004).
`
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`Figures 25(c) and 27(b) are cross-sectional and perspective views,
`respectively, of a partially-formed interconnection structure during a process
`step for forming the same, according to an embodiment of the ’696 patent.
`Ex. 1001, 9:32–35, 9:40–42. As described by Patent Owner, “the underlying
`insulating film (556A) is etched only where the openings of the second resist
`pattern (560) and the mask pattern (559) overlap, and . . . both the second
`resist pattern (560) and the mask pattern (559) define the area to be etched.”
`Prelim. Resp. 7. As further illustration, we provide an annotated version of
`Figure 27(b) of the ’696 patent below.
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`Figure 27(b) is a perspective view of a partially-formed interconnection
`structure (Ex. 1001, 9:40–42), with the portion of the underlying insulating
`film that was removed during etching highlighted in yellow and an x-y-z
`axis added for reference. From the perspective of Figure 27(b), mask pattern
`559 defines the areas for etching in the x-axis direction, and second resist
`pattern 560 defines the areas for etching in the z-axis direction.
`Based on the above, and for purposes of this Decision, we construe
`“using the [designated layer] as a mask” as proposed by Patent Owner:
`“using the [designated layer] to define areas for etching.”5 For purposes of
`this Decision, and based on the record now before us, however, we need to
`discuss further the metes and bounds of this phrase.
`We agree with Patent Owner that to meet the limitation “using the
`[designated layer] for etching,” the designated layer “must actually be used
`to define areas for etching.” Prelim. Resp. 6 (emphasis by Patent Owner).
`For example, we do not consider a mask pattern that is entirely within a
`surrounding resist layer to be “used as a mask” within the meaning of
`claim 13.
`
`
`5 We note that the district court construed the phrase in the same manner in
`an Order dated November 9, 2016. Ex. 3002, 20–22.
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`As an illustration, Figures 13(a) and 13(b) of the ’696 patent are
`reproduced below.
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`
`
`Figures 13(a) and 13(b) are cross-sectional views illustrating partially-
`formed interconnection structures during process steps for forming the same,
`according to an embodiment of the ’696 patent. Ex. 1001, 8:58–60. As
`described in the ’696 patent, layers 303, 304, and 305 of Figure 13(a) are
`etched “using the second resist pattern 309 as a mask” to form patterned
`layers 303A, 304A, and 305A of Figure 13(b). Id. at 17:20–29. The
`description does not reference using mask pattern 308 in forming these
`patterned layers.6 Based on a comparison of this disclosure with that
`discussed above with respect to Figures 25(c) and 27(b), we agree with
`Patent Owner that a teaching such as that described with respect to Figures
`13(a) and 13(b), without more, does not mean that the underlying layer (i.e.,
`layer 308 in Figures 13(a) and 13(b)) is “used as a mask” for etching within
`the meaning of claim 13. See, e.g., Prelim. Resp. 41–42 (discussing
`Petitioner’s mapping of Grill to claim 13).
`We do not agree with Patent Owner’s contention, however, that if an
`edge of a layer (positioned between an overlying layer and the layer being
`etched) is “in line and flush with an edge of” the overlying layer, that the
`
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`6 Mask pattern 308 is used at a subsequent processing step, after removal of
`second resist pattern 309, as a mask for further etching patterned layer 305A.
`See Ex. 1001, 17:30–35, Fig. 13(c).
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`overlying layer and the between layer are “both together . . . used to define
`an area for etching.” See Prelim. Resp. 39–40. By way of illustration,
`Patent Owner provides modified and annotated versions of Figure 13(a) of
`the ’696 patent (id. at 14), reproduced below.
`
`
`
`The figures, reproduced above, are cross-sectional views illustrating an
`embodiment of the ’696 patent, as modified by Patent Owner to show the
`process if second resist pattern 309 has been misaligned when formed. See
`id. at 12–14. According to Patent Owner, “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).” Id. at 14.
`We disagree. The ’696 patent Specification does not support Patent
`Owner’s contention in this regard. Illustrative of an example, Figures 2(c)
`and 3(a) of the ’696 patent are reproduced below.
`
`
`Figures 2(c) and 3(a) are cross-sectional views illustrating partially-formed
`interconnection structures during process steps for forming the same,
`according to an embodiment of the ’696 patent. Ex. 1001, 8:14–16. The
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`’696 patent describes the step that occurs between these figures as “the
`silicon nitride film 102 is dry-etched using the patterned organic-containing
`silicon dioxide film 104A as a mask.” Id. at 11:51–53. Notably, it does not
`describe using patterned film 104A and patterned first organic film 103A as
`the mask. See also id. at 14:41–45 (discussing Figs. 8(a), 8(b)), 16:7–9
`(discussing Figs. 10(c), 11(a)), 17:20–24 (discussing Figs. 13(a), 13(b)),
`21:33–36 (discussing Figs. 18(c), 19(a)), 21:60–62 (discussing Figs. 19(c),
`20(a)).
`We, therefore, are not persuaded that a layer, positioned between an
`overlying layer and the layer being etched and having an edge in line and
`flush with an edge of the overlying layer, is “used as a mask” within the
`meaning of claim 13. Instead, to be “used as a mask,” the between layer
`would need to define an additional portion of the layer being etched that is to
`be shielded from etching.7 An example of this is described above with
`respect to Figures 25(c) and 27(b) of the ’696 patent.
`In summary, for purposes of this Decision, we construe “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” as “using the [first
`resist pattern [step f]/second resist pattern and the mask pattern
`[step h]/patterned third insulating film [step i]] to define areas for etching.”
`This construction, however, is further limited, as discussed above.
`
`
`7 Our construction does not preclude, for example, a layer positioned
`between an overlying layer and the layer being etched from acting as a
`mask, within the meaning of claim 13, in an instance where the overlying
`layer also is removed during the etching, and thus, the between layer acts to
`shield the layer being etched during etching.
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`Patent 6,197,696 B1
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`B. Principles of Law — Anticipation and Obviousness
`To establish anticipation, each and every element in a claim, arranged
`as recited in the claim, must be found in a single prior art reference.
`See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir.
`2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed.
`Cir. 2001). Although the elements must be arranged or combined in the
`same way as in the claim, “the reference need not satisfy an ipsissimis verbis
`test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d
`1331, 1334 (Fed. Cir. 2009); accord In re Bond, 910 F.2d 831, 832 (Fed.
`Cir. 1990).
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`In that regard, an obviousness analysis “need not seek out precise
`teachings directed to the specific subject matter of the challenged claim, for
`a court can take account of the inferences and creative steps that a person of
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; accord In re
`Translogic, 504 F.3d at 1259. The level of ordinary skill in the art may be
`reflected by the prior art of record. See Okajima v. Bourdeau,
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`261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579
`(Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`We analyze the asserted grounds of unpatentability in accordance with
`those principles.
`C. Whether Grill Qualifies as Prior Art
`Each of the asserted grounds relies, at least in part, on Grill. See
`Pet. 31–67. Patent Owner argues “Petitioner fails to show in its Petition a
`reasonable likelihood of proving that Grill is prior art to the ’696 patent.”
`Prelim. Resp. 9–10; see id. at 9–38. We, thus, at the outset determine the
`prior art status of Grill as to claims 13 and 14 of the ’696 patent.
`The application that issued as the ’696 patent was filed on March 23,
`1999. Ex. 1001, at [22]. The ’696 patent claims priority to Japanese
`Application No. 10-079371, filed on March 26, 1998 (“the Japanese priority
`application”8). Id. at [30].
`Grill was filed on July 30, 1998 and issued on October 31, 2000.
`Ex. 1005, at [22], [45]. Grill also claims priority to U.S. Provisional
`Application No. 60/071,628, filed January 16, 1998 (“Grill provisional
`application”). Id. at [60].
`Petitioner asserts that “[d]ue to its July 30, 1998, filing date, Grill is
`prior art under [35 U.S.C.] § 102(e).” Pet. 24. Petitioner argues further that
`the challenged claims are not entitled to the filing date of the Japanese
`priority application. Id. at 16–23. Patent Owner argues that the ’696 patent
`is entitled to its claimed priority date of March 26, 1998 (Prelim. Resp. 10–
`19), and that, because Petitioner does not attempt to show in its Petition that
`
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`8 Petitioner provided a certified translation of the Japanese priority
`application. Ex. 1014.
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`Grill is entitled to the priority date of the Grill provisional application,
`Petitioner cannot rely on the provisional application’s filing date to show
`that Grill is prior art to the challenged claims (id. at 20–26).
`The parties dispute also whether Petitioner must show, in its Petition,
`that the claims of the ’696 patent are not entitled to the claimed foreign
`priority date, or whether the burden is on Patent Owner first to show that the
`claims of the ’696 patent are entitled to the claimed foreign priority date; and
`whether the Petition must address if the asserted prior art (i.e., Grill) is
`entitled to the filing date of its provisional application. See Paper 7; Reply;
`Sur-Reply. Because we are persuaded, based on the current record and as
`discussed below, by Petitioner’s argument that claims 13 and 14 are not
`entitled to rely on the filing date of the Japanese priority application, we
`need not address the issue of the parties’ respective burdens for purposes of
`this Decision.
`
`The ’696 Patent’s Claim to the Japanese Priority Application
`“Under [35 U.S.C.] section 119, the claims set forth in a United States
`application are entitled to the benefit of a foreign priority date if the
`corresponding foreign application supports the claims in the manner required
`by section 112, ¶ 1.” In re Gosteli, 872 F.2d 1008, 1010 (Fed. Cir. 1989);
`see also K & K Jump Start/Chargers, Inc. v. Schumacher Elec. Corp.,
`13 F. App’x 982, 983 (Fed. Cir. 2001) (non-precedential) (“The later filed
`[U.S.] patent . . . is entitled to the filing date of the earlier filed [foreign]
`patent . . . if the earlier filed patent meets the written description test of
`35 U.S.C. § 112, first paragraph.”).
`Petitioner points to several features of independent claim 13 that it
`contends are not supported in the Japanese priority application. Pet. 18–23.
`
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`In particular, Petitioner asserts that the embodiments described in the
`Japanese priority application do not disclose steps (g), (h), or (i) of claim 13.
`See id. Patent Owner argues that each of these features is, in fact, supported
`in the Japanese priority application. Prelim. Resp. 10–19.
`
`Claim 13, step (g)
`Claim 13, step (g) recites “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.”
`Petitioner argues that the first, second, and fourth embodiments of the
`Japanese priority application do not disclose step (g) of claim 13, but instead
`show forming the second resist pattern before removing the first resist
`pattern. Pet. 18–19. We agree. See Ex. 1014 ¶¶ 34, 43, 50, 68, 107,
`Figs. 1(c), 5(a), 9(c), 18(c).
`As noted by Patent Owner (Prelim. Resp. 11–12), however, the third
`embodiment and the described variant thereof of the Japanese priority
`application clearly disclose removing first resist pattern 307 prior to forming
`second resist pattern 309. Ex. 1014 ¶¶ 79, 93, Figs. 13(a), 16(a). Thus,
`Petitioner’s argument that the Japanese priority application does not disclose
`this claim step is not persuasive.
`
`Claim 13, step (h)
`Claim 13, step (h) recites “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.”
`Petitioner argues that the third, variant of the third, and fourth
`embodiments of the Japanese priority application do not disclose step (h) of
`
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`claim 13. Pet. 19–21. Because we determine above that the fourth
`embodiment does not include step (g) of claim 13, we focus our discussion
`on the third embodiment, and the described variant thereof. See Tronzo v.
`Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998) (“For a claim in a
`later-filed application to be entitled to the filing date of an earlier application
`under 35 U.S.C. § 120 (1994), the earlier application must comply with the
`written description requirement of 35 U.S.C. § 11
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