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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD. and
`GLOBALFOUNDRIES U.S. INC.,
`Petitioners,
`v.
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
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`Case IPR2016-013781
`Patent No. 6,197,696
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`PATENT OWNER GODO KAISHA IP BRIDGE 1’S NOTICE OF APPEAL
`
`
`
`
`1 GlobalFoundries U.S. Inc.’s motion for joinder in Case IPR2017-00923 was
`granted.
`
`
`
`IPR2016-01378
`Patent No. 6,197,696
`
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box. 1450
`Alexandria, VA 22313-1450
`
`
`Pursuant to 35 U.S.C. §§ 141, 142, and 319, and 37 C.F.R. §§ 90.2-90.3,
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`notice is hereby given that Patent Owner Godo Kaisha IP Bridge 1 appeals to the
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`United States Court of Appeals for the Federal Circuit from the Final Written
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`Decision of the Patent Trial and Appeal Board (“Board”) entered on January 17,
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`2018 (Paper 46) in IPR2016-01378, and from all underlying orders, decisions,
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`rulings, and opinions regarding this inter partes review of U.S. Patent No.
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`6,197,696 B1 (“’696 patent”). A copy of the Final Written Decision (Paper 46) is
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`attached.
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`
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Patent Owner further indicates
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`that the issues on appeal include, but are not limited to, the following: (1) the
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`Board’s determination that claims 13 and 14 of the ’696 patent have been shown to
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`be unpatentable; (2) the Board’s determination that Petitioner has demonstrated by
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`a preponderance of the evidence that claims 13 and 14 of the ’696 patent are
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`unpatentable under 35 U.S.C. § 103(a) as obvious over U.S. Patent No. 6,140,226
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`to Grill et al. (“Grill”) and U.S. Patent No. 5,592,024 to Aoyama et al. (“Aoyama”)
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`(3) the Board’s consideration of the expert testimony, prior art, and other evidence
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`in the record; (4) the Board’s factual findings, conclusions of law or other
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`1
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`IPR2016-01378
`Patent No. 6,197,696
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`determinations supporting or related to those issues; as well as (5) all other issues
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`decided adversely to Patent Owner in any orders, decisions, rulings, and opinions.
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`
`
`Simultaneous with this submission, a copy of this Notice of Appeal is being
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`filed with the PTAB through the E2E System. In addition, copies of the Notice of
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`Appeal, along with the required docketing fee, are being filed with the Clerk’s
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`office for the United States Court of Appeals for the Federal Circuit.
`
`
`Dated: March 20, 2018
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`Respectfully submitted,
`
`By: /James L. Davis, Jr./
`
`James L. Davis, Jr.
`Reg. No. 57,325
`Andrew N. Thomases (Back-up counsel)
`Reg. No. 40,841
`ROPES & GRAY LLP
`1900 University Avenue, 6th Floor
`East Palo Alto, CA 94303-2284
`P: 650-617-4000 / F: 617-235-9492
`james.l.davis@ropesgray.com
`andrew.thomases@ropesgray.com
`
`J. Steven Baughman (Back-up counsel)
`Reg. No. 47,414
`Paul, Weiss, Rifkind, Wharton &
`Garrison LLP
`2001 K Street, NW
`Washington, DC 20006-1047
`P: 202-223-7340/F: 202-403-3740
`sbaughman@paulweiss.com
`
`Counsel for Patent Owner Godo Kaisha IP Bridge 1
`2
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`
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`
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`CERTIFICATE OF FILING
`
`IPR2016-01378
`Patent No. 6,197,696
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`It is certified that, in addition to being filed electronically through the Patent
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`
`
`
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`Trial and Appeal Board’s E2E System, a copy of PATENT OWNER GODO
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`KAISHA IP BRIDGE 1’S NOTICE OF APPEAL has been filed by hand on March
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`20, 2018, with the Director of the United States Patent and Trademark Office, at
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`the following address:
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`10B20, Madison Building East,
`600 Dulany Street
`Alexandria, VA 22314-5793
`
`
`
`Dated: March 20, 2018
`
`
`
`
`
`Respectfully submitted,
`/James L. Davis, Jr./
`James L. Davis, Jr.
`
`Counsel for Patent Owner Godo Kaisha IP
`Bridge 1
`
`
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`3
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`CERTIFICATE OF FILING
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`IPR2016-01378
`Patent No. 6,197,696
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`It is certified that, a copy of PATENT OWNER GODO KAISHA IP
`
`BRIDGE 1’S NOTICE OF APPEAL was filed electronically through the United
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`States Court of Appeals for the Federal Circuit’s CM/ECF system March 20, 2018
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`and one paper copy delivered by hand on March 20, 2018, with the Clerk of the
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`Court of the Federal Circuit, at the following address:
`
`Clerk of the Court
`717 Madison Place, N.W.
`Room 401
`Washington D.C. 20439
`
`
`Dated: March 20, 2018
`
`
`
`
`
`Respectfully submitted,
`
`/James L. Davis, Jr./
`James L. Davis, Jr
`Counsel for Patent Owner Godo Kaisha IP
`Bridge 1
`
`4
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`
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`CERTIFICATE OF SERVICE
`The undersigned certifies that a true and copy of the foregoing PATENT
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`IPR2016-01378
`Patent No. 6,197,696
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`
`
`
`
`OWNER GODO KAISHA IP BRIDGE 1’S NOTICE OF APPEAL was served on
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`March 20, 2018 in its entirety by causing the aforementioned document to be
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`electronically mailed, pursuant to the parties’ agreement, to the following attorneys
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`of record:
`
`Petitioner TSMC’s Counsel of Record:
`
`Darren M. Jiron
`Reg. No. 45,777
`darren.jiron@finnegan.com
`E. Robert Yoches
`Reg. No. 30,120
`bob.yoches@finnegan.com
`J. Preston Long
`Reg. No. 65,125
`JP.Long@finnegan.com
`Joshua L. Goldberg
`Reg. No. 59,369
`Joshua.Goldberg@finnegan.com
`FINNEGAN , HENDERSON, FARABOW,
`GARRETT & DUNNER , LLP
`ATTN: Patent Administrator
`Two Freedom Square,
`11955 Freedom Drive
`Reston, VA 20190-5675
`
`Petitioner Global Foundries’ Counsel of
`Record:
`
`Christopher Carroll
`WHITE & CASE, LLP
`75 State Street
`Boston, MA 02109-1814
`
`5
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`
`
`
`christopher.carroll@whitecase.com
`
`Shamita Etienne-Cummings
`WHITE & CASE, LLP
`701 Thirteenth Street NW
`Washington, DC 20005-3807
`setienne@whitecase.com
`
`
`Dated: March 20, 2018
`
`
`
`
`
`IPR2016-01378
`Patent No. 6,197,696
`
`Respectfully submitted,
`/James L. Davis, Jr./
`James L. Davis, Jr
`Counsel for Patent Owner Godo Kaisha IP
`Bridge 1
`
`
`
`6
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`
`
`Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 46
`Entered: January 17, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.
`and GLOBALFOUNDRIES U.S. INC.,
`Petitioner,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`____________
`
`Case IPR2016-013781
`Patent 6,197,696 B1
`____________
`
`Before JUSTIN T. ARBES, MICHAEL J. FITZPATRICK, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
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`1 GlobalFoundries U.S. Inc.’s motion for joinder in Case IPR2017-00923
`was granted.
`
`
`
`IPR2016-01378
`Patent 6,197,696 B1
`
`
`I.
`
`INTRODUCTION
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`§ 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons discussed herein, we determine that
`Petitioner has shown, by a preponderance of the evidence, that claims 13 and
`14 (“the challenged claims”) of U.S. Patent No. 6,197,696 B1 (Ex. 1001,
`“the ’696 patent”) are unpatentable.
`
`A. Procedural History
`
`Taiwan Semiconductor Manufacturing Company, Ltd. (“Petitioner”)2
`filed a Petition for inter partes review of claims 13 and 14 of the ’696
`patent. Paper 2 (“Pet.”). Petitioner provided a Declaration of Bruce W.
`Smith, Ph.D., (Ex. 1002) to support its positions. 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 to the Preliminary Response (Paper 9) and Patent Owner filed a
`Sur-Reply (Paper 10).
`Pursuant to 35 U.S.C. § 314(a), on January 18, 2017, we instituted
`inter partes review to determine whether claims 13 and 14 are unpatentable
`
`
`2 On August 8, 2017, we granted a motion for joinder filed by
`GlobalFoundries U.S. Inc. (“GlobalFoundries”) in IPR2017-00923, and
`authorized GlobalFoundries to participate in this proceeding only on a
`limited basis. See Paper 29; Ex. 3003 (IPR2017-00923, Paper 10).
`Although the papers referenced herein were filed by Taiwan Semiconductor
`Manufacturing Company, Ltd., we refer to both entities as “Petitioner”
`throughout this Decision.
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`Patent 6,197,696 B1
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`under 35 U.S.C. § 103(a) as obvious in view of Grill3 and Aoyama.4 See
`Paper 11 (“Inst. Dec.”). Subsequent to institution, Patent Owner filed a
`Patent Owner Response (Paper 19, “PO Resp.”), along with a Declaration of
`Alexander Glew, Ph.D., (Ex. 2009) to support its positions. Petitioner filed
`a Reply (Paper 26, “Reply”) to the Patent Owner Response, along with a
`second Declaration of Dr. Smith (Ex. 1050) in support thereof.
`Petitioner filed a Motion to Exclude (Paper 30, “Pet. Mot.”) certain
`evidence submitted by Patent Owner. Patent Owner filed an Opposition
`(Paper 37), and Petitioner filed a Reply (Paper 41). Patent Owner filed
`Observations on the cross-examination of Dr. Smith (Paper 34), and
`Petitioner filed a Response thereto (Paper 35). Pursuant to our authorization,
`Patent Owner also filed a listing of portions of Petitioner’s Reply that
`allegedly exceed the proper scope of a reply (Paper 36).
`A combined oral hearing for IPR2016-01376, IPR2016-01377,
`IPR2016-01378, and IPR2016-01379 was held on September 12, 2017.
`A transcript of the hearing is included in the record. Paper 45 (“Tr.”).
`
`B. 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. Three additional inter partes reviews challenge claims
`of the ’696 patent. See Case IPR2016-01376; Case IPR2016-01377;
`Case IPR2016-01379; Pet. 67–68; Paper 4, 2–3.
`
`
`3 U.S. Patent No. 6,140,226, filed July 30, 1998, issued Oct. 31, 2000
`(Ex. 1005).
`4 U.S. Patent No. 5,592,024, issued Jan. 7, 1997 (Ex. 1018).
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`C. 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 [57]. The manufacturing
`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 (only one shown in Figure 33(a)),
`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.
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`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.
`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.
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`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.
`
`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.
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`
`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 has been dry-etched
`using both second resist pattern 659 and mask pattern 658 as a mask, thereby
`forming 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
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`IPR2016-01378
`Patent 6,197,696 B1
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`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 away 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. For illustration, we provide an annotated version of
`Figure 27(b) of the ’696 patent below.
`
`
`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.
`According to the ’696 patent, using larger openings in second resist
`pattern 659, as shown in Figure 34(b), allows “openings of the patterned
`second organic film 655A for forming contact holes [such that they are]
`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
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`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).
`Figure 35(b) of the ’696 patent, illustrating a subsequent step in the
`method of this embodiment, is reproduced below.
`
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`Patent 6,197,696 B1
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`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
`is dry-etched using patterned first organic film 653A as a mask. Id. at
`31:19–22. This etching step 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.
`
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`
`D. 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
`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;
`
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`IPR2016-01378
`Patent 6,197,696 B1
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`
`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. Principles of Law
`
`To prevail in its challenges to the patentability of the claims,
`Petitioner must demonstrate by a preponderance of the evidence that the
`challenged claims are unpatentable. 35 U.S.C. § 316(e); 37 C.F.R.
`§ 42.1(d). “In an [inter partes review], the petitioner has the burden from
`the onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). This burden of persuasion never
`shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`Inc., 800 F.3d 1375, 1378–79 (Fed. Cir. 2015) (citing Tech. Licensing Corp.
`v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the
`burdens of persuasion and production in inter partes review).
`A claim is unpatentable for obviousness if, to one of ordinary skill in
`the pertinent art, “the differences between the subject matter sought to be
`patented and the prior art are such that the subject matter as a whole would
`
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`have been obvious at the time the invention was made.” KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). The
`question of obviousness is resolved on the basis of underlying factual
`determinations, including “the scope and content of the prior art are to be
`determined; differences between the prior art and the claims at issue are to
`be ascertained; and the level of ordinary skill in the pertinent art resolved.”5
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`A patent claim “is not proved obvious merely by demonstrating that
`each of its elements was, independently, known in the prior art.” KSR,
`550 U.S. at 418. An obviousness determination requires finding “both ‘that
`a skilled artisan would have been motivated to combine the teachings of the
`prior art references to achieve the claimed invention, and that the skilled
`artisan would have had a reasonable expectation of success in doing so.’”
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–
`68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418 (for an
`obviousness analysis, “it can be important to identify a reason that would
`have prompted a person of ordinary skill in the relevant field to combine the
`elements in the way the claimed new invention does”). A motivation to
`combine the teachings of two references can be “found explicitly or
`implicitly in market forces; design incentives; the ‘interrelated teachings of
`multiple patents’; ‘any need or problem known in the field of endeavor at the
`
`
`5 Additionally, secondary considerations, such as “commercial success, long
`felt but unsolved needs, failure of others, etc., might be utilized to give light
`to the circumstances surrounding the origin of the subject matter sought to
`be patented. As indicia of obviousness or nonobviousness, these inquiries
`may have relevancy.” Graham, 383 U.S. at 17–18. The record, however,
`lacks any such evidence.
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`time of invention and addressed by the patent’; and the background
`knowledge, creativity, and common sense of the person of ordinary skill.”
`Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013)
`(citation omitted). Further, an assertion of obviousness “cannot be sustained
`by mere conclusory statements; instead, there must be some articulated
`reasoning with some rational underpinning to support the legal conclusion of
`obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988
`(Fed. Cir. 2006)); In re Nuvasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016)
`(a finding of a motivation to combine “must be supported by a ‘reasoned
`explanation’” (citation omitted)).
`
`B. Level of Ordinary Skill in the Art
`
`Petitioner asserts that a person of ordinary skill in the art would have
`possessed “(1) the equivalent of a Master of Science degree from an
`accredited institution in electrical engineering, materials science, physics, or
`the equivalent; (2) a working knowledge of semiconductor processing
`technologies for integrated circuits; and (3) at least two years of experience
`in related semiconductor processing analysis, design, and development.
`Additional graduate education could substitute for professional experience,
`and significant work experience could substitute for formal education.”
`Pet. 23–24 (citing Ex. 1002 ¶ 141) (internal citations omitted). Dr. Glew
`testifies that “a person of ordinary skill in the art would have had a
`Bachelor’s of Science degree in materials science engineering, electrical
`engineering, mechanical engineering, chemical engineering, or an equivalent
`degree, and at least two years of experience in semiconductor processing or
`equipment.” Ex. 2009 ¶ 22.
`
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`We note the parties’ proposals differ in the specific degree required
`(i.e., Master of Science vs. Bachelor’s of Science); however, neither party
`argues this distinction makes a difference in analyzing the asserted ground or
`other issues in this proceeding. For clarity of the record, we adopt
`Petitioner’s proposal regarding the level of ordinary skill in the art, as it is
`more specifically directed to the technology described in the ’696 patent. In
`addition, given the disclosures in the ’696 patent and cited prior art, we
`agree with Petitioner that a Master of Science degree (or equivalent) in the
`relevant area better reflects the level of education and training that an
`ordinarily skilled artisan would have possessed at the time than a Bachelor’s
`degree, as Patent Owner contends. Our findings and conclusions, however,
`would be the same under either party’s proposed level of ordinary skill in the
`art. The level of ordinary skill in the art in this case further is reflected by
`the prior art of record. See Okajima v. Bourdeau, 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).
`
`C. 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). Pursuant to that
`standard, the claim language should be read in light of the specification, as it
`would be interpreted by one of ordinary skill in the art. See In re Suitco
`Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). We generally give
`claim terms their ordinary and customary meaning. See In re Translogic
`
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`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and
`customary meaning ‘is the meaning that the term would have to a person of
`ordinary skill in the art in question.’” (quoting Phillips v. AWH Corp.,
`415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc))).
`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) (quoting In re
`NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011)). In other words, “[u]nder a
`broadest reasonable interpretation, words of the claim must be given their
`plain meaning, unless such meaning is inconsistent with the specification
`and prosecution history.” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1062
`(Fed. Cir. 2016) (citing Straight Path IP Grp., Inc. v. Sipnet EU S.R.O., 806
`F.3d 1356, 1362 (Fed. Cir. 2015)). 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).
`However, limitations are not to be read from the specification into the
`claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`1. Construction of “using the [designated layer] as a mask”
`In the Institution Decision, we preliminarily construed the phrase
`“using the [designated layer] as a mask”6 as “using the [designated layer] to
`
`
`6 Claim 13 recites several steps of etching “using” various layers—for
`example, 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 shorthand, we refer to the various layers as “the designated layer.”
`
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`define areas for etching.”7 Inst. Dec. 11–15. We further determined that “to
`meet the limitation ‘using the [designated layer] for etching,’ the designated
`layer ‘must actually be used to define areas for etching.’” Id. at 15 (quoting
`Prelim. Resp. 6 (emphasis Patent Owner’s)). Patent Owner agrees with this
`construction—namely, that “‘using’ something ‘as a mask’ during etching
`means using it to define areas for etching.” PO Resp. 8–9. Petitioner also
`applied this construction in this proceeding. See Tr. 6:7–18; see also id. at
`19:10–16 (Petitioner’s counsel: “No, no, we did not present a construction
`and we did not contest the Board’s construction.”). The parties do not
`dispute that “using the [designated layer] as a mask” means “using the
`[designated layer] to define areas for etching,” and we discern no reason
`from the evidence presented to change this construction. We, therefore,
`maintain our preliminary construction for purposes of this Final Written
`Decision.
`2. Application of the Construction of “using the [designated layer]
`as a mask”
`In the Institution Decision, we also provided additional guidance as to
`what “using the [designated layer] to define areas for etching” encompasses.
`See Inst. Dec. 15–18. In this regard, we provided the following
`non-exhaustive examples:
`[W]e 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.
`Id. at 15.
`
`
`7 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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`We . . . 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.
`Id. at 18 (citing to Figures 25(c) and 27(b) of the ’696 patent as an example
`of “defin[ing] an additional portion . . . to be shielded from etching”).
`Our construction does not p