IPR2016-01378
`U.S. Patent No. 6,197,696
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD. and
`GLOBALFOUNDRIES U.S. INC.,
`Petitioners,
`v.
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`___________________________________
`Case No. IPR2016-013781
`Patent Number 6,197,696
`Before JUSTIN T. ARBES, MICHAEL J. FITZPATRICK, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`PATENT OWNER’S OPPOSITION TO PETITIONERS’ CONSOLIDATED
`MOTION TO EXCLUDE EVIDENCE UNDER 37 C.F.R. §§ 42.62 AND 42.64
`
`
`
`
`1 GlobalFoundries U.S. Inc., who filed Petition IPR2017-00923, has been joined as
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`a petitioner in this proceeding.
`
`
`
`
`U.S. Patent No. 6,197,696
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD. and
`GLOBALFOUNDRIES U.S. INC.,
`Petitioners,
`v.
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`___________________________________
`Case No. IPR2016-013781
`Patent Number 6,197,696
`Before JUSTIN T. ARBES, MICHAEL J. FITZPATRICK, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`PATENT OWNER’S OPPOSITION TO PETITIONERS’ CONSOLIDATED
`MOTION TO EXCLUDE EVIDENCE UNDER 37 C.F.R. §§ 42.62 AND 42.64
`
`
`
`
`1 GlobalFoundries U.S. Inc., who filed Petition IPR2017-00923, has been joined as
`
`a petitioner in this proceeding.
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`
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`IPR2016-01378
`U.S. Patent No. 6,197,696
`In response to Petitioner Taiwan Semiconductor Manufacturing Company,
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`Ltd.’s (“Petitioner”) Motion to Exclude Evidence, Patent Owner respectfully
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`submits that that the Board, sitting as a non-jury tribunal with administrative
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`expertise, is well-positioned to determine and assign appropriate weight to the
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`evidence presented, without resorting to formal exclusion that might later be held
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`reversible error. See Corning Inc. v. DSM IP Assets B.V., IPR2013-00053, Pap. 66,
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`at 19. But even strictly applying the Rules of Evidence, cf. 77 Fed. Reg. 48,612,
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`48,616 (Aug. 14, 2012) (“42.5(a) and (b) permit [APJs] wide latitude … to balance
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`the ideal of precise rules against the need for flexibility to achieve reasonably fast,
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`inexpensive, and fair proceedings”), Patent Owner’s evidence here is entirely
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`proper, and Petitioner’s objections to EX2015 and EX2018-EX2019 under FRE
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`401, 402 and 403 are meritless.
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`I.
`
`Summary of the Law
`Evidence is relevant if it has “any tendency to make a fact more or less
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`probable than it would be without the evidence” and “the fact is of consequence in
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`determining the action.” FRE 401. Both the Federal Circuit and the Board have
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`recognized that there is a “low threshold for relevancy.” OddzOn Prods., Inc. v.
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`Just Toys, Inc., 122 F.3d 1396, 1407 (Fed. Cir. 1997); Laird Techs., Inc. v.
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`GrafTech Int’l Holdings, Inc., IPR2014-00025, Pap. 45 at 44.
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`FRE 403 permits the exclusion of relevant evidence if its probative value is
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`2
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`IPR2016-01378
`U.S. Patent No. 6,197,696
`substantially outweighed by, for example, prejudice, confusion or waste of time,
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`but the Board has previously emphasized that because patentability proceedings
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`“before the Board are not jury trials; in the absence of a jury, the risk of unfair
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`prejudice against which Rule 403 guards is diminished, if not eliminated entirely.”
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`See Neste Oil Oyj v. Reg Synthetic Fuels, LLC, IPR2013-00578, Pap. 53 at 10-11;
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`see also SK Innovation Co. v. Celgard, LLC, IPR2014-00679, Pap. 58, at 50.
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`II. Argument
`Two of the issues in this case are: (1) the proper construction of the term
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`“using the [designated layer] as a mask,” and (2) whether a person of ordinary skill
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`in the art (“POSITA”) would have been motivated to combine Grill and Aoyama in
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`view of Grill’s explicit warning against loss of critical dimension (CD) control
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`caused by photoresist profiles having widely varied thicknesses. As detailed
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`below, the documents that Petitioner seeks to exclude are contrary to Petitioner’s
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`arguments and expert’s testimony regarding the aforementioned issues, and are
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`thus relevant and admissible under FRE 401-403.
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`A. Exhibits 2015 and 2018 and the proper construction of “using the
`[designated] layer as a mask”
`The Eastern District of Texas has previously construed “using [the
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`designated layer] as a mask” to mean using the designated layer “to define areas
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`for etching.” See EX3002 22. In contrast, Petitioner argues the proper BRI
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`construction of the term excludes a designated intermediate layer having “a vertical
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`-3-
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`IPR2016-01378
`U.S. Patent No. 6,197,696
`sidewall ‘in line and flush with an edge of an overlying layer,’” even though this
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`construction adds a negative limitation to, and is narrower than, the construction
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`adopted by the district court. See Paper 26 (“Reply”) at 3. As explained by Patent
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`Owner in its Response, Paper 19 (“POR”) at 7-18, Petitioner’s construction is not
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`only inconsistent with the intrinsic evidence and case law, which precludes a
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`“broadest reasonable construction” from being narrower than a Federal Court
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`construction under the Phillips standard, but is also inconsistent with the extrinsic
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`evidence, including multiple editions of a textbook edited by Petitioner’s expert
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`(EX2017-EX2018)2 as well as multiple editions of another reference (EX2015,
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`EX2027).3
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`The discussions of the multi-layer resist in EX2015, EX2017, EX2018 and
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`EX2027 are consistent with and relevant to a POSITA’s understanding of the
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`2 EX2017 includes excerpts of two chapters from a textbook published in 1998 and
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`edited by Petitioner’s expert Dr. Smith. EX2018-EX2019 includes excerpts of the
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`same two chapters from a later edition of the textbook, published in 2007, and also
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`edited by Dr. Smith.
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`3 Petitioner concedes that EX2027 was properly served as supplemental evidence.
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`See Paper 30 (“Motion”) at 2 n.2. EX2027 is being filed in this proceeding
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`concurrently with this paper.
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`-4-
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`IPR2016-01378
`U.S. Patent No. 6,197,696
`phrase “using the [designated layer] as a mask” in the ’696 patent, which
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`repeatedly refers to an intermediate layer having an edge that is in line and flush
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`with an overlying layer as a mask. See POR 17-18; EX1001 19:50-54, FIGS.
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`16(c)-16(d), 17:34-40, FIGS. 13(b)-13(c), 26:15-29, FIGS. 28(b)-29(a).
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`1.
`
`EX2018 belies Petitioner’s and its Expert’s assertions
`regarding the meaning of “using the [designated layer] as a
`mask”
`EX2018 is relevant because it demonstrates that Patent Owner’s construction
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`of “using the [designated layer] as a mask” is correct and belies Petitioner’s and its
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`expert’s assertions regarding the proper construction.
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`In EX2017 (published 1998) and EX2018 (published 2007), Dr. Smith
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`explains that multi-layer resists composed of multiple layers (e.g., including an
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`imaging layer, an intermediate etch stop layer, and a planarizing layer) could be
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`used collectively to etch an underlying substrate layer.4 EX2017 at 0061, 0079;
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`4 EX2018 was also used without objection during the deposition of Dr. Smith on
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`March 23, 2017. See, e.g., EX2010 at 49:6-50:9 (introducing EX2018 as Smith Ex.
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`3), 50:10-52:10, 58:8-59:1, 64:5-65:8.
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`IPR2016-01378
`U.S. Patent No. 6,197,696
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`EX2018 at 0019, 0033. Dr. Smith depicted (Fig.
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`3(c) in EX2017 and Fig. 12.3(c) in EX2018
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`(shown to the right)) these multiple layers,
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`having edges in line and flush with each other,
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`being used collectively to define an area for
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`patterning (used as a mask to pattern) an
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`underlying substrate. EX2017 at 0060; EX2018
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`at 0018.
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`Both EX2017 and EX2018 support Patent Owner’s construction that an
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`intermediate layer (e.g., intermediate etch stop layer, or planarizing layer) that is in
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`line and flush with an overlying layer (e.g., imaging layer or intermediate etch stop
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`layer, respectively), are used together as a mask to pattern an underlying substrate.
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`In contrast, in this IPR proceeding Dr. Smith’s testimony that an
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`intermediate layer having an edge that is in line and flush with an overlying layer
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`cannot act as a mask even when exposed to etchant, and more specifically that
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`“multi-layer resist processes” as depicted in his publications are not “examples of
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`buried layers acting as masks because they have flush interior sidewalls,” are
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`inconsistent with his prior statements and depictions as illustrated, for example, in
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`Fig. 3(c) of EX2017 and Fig. 12.3(c) of EX2018, respectively. EX1050 ¶¶11, 16-
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`17. Dr. Smith attempts to rewrite his earlier statements, provided years before his
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`-6-
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`IPR2016-01378
`U.S. Patent No. 6,197,696
`retainer by Petitioner TSMC, to comport with the Petitioner’s arguments. Id. Dr.
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`Smith’s need to cite other extrinsic evidence, outside of his own publications, in
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`attempting to rewrite and reconcile his prior statements in his publications
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`underscores the glaring inconsistencies of his testimony. See, e.g., EX1050 ¶¶18-
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`19, citing to EX1045, EX1046, EX1047.
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`Petitioner, clearly recognizing the inconsistencies between Dr. Smith’s
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`testimony in this IPR proceeding and his prior statements in EX2017 and EX2018,
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`is moving to exclude as much of this evidence as possible, even though the
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`relevant information is unchanged across the versions of Dr. Smith’s textbook
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`dating back to 1998.
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`Accordingly, EX2018 is relevant and not cumulative at least because it (1)
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`evidences inconsistencies between Dr. Smith’s testimony in this IPR proceeding
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`and his prior statements; (2) demonstrates how Dr. Smith consistently considered
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`(for at least a nine year period) each layer of a multi-layer resist to be part of the
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`mask used to pattern an underlying substrate even though the intermediate layers
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`had edges that were in line and flush with overlying layers; and (3) was used
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`without objection as an exhibit during Dr. Smith’s deposition.
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`-7-
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`IPR2016-01378
`U.S. Patent No. 6,197,696
`EX2015 further demonstrates that Patent Owner’s
`construction is correct
`Similar to EX2017 and EX2018, EX2015 is relevant because it demonstrates
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`2.
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`that Patent Owner’s construction of “using the [designated layer] as a mask” is
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`correct. EX2015 shows that multiple layers of a multi-layer resist process are
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`referred to collectively as a layer used to pattern (used to mask) an underlying
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`substrate. For example, EX2015 states that “[m]ultilayer processing techniques,
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`where layers of radiation sensitive (top), non-photosensitive organic, and/or
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`inorganic materials [are] sandwiched together to become the total patterning
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`layer”—i.e., multiple layers are referred to collectively as a single patterning mask.
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`EX2015 0007.5
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`While EX2015 is dated 2001, it is relevant to what a POSITA would have
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`known in 1998, circa the priority date of the ’696 patent, both because it is close in
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`time to that earlier timeframe, and because EX2017-EX2018 demonstrate that this
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`field had not changed significantly with respect to the meaning of a patterning
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`layer or mask. This is confirmed by EX2027, a 1991 version of EX2015, which
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`contains this same disclosure—further demonstrating that this concept remained
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`unchanged in the field for at least a decade. EX2027 0113. Indeed, Dr. Smith has
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`never asserted that the field changed in this respect—nor could he, given that this
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`5 All emphasis added unless otherwise indicated.
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`-8-
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`IPR2016-01378
`U.S. Patent No. 6,197,696
`portion of his textbook remained relatively unchanged during this time period as
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`discussed in §II.A.1. “It is well settled that references that have publication dates
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`after the critical date may be cited to show that the state of the art at or around the
`
`time of the invention.” Liberty Mutual v. Progressive, CBM2012-00002, Pap. 66,
`
`at 64, citing Eli Lilly and Co. v. Barr Labs., Inc., 251 F.3d 955, 969-70 (Fed. Cir.
`
`2001), In re Wilson, 311 F.2d 266, 268-269 (CCPA 1962). Thus, EX2015 is
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`relevant and not cumulative because it demonstrates that a POSITA would have
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`understood that around the time of invention of the ’696 patent, and between the
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`1998 and 2007 publication dates of Dr. Smith’s EX2017 and EX2018, multiple
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`layers having edges that were in line and flush could be used collectively as a mask
`
`to pattern an underlying substrate.
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`B.
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`Exhibit 2019 and Grill’s warning against loss of critical dimension
`control caused by photoresist profiles having widely varied
`thicknesses
`Petitioner has proposed combining Grill’s fabrication process with
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`Aoyama’s wider via opening resist pattern to attempt to render obvious the
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`challenged claims of the ’696 patent. Paper 2 (“Petition”) at 48-49. In doing so,
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`Petitioner asserted that “[n]othing about the width of the via pattern in Aoyama
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`affects the dual-hard mask structure of Grill, and nothing about the dual-hard mask
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`structure of Grill affects the width of the via pattern in Aoyama.” Petition at 49
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`(emphasis in original).
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`-9-
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`IPR2016-01378
`U.S. Patent No. 6,197,696
`Patent Owner has identified several flaws in Petitioner’s argument regarding
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`the compatibility of Grill and Aoyama’s processes, including Grill’s explicit
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`warning against photoresist profiles having widely varied thicknesses. POR at 71-
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`73. For example, Grill warns against using techniques that result in a thicker resist
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`layer over via areas as problematic because such thicker resist requires “higher
`
`dose exposures, with consequent loss in CD [critical dimension] control.” See
`
`EX1005, 5:29-35. These problematic photoresist profiles include both (1) the
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`profile in FIG 18B of Aoyama, which Petitioner proposes to combine with Grill,
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`and (2) the profile of the Petitioner’s proposed combination of Grill and Aoyama.
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`POR at 71-73; Reply at 29-31.
`
`EX2019 is relevant because it demonstrates that a POSITA would not have
`
`combined the Grill and Aoyama references in view of Grill’s teachings to the
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`contrary. Just as Grill warned against using photoresist profiles having widely
`
`varied thickness of photoresist because such profiles caused dose exposure
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`variations that could lead to loss of critical dimension control (EX1005 5:29-35),
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`Dr. Smith described this same concern about loss of critical dimension control in
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`1998 (EX2017) and again in 2007 (EX2019). EX2017 0025-0026; EX2019 0033-
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`0034; see also POR at 71-73.
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`As Patent Owner explained, a POSITA would not have been motivated to
`
`modify Grill to incorporate the teachings associated with Aoyama’s FIG. 18B
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`-10-
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`IPR2016-01378
`U.S. Patent No. 6,197,696
`because, inter alia, Grill’s express warning against such profiles would lead a
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`POSITA away from such a combination. POR at 71-73. Dr. Smith’s statements in
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`EX2019 that the “adverse influence of overexposure” can result in a “large amount
`
`of energy in shadow areas” that would degrade an intended pattern support this
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`explanation advanced by Patent Owner. POR at 71-73; EX2009 ¶¶161, 180-183.
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`Although Petitioner and its expert, Dr. Smith, are now attempting to downplay the
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`significance of Dr. Smith’s own statements in EX2019 by citing to multiple
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`examples of new extrinsic evidence (Reply at 29-31; EX1050 ¶¶69-74), those
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`statements are nevertheless relevant to support Patent Owner’s argument.
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`As with the prior inconsistent testimony regarding multi-layer resists
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`discussed above in §II.A, Petitioner is trying to exclude as many versions of Dr.
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`Smith’s prior textbook as possible, even though the relevant statements are
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`unchanged across the versions of the textbook.
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`Accordingly, EX2019 is relevant and not cumulative because it belies Dr.
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`Smith’s testimony in this IPR proceeding, and demonstrates how Dr. Smith
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`consistently described the problems of resist thickness variation on critical
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`dimension control prior to this IPR proceeding.
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`III. Conclusion
`EX2015, EX2018 and EX2019 demonstrate that from at least 1998 to 2007,
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`a POSITA would have understood that (1) multiple layers can act collectively as a
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`
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`-11-
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`IPR2016-01378
`U.S. Patent No. 6,197,696
`mask even if one of the layers is an intermediate layer having a sidewall or edge
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`that is in line and flush with another one of the multiple layers; and (2) that dose
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`exposure and resist thickness variations caused loss of critical dimension control.
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`See Liberty Mutual, CBM2012-00002, Pap. 66, at 64. Indeed, despite his
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`submission of another declaration after the POR (see EX1050), Dr. Smith never
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`testified that the relevant technology of multi-layer resists or problems with dose
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`exposure and resist thickness variation as depicted and described in his
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`publications had changed after the 1998 publication date of his edited chapters in
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`EX2017 such that EX2015 and EX2018-EX2019 would not be relevant at the
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`earlier 1998 date. As noted above and recognized by the Board, because the risk of
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`unfair prejudice against which Rule 403 guards is diminished, if not eliminated
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`entirely in non-jury tribunals, there is no reason the Board cannot properly consider
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`the relevance of EX2015, EX2018 and EX2019.
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`For at least the above reasons, Petitioner’s motion to exclude should be
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`denied.
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`-12-
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`Respectfully submitted by:
`
` /James L. Davis, Jr./
`Andrew N. Thomases (lead
`counsel) - Reg. No. 40,841
`ROPES & GRAY, LLP
`1900 University Ave., 6th Floor
`East Palo Alto, CA 94303
`(650) 617-4000/F: 617-235-9492
`andrew.thomases@ropesgray.com
`
`J. Steven Baughman
`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
`
`Attorneys For Patent Owner
`
`IPR2016-01378
`U.S. Patent No. 6,197,696
`
`Dated: August 23, 2017
`
`
`
`Jordan M. Rossen
`Reg. No. 74,064
`ROPES & GRAY LLP
`2099 Pennsylvania Ave., NW
`Washington D.C. 20006-6807
`P: 202-508-4759/F: 617-235-9492
`jordan.rossen@ropesgray.com
`
`James L. Davis, Jr.
`Reg. No. 57,325
`ROPES & GRAY LLP
`1900 University Avenue, 6th
`Floor
`East Palo Alto, CA 94303-2284
`P: 650-617-4794/F: 617-235-9492
`james.l.davis@ropesgray.com
`
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`IPR2016-01378
`U.S. Patent No. 6,197,696
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that this OPPOSITION TO
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`PETITIONERS’ CONSOLIDATED MOTION TO EXCLUDE EVIDENCE was
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`served by filing this document through the Patent Trial and Appeal Board PTAB
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`E2E, as well as providing a courtesy copy via e-mail to the following attorneys of
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`record for the Petitioner listed below:
`
`Petitioner TSMC’s Counsel of Record:
`
`Darren M. Jiron, Darren.jiron@finnegan.com
`E. Robert Yoches, bob.yoches@finnegan.com
`J. Preston Long, j.preston.long@finnegan.com
`Joshua L. Goldberg, Joshua.Goldberg@finnegan.com
`
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`ATTN: Patent Administration, Two Freedom Square, 11955 Freedom Drive,
`Reston, VA 20190-5675
`
`Petitioner GlobalFoundries’s Counsel of Record:
`
`Christopher Carroll, christopher.carroll@whitecase.com
`75 State St, Boston, MA 02109-1814
`Shamita Etienne-Cummings, setienne@whitecase.com
`701 Thirteenth St NW, Washington, DC 20005-3807
`
`WHITE & CASE, LLP
`Dated:
`August 23, 2017
`
`Respectfully submitted,
`
`
`
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`
`
`By:
`
`/Crena Pacheco/
`Name: Crena Pacheco
`
`
`ROPES & GRAY LLP
`
`
`
`
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