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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`TAIWAN SEMICONDUCTOR MANUFACTURING CO., LTD,
`Petitioner,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`____________
`
`Case IPR2017-01844
`Patent 7,893,501
`____________
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`I.
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`TABLE OF CONTENTS
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`INTRODUCTION ............................................................................................. 1
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`A. Overview of the ’501 Patent ........................................................................ 5
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`B. The Claims Were Narrowed During Prosecution to Distinguish
`Prior Art with Gate Electrodes that Do Not Protrude ................................. 9
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`C. The Petition’s Grounds Fail ....................................................................... 10
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`1. Overview of Misra ............................................................................... 11
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`2. The Misra/Tsai Combination Present in All the Grounds Plainly
`Does Not Have a Protruding Gate Electrode ...................................... 12
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`a. The Petition Advances an Improper Construction of
`“Film” that Is Inconsistent with the Specification and
`Ignores Claim Limitations Imposed on the Parts of the
`Film from which the Gate Electrode Protrudes .......................... 13
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`b. The Petition’s Construction Is Inconsistent with the
`Prosecution History ..................................................................... 17
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`3. Tsai Does Not Remedy Misra’s Failure to Teach the Claimed
`Protruding Gate Electrode ................................................................... 20
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`4. Oda and Hokazono Do Not Remedy Misra’s Failure to Teach
`the Claimed Protruding Gate Electrode .............................................. 20
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`II. OVERVIEW OF THE ’501 PATENT AND CHALLENGED CLAIMS ...... 21
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`A. The Silicon Nitride Film Enhances Performance ...................................... 23
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`B. The Gate Electrode Protruding Upward From Parts of the Silicon
`Nitride Film at Both Sides of the Gate Electrode Is Disclosed in the
`Specification .............................................................................................. 28
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`C. The Protruding Gate Electrode Reduces Parasitic Capacitance
`Between the Gate Electrode and the Source/Drain Contacts .................... 31
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`D. The Claims Were Narrowed During Prosecution to Distinguish
`Prior Art with Gate Electrodes that Do Not Protrude ............................... 38
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`III. CHALLENGED CLAIMS .............................................................................. 40
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`IV. LEVEL OF ORDINARY SKILL IN THE ART ............................................. 40
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`V. CLAIM INTERPRETATION ......................................................................... 41
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`i
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`A. “the gate electrode protrudes upward from a surface level of parts
`of the silicon nitride film located at both side surfaces of the gate
`electrode” ................................................................................................... 42
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`1. The Petition Implicitly Advances an Improperly Narrow
`Construction of “Silicon Nitride Film” that Is Inconsistent with
`the Specification .................................................................................. 43
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`a. The Claimed Silicon Nitride Film is Not Limited to a
`Single Layer ................................................................................ 45
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`b. The Claimed Silicon Nitride Film Can Perform More than
`One Function ............................................................................... 47
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`2. The Petition Implicitly Advances an Improperly Broad
`Construction of “Parts of the Silicon Nitride Film Located at
`Both Side Surfaces of the Gate Electrode” that Ignores
`Limitations in the Claim ...................................................................... 48
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`a. The Petition’s Improperly Broad Construction Ignores
`Limitations In the Claim ............................................................. 49
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`b. The Petition’s Overly Broad Construction Is Inconsistent
`with the Prosecution History ....................................................... 51
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`3. Petitioner’s Conclusory Expert Testimony Cannot Trump the
`Intrinsic Evidence ................................................................................ 58
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`4. Conclusion on BRI of “the Gate Electrode Protrudes Upward
`From a Surface Level of Parts of the Silicon Nitride Film
`Located at Both Side Surfaces of the Gate Electrode” ....................... 59
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`VI. THE PETITION SHOULD BE DENIED BECAUSE IT FAILS TO
`DEMONSTRATE A REASONABLE LIKELIHOOD OF
`PREVAILING AS TO ANY CHALLENGED CLAIMS ............................... 60
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`A. Ground 1: Claim 19 is Not Rendered Obvious by Misra in view of
`Tsai ............................................................................................................ 60
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`1. Overview of Misra ............................................................................... 60
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`2. Overview of Tsai ................................................................................. 63
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`3. Misra in View of Tsai Does Not Teach or Suggest a Protruding
`Gate Electrode ..................................................................................... 63
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`a. Misra’s Silicon Nitride Film Comprises Plasma-Enhanced
`Nitride Layer 20 and Silicon Nitride Spacers 23 ........................ 65
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`(1) Misra is Not “Nearly Identical” to Figure 1 of the
`‘501 Specification ............................................................... 67
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`(2) The ’501 Patent’s Specification is Explicit that the
`Claimed Silicon Nitride Film Can Be Formed From
`Different Layers .................................................................. 70
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`b. Misra’s Gate Electrode Does Not Protrude Upward from
`the Surface Level of the Parts of the Silicon Nitride Film
`Located at the Sides of the Gate Electrode ................................. 71
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`c. Tsai Does Not Remedy Misra’s Failure to Teach the
`Claimed Protruding Gate Electrode ............................................ 78
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`4. Dependent Claim 19 is Not Obvious in View of Misra and Tsai. ...... 79
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`B. Ground 2: Claims 6 and 21 are Not Rendered Obvious by Misra in
`View of Tsai and Oda ................................................................................ 79
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`C. Ground 3: Claims 12 and 13 are Not Rendered Obvious by Misra in
`View of Tsai and Hokazono ...................................................................... 79
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`VII. CONCLUSION ................................................................................................ 80
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`iii
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`CASES
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`TABLE OF AUTHORITIES
`
`
`Aqua Prod., Inc. v. Matal,
`872 F.3d 1290 (Fed. Cir. 2017) ............................................................................ 19
`
`Bell Atl. Network Servs. v. Covad Commc’ns Grp.,
`262 F.3d 1258 (Fed. Cir. 2001) ............................................................................ 59
`
`Blue Calypso, LLC v. Groupon, Inc.,
`815 F.3d 1331 (Fed. Cir. 2016) ............................................................................ 28
`
`Clickbooth.com, LLC v. Essociate, Inc.,
`IPR2015-00464, Paper 9 (July 9, 2015) ............................................................... 43
`
`Cultec, Inc. v. Stormtech LLC,
`IPR2017-00777, Paper No. 7 at 13 (PTAB Aug. 22, 2017) ...................... 4, 19, 57
`
`Cuozzo Speed Techs., LLC v. Lee,
`136 S.Ct. 2131 (2016) .......................................................................................... 41
`
`D’Agostino v. MasterCard International Inc.,
`844 F.3d 945 (Fed. Cir. 2016) ........................................................... 18, 51, 55, 56
`
`Hospira, Inc. v. Genetech, Inc.,
`IPR2017-00739, Paper No. 16 at 18 (PTAB July 27, 2017) ......................... 19, 58
`
`In re Slocombe,
`510 F.2d 1398 (C.C.P.A. 1975) ............................................................................ 30
`
`Jiawei Tech. (HK) Ltd. v. Richmond,
`IPR2014-00937, Paper 24, (Feb. 6, 2014) ............................................................ 43
`
`Jiawei Tech. (HK) Ltd. v. Richmond,
`IPR2014-00938, Paper 27 (Jan. 13, 2015) ........................................................... 43
`
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) ..................................................................... 19, 51
`
`PPC Broadband, Inc. v. Corning Optical Communs. RF, LLC,
`815 F.3d 747 (Fed. Cir. 2016) ....................................................................... 41, 49
`
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`iv
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`SAS Institute, Inc. v. ComplementSoft, LLC,
`2016 WL 3213103 (Fed. Cir. Jun. 10, 2016) ....................................................... 41
`
`Smith & Nephew, Inc. v. Arthrex, Inc.,
`IPR2016-00918, Paper No. 42 at 35 ..................................................................... 59
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`Straight Path IP Grp., Inc. v. Sipnet EU S.R.O.,
`806 F.3d 1356 (Fed. Cir. 2015) ............................................................... 18, 41, 51
`
`Trivascular, Inc. v. Samuels,
`812 F.3d 1056 (Fed. Cir. 2016) .................................................................... passim
`
`Unified Patents Inc. v. Berman,
`IPR2016-01571, Paper No. 10 at 12 (PTAB Dec. 14, 2016) .................... 4, 20, 58
`
`V-Formation v. Benetton Grp.,
`401 F.3d 1307 (Fed. Cir. 2005) ............................................................................ 59
`
`STATUTES
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`35 U.S.C. § 314 ........................................................................................................ 60
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`35 U.S.C. § 325(d) ........................................................................................ 4, 19, 57
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`REGULATIONS
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`37 C.F.R. § 42.100(b) .............................................................................................. 41
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`37 C.F.R. § 42.104(b)(3)-(5) .................................................................................... 43
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`APPENDIX LISTING OF EXHIBITS
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`
`Exhibit Description
`2301 Request for Continued Examination dated March 29, 2010
`2302 U.S. Patent No. 6,437,404 (“Xiang”)
`2303 U.S. Patent No. 6,870,230 (“Matsuda”)
`2304 Office Action dated March 29, 2010
`2305 U.S. Patent No. 3,390,022
`2306 McGraw-Hill Dictionary of Scientific and Technical Terms (2003)
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`vi
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`I.
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`INTRODUCTION
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`Petitioner seeks inter partes review of claims 6, 12, 13, 19, and 21 (“the
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`challenged claims”) of U.S. Patent No. 7,893,501 (“the ’501 patent,” Ex. 1301).
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`Each of the challenged claims is a dependent claim that depends from claim 1 of
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`the ’501 patent. With respect to the limitations of independent claim 1 of the ’501
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`patent, Petitioner asserts the same arguments based on the same prior art references
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`asserted in IPR2017-01843. To the extent the Board denies institution on
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`independent claim 1 in IPR2017-01843, institution should likewise be denied on
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`all Grounds in this Petition for the same reasons. To be clear, Patent Owner is not
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`incorporating its other preliminary response by reference; Patent Owner repeats
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`those arguments here.
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`Despite its repeated assertions that claim 1 recites nothing but a
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`“conventional” “standard” MISFET, the Petition implicitly acknowledges that
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`those assertions are unsupported by the evidence. The Grounds advanced in the
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`Petition are not based upon alleged anticipation of claim 1 by any of the references
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`cited in the Petition, but instead are based on the alleged obviousness of claim 1
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`over Misra (Ex. 1304) in view of Tsai (Ex. 1315).
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`The challenged claims were amended during prosecution such that they all
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`require a “gate electrode [that] protrudes upward from a surface level of parts of
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`the silicon nitride film located at both side surfaces of the gate electrode.” The
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`1
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`claims cover embodiments shown below, where the gate electrode (highlighted in
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`orange) protrudes above a silicon nitride film (highlighted in green) at its side
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`surfaces.
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`’501 patent (Ex. 1301), Figures 1 and 4A (annotated)
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`The Petition’s Grounds rely upon Figure 7 of Misra (Ex. 1304), which
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`discloses a device in which the gate electrode (highlighted in orange) has its side
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`surfaces covered entirely by a silicon nitride film (highlighted in green).
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`Misra (Ex. 1304), Figure 7 (annotated)
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`2
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` Not surprisingly, the Petition’s attempt to establish that Misra’s device, in
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`which the gate electrode has its side surfaces entirely covered in silicon nitride,
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`somehow meets the claimed requirement of a gate electrode that “protrudes
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`upward from a surface level of parts of the silicon nitride film located at both side
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`surfaces of the gate electrode” fails in numerous ways. For example, the Petition
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`ignores the claim language identifying that the parts of the silicon nitride film from
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`which the gate electrode protrudes are the “parts … located at both side surfaces of
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`the gate electrode,” and instead implicitly offers claim construction positions that
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`are entirely inconsistent with the specification and prosecution history.
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`Petitioner asserts that the “Examiner did not have the benefit of Misra,”
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`which the Petition mischaracterizes as teaching “a gate electrode that protrudes.”
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`Petition at 17. The Petition fails to acknowledge that Misra’s teachings relevant to
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`the protruding gate limitation are identical to those of the Xiang and Matsuda
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`references which were considered during prosecution. The claims were initially
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`rejected over Xiang and Matsuda, but those rejections were withdrawn when the
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`claims were narrowed to add the protruding gate limitation. The Examiner
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`rightfully found that neither Xiang nor Matsuda discloses a protruding gate
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`electrode, and Misra fails to disclose this limitation for the very same reasons.
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`Petitioner’s assertion that Misra meets the protruding gate limitation is entirely
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`inconsistent with the prosecution history.
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`3
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`Xiang (Ex. 2302),
`Figure 1 (annotated)
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`Matsuda (Ex. 2303),
`Portion of Figure 9A (annotated)
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`Misra (Ex. 1304), Figure 7 (annotated)
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`
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`As decisions recently identified as informative establish, the Petition’s
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`reliance on grounds that raise the same issue addressed by the Examiner during
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`prosecution provides an additional basis for the board to deny institution. See
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`Cultec, Inc. v. Stormtech LLC, IPR2017-00777, Paper No. 7 at 13 (PTAB Aug. 22,
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`2017) (denying institution pursuant to 35 U.S.C. § 325(d) where “the same or
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`substantially the same prior art or arguments … were presented” during
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`prosecution—even where one of the references was not cited during the
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`prosecution); Unified Patents Inc. v. Berman, IPR2016-01571, Paper No. 10 at 12
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`(PTAB Dec. 14, 2016) (same where Petitioner fails “to provide a compelling
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`reason why we should readjudicate substantially the same prior art and arguments
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`4
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`as those presented during prosecution” and the disclosures of the asserted prior art
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`not cited in the prosecution history are “substantially the same … as that presented
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`previously to the Office.”).
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`A. Overview of the ’501 Patent
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`The ’501 patent describes an improved semiconductor device comprising
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`one or more metal-insulator-semiconductor field-effect transistors (“MISFETs”).
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`E.g., Ex. 1301 (’501 Patent) at Abstract, 1:56-61. This improved semiconductor
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`device can achieve higher operating speeds than conventional semiconductor
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`devices. Id. at 2:32-33.
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`As shown in Figure 1 (reproduced below), the semiconductor device has a
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`substrate 1 and a plurality of isolation regions 2 that divide the substrate into a
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`plurality of active regions 1a, 1b. Id. at 3:21-28. A single MISFET is formed in
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`each active region, and the isolation regions that bound an active region electrically
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`isolate the MISFET formed in that active region from all other MISFETs formed in
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`the substrate. Id. at 3:21-28, 6:22-26, 10:51-54, 12:25-28, Figures 1-9.
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`For example, the MISFET in active region 1a comprises n-type source/drain
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`regions 3a and 4a (highlighted in blue), a gate electrode 6a (highlighted in orange),
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`and a silicon nitride film 8a (highlighted in green) that extends from the gate
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`electrode to upper surfaces of the source/drain regions. Id. at 3:29-37, 41-49, 53-
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`58. The gate electrode 6a is formed on a gate insulating film 5, which is in turn
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`5
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`formed on the active region 1a of the substrate. ’501 patent at 3:32-37. Silicon
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`oxide sidewall 7 (highlighted in pink) is positioned on either side of the gate
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`electrode. Id. at 3:32-37; 8:10-14. An interlevel insulating film 9 covers the
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`MISFET, and contacts 11 (highlighted in yellow) pass through the interlevel
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`insulating film 9, and each connects a lead electrode 10 to one of the source/drain
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`regions (highlighted in blue). Id. 3:59-64.
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`’501 patent (Ex. 1301), Figure 1 (annotated)
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`The silicon nitride film 8a (highlighted in green) extends from the side of the
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`gate electrode 6a to the upper surfaces of source/drain regions 3a and 4a. Id. at
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`3:53-55; 6:62-7:12. The silicon nitride film 8a applies stress to the transistor’s
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`channel region (the region below the gate and between the source and drain
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`regions), and through a phenomenon known as the “piezo resistivity effect,” the
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`applied stress enhances the mobility of charge carriers (e.g., electrons) through the
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`6
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`channel and thereby increases the operating speed of the MISFET. Id. at 1:20-24,
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`4:34-52.
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`The ’501 patent discloses several embodiments with differing relationships
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`between the silicon nitride film and the gate electrode. Id. at 2:1-14; Figures 1,
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`4A-4C. In some embodiments (e.g., Figures 4B and 4C illustrated below), the
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`silicon nitride film covers the entire side surfaces of the gate electrode so that the
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`gate electrode does not “protrude upward from a surface level of parts of the
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`silicon nitride film located at both side surfaces of the gate electrode.” Id. at
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`10:66-11:8, Figures 4B-4C; claim 1.
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`’501 patent (Ex. 1301), Figures 4B and 4C (annotated)
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`
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`Conversely, in other embodiments (e.g., Figures 1 and 4A), the silicon
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`nitride film does not cover the upper side surfaces of the gate electrode so the gate
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`electrode “protrudes upward from a surface level of parts of the silicon nitride film
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`located at both side surfaces of the gate electrode.” Id. at claim 1, 6:62-7:12, 9:53-
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`10:3.
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`7
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`’501 patent (Ex. 1301), Figures 1 and 4A (annotated)
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`The ’501 patent explains that each silicon nitride film 8a, 8b need not be a
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`single layer, “but may include multiple layers.” Id. at 5:60-64.
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`The ’501 patent teaches that when the silicon nitride film covers the entire
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`side surfaces of the gate electrode as in Figures 4B and 4C, the silicon nitride film
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`imparts a compressive or tensile stress to the gate electrode 6a, which in turn
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`creates a stress in the vertical direction in the channel region, which further
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`enhances carrier mobility through the channel region and further increases
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`performance of the MISFET. Id. at 8:22-44, 8:59-9:12. However, as discussed in
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`detail in §II.C below, it was known that covering the entire surface of the gate
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`electrode with a silicon nitride film in this manner increases parasitic capacitive
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`coupling between the gate electrode and the source/drain contact plugs 11, which is
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`disadvantageous. Thus, the various embodiments provide different tradeoffs
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`between increasing carrier mobility through the channel, and minimizing
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`8
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`capacitive coupling between the gate electrode and the source/drain contact plugs
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`11.
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`B.
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`The Claims Were Narrowed During Prosecution to
`Distinguish Prior Art with Gate Electrodes that Do Not
`Protrude
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`The independent claim that ultimately issued as claim 1 in the ’501 patent
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`initially was not limited to the embodiments where the gate electrode protrudes
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`upward from a surface level of the parts of the silicon nitride film located at the
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`side surfaces of the gate electrode. Ex. 2301 (Request for Continued Examination
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`(“RCE”) dated March 29, 2010 (see pending claim 15)). During prosecution, the
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`claim was rejected over a pair of prior art references, Xiang (Ex. 2302) and
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`Matsuda (Ex. 2303), both alleged to disclose a transistor with a gate electrode
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`(highlighted in orange) having its side surfaces covered by a silicon nitride film
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`(highlighted in green) as illustrated below. Ex. 2304 (Office Action dated May 10,
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`2010) at 3-4.
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`Xiang (Ex. 2302),
`Figure 1 (annotated)
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`9
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`
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`Matsuda (Ex. 2303),
`Portion of Figure 9A
`(annotated)
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`In response to the rejection, the Patent Owner narrowed the claims to be
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`limited to the embodiments in which the gate electrode protrudes upward from the
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`surface level of the parts of the silicon nitride film located at the side surfaces of
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`the gate electrode, pointed out that the amended claims were supported by the
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`embodiments in Figures 1 and 4A, and argued that the amended claims
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`distinguished over the art. Ex. 1303 at 8, 9 (“[I]n FIG. 1 of Xiang, it is clear that
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`the upper surface of the gate electrode 56 is at the same level as that of an upper
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`end surface of the [alleged silicon nitride film] 80, 82 … located at both side
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`surfaces of the gate electrode 56 … In Matsuda, as shown in FIG. 9A, it is also
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`clear that the upper surface of the gate electrode 6a is at the same level as that of
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`an upper end surface of the parts of the [alleged silicon nitride film] 9a … located
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`at both side surfaces of the gate electrode 6a.”).
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`In response to the amendment, all claims were allowed. Ex. 1331. Thus, all
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`of the challenged claims require a MISFET that includes a “gate electrode [that]
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`protrudes upward from a surface level of parts of the silicon nitride film located at
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`both side surfaces of the gate electrode.”
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`C. The Petition’s Grounds Fail
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`Ground 1 of the Petition alleges obviousness over Misra in view of Tsai,
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`Ground 2 of the Petition alleges obviousness over Misra in view of Tsai and Oda
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`(Ex. 1305), and Ground 3 of the Petition alleges obviousness over Misra in view of
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`10
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`Tsai and Hokazono (Ex. 1306). All of these Grounds fail. Even if a POSA would
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`have been led to combine the references in the manner alleged in the Petition, the
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`combinations fail to meet the requirement in all challenged claims of a MISFET
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`that includes a “gate electrode [that] protrudes upward from a surface level of parts
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`of the silicon nitride film located at both side surfaces of the gate electrode.” ’501
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`patent at claim 1. The Petition relies upon Misra to allegedly meet this limitation,
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`but the sides of Misra’s gate electrode are covered by a film of silicon nitride just
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`like the Xiang and Matsuda references distinguished during the prosecution of
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`the ’501 patent. Thus, Misra’s gate electrode does not “protrude upward from a
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`surface level of parts of the silicon nitride film located at both side surfaces of the
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`gate electrode” as claimed.
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`1. Overview of Misra
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`Misra discloses four embodiments of a metal-gated, metal-oxide-
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`semiconductor (MOS) transistor. Ex. 1304 (Misra) at 2:41-42, 4:13-21. The
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`Petition’s Grounds rely on the Figure 7 embodiment. Petition at 19-44.
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`As shown in Figure 7 (illustrated below), Misra’s MOS transistor comprises
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`a metal plug 28b (highlighted in orange) that is the gate electrode. Misra at 7:8-13,
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`7:14-20 (“[M]etal region 28b functions as a metallic gate electrode for the
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`semiconductor device 10.”). The MOS transistor further includes a plasma-
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`enhanced nitride layer 20 and silicon nitride spacers 23. Id. at 5:20-24, 23-27,
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`11
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`6:39-49. Petitioner asserts that the plasma-enhanced layer 20 is a silicon nitride
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`layer. Petition at 32-33. Given that both silicon nitride spacers 23 and the plasma-
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`enhanced layer 20 are alleged to be formed from silicon nitride, they are both
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`highlighted in green in the annotated Figure 7 figure below. As Figure 7 makes
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`clear, the silicon nitride layer 20 and spacers 23 together form a film of silicon
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`nitride that covers the transistor’s source/drain region and fully covers the side
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`surfaces of the gate electrode.
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`Misra (Ex. 1304), Figure 7 (annotated)
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`
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`2.
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`The Misra/Tsai Combination Present in All the Grounds
`Plainly Does Not Have a Protruding Gate Electrode
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`In the Misra/Tsai combination that purportedly meets the limitations of
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`claim 1, upon which all the Grounds are based, the plasma-enhanced nitride layer
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`20 and silicon nitride spacers 23 form a film of silicon nitride that covers the side
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`surfaces of the gate electrode in the same manner Misra discloses. Petitioner’s
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`12
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`attempts to argue that this device somehow meets the claimed requirement of a
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`gate electrode that protrudes upward from parts of a silicon nitride film located at
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`both its side surfaces are fatally flawed.
`
`a.
`
`The Petition Advances an Improper Construction of
`“Film” that Is Inconsistent with the Specification and
`Ignores Claim Limitations Imposed on the Parts of
`the Film from which the Gate Electrode Protrudes
`
`Petitioner asserts that the claimed “film” of silicon nitride should be
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`interpreted under BRI to read on only Misra’s plasma enhanced layer 20. Petition
`
`at 42-43. This strained construction ignores entirely the portion (outlined in a
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`dotted red line below) of the silicon nitride film, formed by the spacers 23, that
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`covers the side surfaces of the gate electrode.
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`Misra (Ex. 1304), Figure 7 (annotated)
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`
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`The Petition asserts that Misra’s silicon nitride layer 20 and spacers 23
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`13
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`cannot be considered together to form a silicon nitride film as claimed because
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`they are “separate structures.” Petition at 42. The assertion that the claimed “film”
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`must be narrowly construed to read on a single “structure” of silicon nitride (e.g.,
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`Misra’s plasma layer 20) is inconsistent with the specification of the ’501 patent,
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`which is explicit that the claimed silicon nitride film is not limited to a single layer
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`of silicon nitride. ’501 patent at 5:60-63 (“each of the [silicon nitride] stress films
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`8a and 8b does not have to be a single layer but may include multiple layers.”).
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`The alleged silicon nitride layer 20 and silicon nitride spacers 23 in Misra are both
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`formed by “depositing” silicon nitride in the appropriate location and forming the
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`deposited silicon nitride into the desired configuration. Misra at 5:20-22, 6:38-40.
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`The different “structures” in Misra (layer 20 and spacers 23) are no different than
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`the different layers the specification explicitly states may form a “silicon nitride
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`film” as claimed.
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`The Petition also asserts that the claims only require that the gate electrode
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`protrude from “parts of the silicon nitride film” (Petition at 43, emphasis in
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`original), suggesting that Misra’s gate electrode protruding from any part of the
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`silicon nitride film is enough to meet the claim. Thus, the Petition asserts that the
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`parts of Misra’s silicon nitride film that directly cover the gate electrode’s sides
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`surfaces can be ignored, because the claimed “parts of the silicon nitride film”
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`from which the gate electrode protrudes can be read on other “parts of the silicon
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`nitride film.” This assertion fails because it reads out of the claim entirely the
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`requirement that the “parts” of the silicon nitride layer that the gate electrode
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`protrudes upward from are the “parts … located at both side surfaces of the gate
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`electrode.”
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`The Petitioner’s claim interpretation is also entirely inconsistent with the
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`specification of the ’501 patent. As illustrated in Figure 4B below, the ’501
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`specification discloses embodiments where, as in Misra, the silicon nitride film
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`covers the entire side surface of the gate electrode. As in Misra, the gate electrode
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`6a in the Figure 4B embodiment is higher than parts of the silicon nitride film that
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`sit atop the substrate. However, the gate electrode 6a in no sense protrudes from
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`the parts of the silicon nitride film located at the gate electrode’s side surfaces, as
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`those parts of the film fully cover the side surfaces of the gate electrode.
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`’501 patent (Ex. 1301), Figure 4B (annotated)
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`Only different embodiments (Figures 1 and 4A) in the ’501 patent’s
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`specification were identified during prosecution as supporting the narrowing of the
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`claims to recite the protruding gate electrode. Ex. 1303 at 8 (citing the
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`embodiments of Figures 1 and 4A). These embodiments have gate electrodes
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`which protrude upward from the portions of the silicon nitride layer located closest
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`to the side surfaces of the gate electrode, i.e., the parts “located at both side
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`surfaces of the gate electrode” as claimed. Id.
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`’501 patent (Ex. 1301), Figures 1 and 4A (annotated)
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`b.
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`The Petition’s Construction Is Inconsistent with the
`Prosecution History
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`The Petitioner’s strained construction is also inconsistent with the
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`prosecution history of the ’501 patent. Misra’s gate electrode fails to protrude
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`upward from a silicon nitride film for the exact same reasons as the prior art cited
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`during prosecution which the applicant distinguished by amending the claims.
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`See §V.A.2 (discussing Ex. 1303 at 8-9).
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`Xiang (Ex. 2302),
`Figure 1 (annotated)
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`Matsuda (Ex. 2303),
`Portion of Figure 9A (annotated)
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`Misra (Ex. 1304), Figure 7 (annotated)
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`17
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`In Xiang and Matsuda, the gate electrode is “higher than” portions of the
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`silicon nitride film overlying the source/drain region. But, as the Examiner rightly
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`found, the gate electrode does not protrude upward from the parts of the silicon
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`nitride film located at the side surfaces of the gate electrode in Xiang and Matsuda,
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`because the portions of the film at the gate electrode’s side surfaces cover the
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`entire side surfaces of the gate electrode. Ex. 1331 at 2.
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`If the claims are interpreted in the strained manner the Petition proposes,
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`they would not distinguish over Xiang or Matsuda, and would read on those
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`references in the same manner the Petition seeks to read the claims onto Misra.
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`Petitioner’s claim interpretation ignores the prosecution history and is
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`unreasonable and not the BRI for this additional reason. E.g., Trivascular, Inc. v.
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`Samuels, 812 F.3d 1056, 1061-62 (Fed. Cir. 2016) (“Under a broadest reasonable
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`interpretation, words of the claim must be given their plain meaning, unless such
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`meaning is inconsistent with the … prosecution history.”); D’Agostino v.
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`MasterCard International Inc., 844 F.3d 945, 948-49 (Fed. Cir. 2016) (affirming
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`BRI of single-merchant was limited to single identified merchant where
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`prosecution history reinforced that the BRI did not cover a chain of stores);
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`Straight Path IP Grp., Inc. v. Sipnet EU S.R.O., 806 F.3d 1356, 1362 (Fed. Cir.
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`2015) (finding that the prosecution history “positively confirmed” the plain
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`meaning and that prosecution history “is to be consulted even in determining a
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`claim’s broadest reasonable interpretation”); Microsoft Corp. v. Proxyconn, Inc.,
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`789 F.3d 1292, 1298 (Fed. Cir. 2015) (“The PTO should also consult the patent’s
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`prosecution history in proceedings in which the patent has been brought back to the
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`agency for a second review.”) abrogated on other grounds by Aqua Prod., Inc. v.
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`Matal, 872 F.3d 1290 (Fed. Cir. 2017).
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`Indeed, while the Petition asserts that the “Examiner did not have the benefit
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`of Misra,” which the Petition mischaracterizes as teaching “a gate electrode that
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`protrudes” (Petition at 17), the Petition fails to acknowledge that in all respects
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`relevant to the protruding gate electrode limitation, Misra’s teachings are identical
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`to those of Xiang and Matsuda, over which the Examiner found the claims “could
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`not be anticipated nor, in combination, be rendered obvious.” Ex. 1331 at 2. As
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`decisions recently identified as informative establish, the Petition’s reliance on
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`Grounds that raise the very same issue addressed by the Examiner during
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`prosecution provides an additional basis for the board to deny institution. See
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`Cultec, Inc., IPR2017-00777, Paper No. 7 at 13 (denying institution pursuant to 35
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`U.S.C. § 325(d) where “the same or substantially the same prior art or arguments
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`… were pres