`
`
`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 8,974,270
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`SAMSUNG ELECTRONICS CO. LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`SAMSUNG SEMICONDUCTOR, INC., and
`SAMSUNG AUSTIN SEMICONDUCTOR, LLC
`Petitioner
`
`v.
`
`CHIEN-MIN SUNG
`
`Patent Owner
`
`__________________
`
`
`Case IPR2024-00533
`U.S. Patent No. 8,974,270
`__________________
`
`
`DECLARATION OF STANLEY SHANFIELD, PH.D.
`ON BEHALF OF PETITIONER
`
`
`CLAIMS 1-8
`
`
`
`IPR2024-00533
`Samsung Electronics Co. Ltd. et al v. Chien-Min Sung
`Samsung's Exhibit 1002
`Ex. 1002, Page 1
`
`

`

`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 8,974,270
`
`TABLE OF CONTENTS
`
`Page
`Introduction ...................................................................................................... 1
`
`
`
`I.
`
`II.
`
`Relevant Law ................................................................................................... 6
`
`A.
`
`B.
`
`C.
`
`Person of Ordinary Skill in the Art ....................................................... 6
`
`Claim Construction ............................................................................... 7
`
`Obviousness ........................................................................................... 7
`
`III.
`
`Summary of Opinions .................................................................................... 10
`
`IV. Technology Background ................................................................................ 10
`
`A.
`
`Chemical Mechanical Planarization (CMP) ........................................ 10
`
`V. Overview of the ’270 Patent .......................................................................... 15
`
`A.
`
`B.
`
`C.
`
`Summary of the ’270 Patent ................................................................ 15
`
`Summary of the Prosecution History of the ’270 Patent .................... 17
`
`Overview of IPR2014-01523 .............................................................. 20
`
`VI. Level of Ordinary Skill in the Art ................................................................. 20
`
`VII. Overview of the Primary Prior Art References ............................................. 21
`
`A. Overview of Chou ............................................................................... 21
`
`B.
`
`Overview of Sung’479 ........................................................................ 23
`
`VIII. Claim Construction ........................................................................................ 26
`
`A.
`
`B.
`
`C.
`
`“superabrasive” ................................................................................... 27
`
`“protrusion” ......................................................................................... 27
`
`“sharp portion” .................................................................................... 27
`i
`
`
`Ex. 1002, Page 2
`
`

`

`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 8,974,270
`
`
`
`
`“attitude” ............................................................................................. 28
`
`D.
`
`IX. Specific Invalidity Grounds ........................................................................... 28
`
`A. Ground I: Chou in Combination with Sung’479 Renders Obvious
`Claims 1 And 3-8 ................................................................................ 28
`
`1.
`
`2.
`
`3.
`
`Independent Claim 1 ................................................................. 29
`
`Dependent Claims 3 and 4 ........................................................ 53
`
`Dependent Claims 5-8 ............................................................... 54
`
`Ground II: Chou in Combination with Sung’479 and SungECS
`Renders Obvious Claims 6-7 ............................................................... 56
`
`1.
`
`Dependent Claims 6-7 ............................................................... 56
`
`Ground III: Chou in Combination with Sung’479 and Goers
`Renders Obvious Claim 2 ................................................................... 62
`
`B.
`
`C.
`
`X. Availability for Cross-Examination .............................................................. 66
`
`XI. Right to Supplement ...................................................................................... 66
`
`XII. Jurat ................................................................................................................ 66
`
`ii
`
`
`Ex. 1002, Page 3
`
`

`

`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 8,974,270
`
`I, Stanley Shanfield, declare as follows.
`
`I.
`
`Introduction
`
`1.
`
`2.
`
`My Name is Stanley Shanfield.
`
`I received a B.S. Degree in Physics cum laude from University of
`
`California, Irvine in 1977. I received a Ph.D. in Physics from Massachusetts
`
`Institute of Technology in 1981.
`
`3.
`
`After obtaining my Ph.D. in 1981, I was a Staff Scientist at Spire
`
`Corporation in Bedford, Massachusetts. From 1985-1999, I worked at Raytheon
`
`Corporation. As staff and later as section manager, among many other projects, I
`
`developed reactive ion etching (RIE) processes for patterning dielectrics (silicon
`
`dioxide, silicon nitride, silicon oxynitride, etc.), conductive layers (aluminum-
`
`copper, copper-silicon, W-silicide, TaN, doped polysilicon, etc.) and organic layers
`
`(photoresist, polyimide, etc.). In 1996, I became the Manager of Semiconductor
`
`Operations at Raytheon. As Manager, I built and led a 300 employee, $60 million
`
`revenue-generating semiconductor development, commercial system design, and
`
`electronic module manufacturing operation. I worked directly with engineers in the
`
`selection, installation, and optimization of several chemo-mechanical polishing
`
`systems (CMP), including analysis of operational maintenance and performance
`
`monitoring. The manufacturing facility eventually used multiple production CMP
`
`1
`
`Ex. 1002, Page 4
`
`

`

`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 8,974,270
`
`systems, and I directly participated in establishing the required metrology (optical
`
`thickness monitoring) for maintaining polishing uniformity standards.
`
`4.
`
`In 1999, I was a co-founder and became Vice President of Operations
`
`at AXSUN Technologies in Bedford/Billerica, Massachusetts and later became
`
`Director of Manufacturing and Wafer Fab Technology.
`
`5.
`
`In 2003, I joined the Draper Laboratory in Cambridge, Massachusetts.
`
`Currently, I am the Division Leader of Advanced Hardware Development, with
`
`around 80 staff members; a Distinguished Member of Technical Staff; and
`
`Technical Director. I led the Advanced Hardware Development division in
`
`relaunching a multi-chip integrated circuit module facility. The laboratory has
`
`acquired several semiconductor-grade CMP systems for the purpose of fabricating
`
`multi-chip modules and for planarization operations in MEMS devices, and I have
`
`been involved in their operation and optimization. I invented and led the
`
`implementation of an ultra-miniature electronics fabrication technology. I also
`
`developed fabrication technology for semiconductor-based low phase noise
`
`oscillator design. I have received many awards at Draper, including the 2010
`
`Distinguished Performance Award and the 2010 Best Patent Award.
`
`6.
`
`I have nearly four decades of extensive experience working on and
`
`with semiconductors.
`
`2
`
`Ex. 1002, Page 5
`
`

`

`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 8,974,270
`
`
`
`I have authored over 25 publications in peer-reviewed academic
`
`7.
`
`
`
`journals, transactions and books.
`
`8.
`
`9.
`
`I am a named inventor in six issued U.S. patents.
`
`I am a member of multiple societies, including the IEEE and the
`
`American Physical Society (APS).
`
`10. A copy of my curriculum vitae (“CV”) is attached as Appendix A.
`
`11.
`
`I am familiar with the technology of U.S. Patent No. 8,974,270 (the
`
`“’270 Patent”).
`
`12.
`
`I am familiar with the knowledge and capabilities of a person of
`
`ordinary skill in the art the time of the earliest possible priority date of the ’270
`
`Patent – May 23, 2011.
`
`13.
`
`I understand that the ’270 Patent was filed on May 23, 2012, as a U.S.
`
`Patent Application No. 13/479,148. I understand that this application claims
`
`priority to a U.S. Provisional Patent Application No. 61/489,074, filed May 23,
`
`2011.
`
`14.
`
`I have reviewed the following references in preparing this declaration,
`
`all of which I understand to be prior art to the ’270 Patent:
`
` U.S. Patent Application Publication No. 2010/0022174 (“Chou”)
`
`(EX1004), which published on January 28, 2010;
`
`3
`
`
`Ex. 1002, Page 6
`
`

`

`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 8,974,270
`
`
`
` U.S. Patent Application Publication No. 2008/0096479 (“Sung’479”)
`
`
`
`(EX1005), which published on April 24, 2008;
`
` U.S. Patent Application Publication No. 2008/0004743 (“Goers”)
`
`(EX1006), which first published on January 3, 2008;
`
` Sung et al. “Polycrystalline Diamond (PCD) Shaving Dresser: The
`
`Ultimate Diamond Disk (UDD) for CMP Pad Conditioning,” ECS
`
`Transactions, 18 (1) 523-528 (2009) (“SungECS”) (EX1007), which
`
`became publicly available at least on March 6, 2009.
`
`15.
`
`I have considered the following exhibits listed below in preparing this
`
`Declaration. In addition, I have reviewed and considered all other documents
`
`mentioned in my Declaration. My opinions are based on my personal knowledge of
`
`these documents as viewed from the lens of a person of ordinary skill in the art,
`
`which I am familiar with based on my technical education, training, and experience
`
`in the field.
`
`Exhibit No.
`1001
`1003
`1004
`1005
`
`1006
`1007
`
`1008
`
`DESCRIPTION
`U.S. Patent No. 8,974,270 (“’270 Patent”)
`File History of the ’270 Patent
`U.S. Patent Application Publication No. 2010/0022174 (“Chou”)
`U.S. Patent Application Publication No. 2008/0096479
`(“Sung’479”)
`U.S. Patent Application Publication No. 2008/0004743 (“Goers”)
`Sung et al. “Polycrystalline Diamond (PCD) Shaving Dresser: The
`Ultimate Diamond Disk (UDD) for CMP Pad Conditioning,” ECS
`Transactions, 18 (1) 523-528 (2009) (“SungECS”)
`U.S. Patent No. 5,036,015
`4
`
`
`Ex. 1002, Page 7
`
`

`

`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 8,974,270
`
`
`Exhibit No.
`1009
`
`
`
`
`DESCRIPTION
`Ishizuka et al. “PCD Dressers for Chemical Mechanical
`Planarization with Uniform Polishing” Proceedings of International
`Conference on Leading Edge Manufacturing in 21st Century:
`LEM21, 2007, Volume 2007.4
`U.S. Patent Application Publication No. 2003/0084894
`U.S. Patent No. 7,741,764
`Tsai et al., “Effect of CMP conditioner diamond shape on pad
`topography and oxide wafer performances,” Int. J. Adv. Manuf.
`Technology, 55: 253-262 (2011)
`Fenna, Donald. “Hardness Numbers,” A Dictionary of Weights,
`Measures, and Units, 1st ed., Oxford University Press, 2004.
`I have additionally reviewed Petition and the Final Written Decision
`
`1010
`1011
`1013
`
`1014
`
`16.
`
`in IPR2014-01523.
`
`17.
`
`I have been retained to serve as an expert for Samsung Electronics Co.
`
`Ltd., Samsung Electronics America, Inc., Samsung Semiconductor, Inc., and
`
`Samsung Austin Semiconductor, LLC (which I will collectively refer to as
`
`“Samsung”) in the field of semiconductor integrated circuit processing and
`
`fabrication.
`
`18.
`
`I am being compensated at my usual hourly rate of $460, and the
`
`conclusions or opinions that I reach and express in my declaration have no bearing
`
`on my compensation.
`
`19.
`
`I do not have any financial interest in the outcome of this case nor do I
`
`have any financial interest in Samsung.
`
`5
`
`
`Ex. 1002, Page 8
`
`

`

`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 8,974,270
`
`
`
`
`I do not personally know Dr. Chien-Min Sung and have never had any
`
`20.
`
`personal contact with him.
`
`II. Relevant Law
`
`21. Counsel has informed me about the following aspects of patent law,
`
`which I have applied in my analysis and conclusions.
`
`A.
`
`22.
`
`Person of Ordinary Skill in the Art
`
`I have been informed and understand that a patent should be analyzed
`
`within the framework of a person of ordinary skill in the art (“POSITA”), which is
`
`a hypothetical individual. I have been told to assume that a POSITA would have
`
`been knowledgeable about the prior art that was publicly accessible at the time of
`
`the priority date of the patent. Here, the ’270 Patent claims priority to a provisional
`
`application, which was filed on May 23, 2011.
`
`23.
`
`I have also been informed that factors considered in determining a
`
`level of POSITA include (1) sophistication of the technology, (2) challenges and
`
`types of problems faced within the field, (3) solutions to these problems known at
`
`the priority date of the patent, (4) levels of education of professionals actively
`
`working in the field, including that of the named inventor, (5) types of testing
`
`described in the patent and the requisite skills needed to perform those tests, and
`
`(6) the general state of the technology overall.
`
`6
`
`
`Ex. 1002, Page 9
`
`

`

`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 8,974,270
`
`
`
`
`I have been informed that a POSITA is a person of ordinary creativity.
`
`24.
`
`A POSITA is not an automaton and would be able to consider and put together
`
`teachings from multiple prior art references.
`
`B. Claim Construction
`
`25.
`
`I have been informed that to determine the meaning of the terms in the
`
`claims of the ’270 Patent for the purposes of the inter partes review, one should
`
`generally use the ordinary and customary meaning as understood by a POSITA at
`
`the time of the claimed priority date, taking into consideration the claim language
`
`and patent specification.
`
`26.
`
`I have been informed that a patentee can include a definition of a
`
`claim term in the specification. In such instances, I understand that the claim
`
`should generally be interpreted according to that definition provided in the patent.
`
`27.
`
`I have been informed that the patent’s claims, specification, and the
`
`file history (EX1003) should be analyzed to arrive at the proper interpretation of a
`
`claim term.
`
`C. Obviousness
`
`28.
`
`I have been informed that a claim can be found unpatentable based on
`
`obviousness if a prior art reference, either alone or in combination with other prior
`
`art reference(s), teaches or suggests the claims.
`
`7
`
`
`Ex. 1002, Page 10
`
`

`

`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 8,974,270
`
`
`
`I further understand that drawings and pictures can teach a claim
`
`29.
`
`
`
`limitation if they clearly show what is claimed.
`
`30.
`
`I further understand that a claim limitation that covers a broad range
`
`can be taught by a prior art that teaches a specific value (or a smaller range) within
`
`that claimed range.
`
`31.
`
`I further understand that a claim limitation that covers a range can be
`
`taught or rendered obvious by a prior art that teaches a range that overlaps with the
`
`claimed range, if the claimed range does not demonstrate any criticality, such as by
`
`demonstrating unexpectedly superior results.
`
`32.
`
`I have been informed and understand that a patent claim is considered
`
`obvious to a POSITA in view of a single or multiple references if the differences
`
`between the subject matter in the prior art and the subject matter in the claim
`
`would have been obvious to a POSITA before the priority date of the patent.
`
`Therefore, I understand that the challenged claims of the patent should be read
`
`from the point of view of a POSITA. For example, I have been informed that a
`
`claim would have been found unpatentable for being obvious if a POSITA would
`
`have been motivated to combine the teachings of two or more prior art references
`
`to achieve the claimed subject matter, and the POSITA would have had a
`
`reasonable expectation of success to do so.
`
`8
`
`
`Ex. 1002, Page 11
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`

`

`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 8,974,270
`
`
`33.
`
`
`I have been informed that in an inter partes review, the Patent Trial
`
`
`
`and Appeal Board (the “Board”) evaluates obviousness of a claim under a
`
`preponderance of the evidence standard, which means that the Board determines
`
`that a claim is unpatentable for being obvious when the claim is more likely
`
`obvious than nonobvious.
`
`34.
`
`I have been informed that the Supreme Court has held that the
`
`combination of known elements combined according to known methods that
`
`produces nothing more than predictable results is likely obvious. Additionally, I
`
`have been informed that the Supreme Court indicated that obviousness may be
`
`found if:
`
` there is some teaching, suggestion, or motivation in the prior art that
`
`would have led a POSITA to combine prior art reference teachings or
`
`modify the prior art to arrive at the claims;
`
` the modification is a combination of prior art elements according to
`
`known methods yields predictable results;
`
` the combination of prior art is a simple substitution of one known
`
`element for another to obtain predictable results;
`
` the combination of prior art elements is an application of a known
`
`technique to a known device (or method) ready for improvement to
`
`yield predictable results;
`
`9
`
`
`Ex. 1002, Page 12
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`

`

`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 8,974,270
`
`
`
`
` the changed element(s) represent one of a finite number of identified,
`
`predictable solutions, and a POSITA would have a reasonable
`
`expectation of success that such modification would work.
`
`35.
`
`I have been informed that an obviousness determination cannot be
`
`based on the benefit of hindsight gained from the patent under consideration.
`
`Therefore, the patent’s claim or its description of the claimed subject matter cannot
`
`be used as a roadmap in considering combinations of prior art references.
`
`III. Summary of Opinions
`
`36. For the reasons explained below, I conclude that claims 1-8 of the
`
`’270 Patent are rendered obvious by the prior art.
`
`Grounds
`I
`
`Claims
`1, 3-8
`
`Statutory Ground
`35 U.S.C. §103
`
`II
`
`III
`
`6-7
`
`2
`
`35 U.S.C. §103
`
`35 U.S.C. §103
`
`IV. Technology Background
`
`Prior Art References
`Chou in combination with
`Sung’479
`Chou in combination with
`Sung’479 and SungECS
`Chou in combination with
`Sung’479 and Goers
`
`A. Chemical Mechanical Planarization (CMP)
`
`37. Chemical Mechanical Planarization or Polishing (“CMP”) is a
`
`common, widely-used process that has been around since the late 1980s/early
`
`1990s. A typical setup for this process is shown in the Figure below. The
`
`semiconductor wafer (labeled “wafer” in the Figure) is pressed against a rotating
`
`10
`
`
`Ex. 1002, Page 13
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`

`

`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 8,974,270
`
`
`polishing pad, also known as a CMP pad. Additionally, a chemical slurry is
`
`
`
`introduced onto the polishing pad. EX1009, FIG. 2. See also EX1008, 1:13-48;
`
`EX1009, 1:17-28.
`
`
`
`EX1009, FIG. 2.
`
`38. The chemical slurry typically includes abrasive particles that assist in
`
`polishing the wafer surface. EX1005, [0002]. Examples of such abrasives include
`
`ceria, alumina and silica. EX1009, 1:28-29; EX1008, 1:22-24. The slurry also
`
`often includes additional agents that oxidize the wafer surface. Examples of such
`
`oxidizing agents include, e.g., hydrogen peroxide. EX1009, 1:22-24.
`
`11
`
`
`Ex. 1002, Page 14
`
`

`

`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 8,974,270
`
`
`
`39. The rotating polishing pad is typically made from a soft polymer. The
`
`
`
`most common polymer used for the polishing pad is polyurethane. EX1008, 1:44-
`
`46; EX1009, 1:17-18. The polishing pad can hold the slurry and polish the wafer
`
`because it contains small, micron-sized asperities on its surface. The more it is
`
`used to polish a wafer, the more wear and tear (and other factors) on the pad dulls
`
`the asperities, decreasing the CMP pad’s performance. Therefore, the pad must be
`
`reconditioned by regenerating the asperities for optimal and consistent wafer-
`
`polishing performance. EX1005, [0004].
`
`40. As schematically illustrated below, CMP pad dressers, which are also
`
`commonly called “pad conditioners,” “diamond dressers,” or “diamond
`
`conditioners,” condition CMP pads. CMP pad dressers contain superabrasive
`
`particles (most commonly diamond particles) that protrude from the surface, and
`
`can cut the surface of the CMP pad as the pad dresser is rotated against the pad to
`
`generate new asperities. EX1005, [0004].
`
`12
`
`
`Ex. 1002, Page 15
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`

`

`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 8,974,270
`
`
`
`
`41.
`
`In the SEM image below, a new CMP pad with closed pores is shown
`
`in Fig. 14a. In Figs. 14d and e, the CMP pad has been conditioned by a DiaGrid®
`
`CMP pad dresser and the asperities have been generated.
`
`
`
`
`
`
`
`EX1013, Fig. 14.
`
`13
`
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`Ex. 1002, Page 16
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`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 8,974,270
`
`
`
`42. A conventional circular CMP pad dresser disk having diamond
`
`particles covering at least a portion of the disk is shown below.
`
`
`
`
`
`EX1013, Fig. 3.
`
`43. The diamond particles (sometimes called “grits”) can be arranged in a
`
`regular pattern with regular spacing between the diamonds, as they are in Fig. 3 of
`
`EX1013. In the above example of a DiaGrid® CMP pad dresser, the diamond
`
`particles are arranged in a grid with an inter-diamond spacing of 500 microns. See
`
`EX1013, 255, Fig. 3 (reproduced above).
`
`44. CMP pad conditioners typically have thousands of superabrasive
`
`particles. For example, the DiaGrid® CMP pad dresser shown in Fig. 3 of EX1013
`
`(reproduced above) has approximately 12,000 diamond particles across the surface
`
`of the dresser. EX1013, Fig. 3, 258 (“DG contained approximately 12,000
`
`diamond grits…”).
`
`14
`
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`Ex. 1002, Page 17
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`

`

`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 8,974,270
`
`
`
`45. At the time of the ’270 Patent, there were multiple known CMP pad
`
`
`
`dresser fabrication methods. One such method of attaching superabrasive particles
`
`to the surface of the pad dresser is called “brazing.” Brazing involves chemically
`
`bonding the superabrasive particles to an underlying substrate using a metal alloy
`
`and heat. EX1010, [0077]-[0078].
`
`46. Because brazing involves heating and cooling, warpage can occur
`
`during fabrication, which is undesirable. Various techniques can be used to reduce
`
`the warpage of the dresser during brazing, in turn allowing better control and better
`
`leveling of the superabrasive particles. For example, the superabrasive particles
`
`can be distributed on both sides of the CMP pad dresser to prevent uneven warpage
`
`caused by shrinkage. EX1004, [0009]. Additionally, alloys with low melting points
`
`can be used for brazing to reduce the warpage of the dresser. EX1005, [0050].
`
`V. Overview of the ’270 Patent
`A.
`
`Summary of the ’270 Patent
`
`47.
`
`I have reviewed the ’270 Patent’s specification and claims. See
`
`EX1001, EX1003.
`
`48. The ’270 Patent describes CMP pad dressers with superabrasive
`
`particles. See EX1001, Abstract. The ’270 Patent describes forming flat CMP pad
`
`dressers with reduced warpage. See EX1001, 6:55-7:7.
`
`15
`
`
`Ex. 1002, Page 18
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`

`

`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 8,974,270
`
`
`
`49. The ’270 Patent describes a CMP pad dresser with two monolayers of
`
`
`
`superabrasive particles. In FIG. 3 below, the first and second monolayers of
`
`superabrasive particles 32 and 36 are attached to both sides of a metal support
`
`layer 34 using a bonding material 38. According to the ’270 Patent, attaching the
`
`particles to both sides of the metal support layer 34 creates “symmetrical forces” to
`
`reduce the warpage of the CMP pad dresser. See EX1001, 2:11-26, 11:39-51. The
`
`claims specify certain protrusion height differences between the various highest,
`
`second highest, 10th highest, and 100th highest protruding tips.
`
`EX1001, FIG. 3 (annotated).
`
`50. Moreover, as shown in FIG. 5 below, the ’270 Patent describes a rigid
`
`support substrate 58 coupled to the second monolayer of superabrasive particles
`
`56. See EX1001, 13:9-10.
`
`
`
`16
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`Ex. 1002, Page 19
`
`

`

`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 8,974,270
`
`
`
`
`
`
`
`
`EX1001, FIG. 5 (annotated).
`
`B.
`
`51.
`
`Summary of the Prosecution History of the ’270 Patent
`
`I have reviewed the file history of the ’270 Patent, which I summarize
`
`below. See EX1003.
`
`52. The application for the ’270 Patent was filed on May 23, 2012. The
`
`application claimed priority to U.S. Provisional Application No. 61/489,074, filed
`
`May 23, 2011. See EX1001, Cover; EX1003, 1-2.
`
`53. The application for the ’270 Patent originally included claims 1-27.
`
`EX1003, 29-33.
`
`54.
`
`In an Office Action dated May 15, 2014, claims 1-9, 14-15, 20, and
`
`25-27 were rejected under 35 U.S.C. §§102 and 103 as unpatentable over Dinh-
`
`Ngoc (US2010/0248595), Goers’553 (US 7,198,553), and Telesin (US 5,380,390).
`
`EX1003, 207-213. I have read each of these references and it is my opinion that
`
`these references have substantially different teachings that Chou, Sung’479, and
`
`SungECS that I rely on in my declaration.
`17
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`Ex. 1002, Page 20
`
`

`

`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 8,974,270
`
`
`
`55. Additionally, claims 10, 14-23, and 25-26 received non-statutory
`
`
`
`obviousness-type double patenting rejection over claims 1, 12-18, and 20-21 of co-
`
`pending U.S. Application No. 13/239,198. EX1003, 214-215. This application later
`
`issued as U.S. 8,777,699 (“the ’699 Patent).
`
`56.
`
`In response to these rejections, the Applicant rewrote claim 10 (which
`
`later issued as claim 1) into independent form and amended claims 7-9 to depend
`
`from claim 10. The Applicant also added a new claim 28, also depending from
`
`claim 10. Claims 1-6 and 14-27 were canceled. EX1003, 1027-1032.
`
`57. The ’270 Patent issued on March 10, 2015. EX1003, 1371, EX1001,
`
`Cover.
`
`58.
`
`I have compared claim 1 of the ’270 Patent with claim 1 of the ’699
`
`Patent, and believe they are substantially similar to each other, except that claim 1
`
`of the ’270 Patent adds one additional limitation.
`
`59. Specifically, in the Table below, I listed claim 1 of the ’270 Patent
`
`and claim 1 of the ’699 Patent side-by-side matching up the limitations that I
`
`consider to be substantially similar to each other. I further noted any differences in
`
`the claim language using bolded italics. As seen from the Table, the claim
`
`language is strikingly similar.
`
`18
`
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`Ex. 1002, Page 21
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`

`

`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 8,974,270
`
`
`Claim 1 of the ’270 Patent
`A CMP pad dresser, comprising:
`
`
`
`a first monolayer of superabrasive
`particles disposed on and protruding
`from one side of a metal support layer,
`wherein the difference in protrusion
`distance
`between
`the
`highest
`protruding tip and the second highest
`protruding tip of the monolayer of
`superabrasive particles is less than or
`equal to about 50 microns;
`a second monolayer of superabrasive
`particles disposed on the metal support
`layer on an opposite side from the first
`monolayer,
`wherein the superabrasive particles of
`the second monolayer are positioned to
`have substantially the same distribution
`as the superabrasive particles of the first
`monolayer; and
`a rigid support coupled to the second
`monolayer of superabrasive particles
`opposite the first monolayer.
`
`
`
`Claim 1 of the ’699 Patent
`A CMP pad dresser, comprising:
`
`a first monolayer of superabrasive
`particles disposed on and coupled to one
`side of a metal support layer; and
`
`
`a second monolayer of superabrasive
`particles disposed on and coupled to the
`metal support layer on an opposite side
`from the first monolayer,
`wherein the superabrasive particles of
`the second monolayer are positioned to
`have substantially the same distribution
`as the superabrasive particles of the first
`monolayer; and further comprising
`a rigid support coupled to the second
`monolayer of superabrasive particles
`opposite the first monolayer.
`
`19
`
`
`Ex. 1002, Page 22
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`

`

`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 8,974,270
`
`
`
`C. Overview of IPR2014-01523
`60.
`I have also been asked to review IPR2014-01523, where Kinik
`
`
`
`company successfully challenged the patentability of the ’699 Patent. Specifically,
`
`I reviewed the Petition and the Final Written Decision in IPR2014-01523. In this
`
`proceeding the Board found that claims 1-12 and 17-19 of the ’699 Patent were
`
`unpatentable. See Kinik Co. v. Chien-Min Sung, IPR2014-01523 (“’699 Kinik
`
`IPR”), Paper 26.
`
`61.
`
`In particular, the Board found that “claims 1-3, 5, 6, 8-12, and 17-19
`
`are anticipated by Chou.” Id, 23.
`
`VI. Level of Ordinary Skill in the Art
`
`62. As I noted above in Paragraph 22, I have been informed by counsel
`
`that that a patent and the prior art should be analyzed within the framework of a
`
`POSITA.
`
`63.
`
`In my opinion, a POSITA as of the earliest claimed filing date of the
`
`’270 Patent (i.e., May 23, 2011) would have had a bachelor’s degree in an
`
`engineering related field, such as material science, mechanical engineering,
`
`electrical engineering, or physics, and a minimum of two to three years of
`
`experience in the field of integrated circuit processing and fabrication techniques. I
`
`note that a higher level of education or specific skills in the industry may make up
`
`for less experience, and vice versa.
`
`20
`
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`Ex. 1002, Page 23
`
`

`

`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 8,974,270
`
`
`64.
`
`
`I met and/or exceeded these requirements for POSITA as of May 23,
`
`
`
`2011, for at least the reasons provided above in Section I.
`
`VII. Overview of the Primary Prior Art References
`A. Overview of Chou
`
`65. Chou is a U.S. Patent Application Publication published on January
`
`28, 2010. EX1004, Cover. I understand that Chou is prior art to the ’270 Patent.
`
`66. Chou describes a “grinding plate” having “a soft substrate having a
`
`working surface and a non-working surface; and a plurality of abrasive particles
`
`distributed over the working surface of the soft substrate.” EX1004, [0009].
`
`67. As shown in FIG. 5D below, Chou explains, “the soft substrate 231 is
`
`a metal, and the abrasive particles 232 are diamond particles.” EX1004, [0058].
`
`68. Chou secures the superabrasive particles 232 to the metal support 231
`
`by brazing. See EX1004, [0031] (“Herein, the grinding plate 230 comprises … a
`
`plurality of abrasive particles 232 formed on the working surface 231a of the soft
`
`substrate 231 by brazing.”).
`
`21
`
`
`Ex. 1002, Page 24
`
`

`

`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 8,974,270
`
`
`
`
`
`
`
`
`EX1004, FIG. 5D (annotated).
`
`69. Chou uses two monolayers of superabrasive particles to prevent
`
`deformation of the abrasive tool, specifically warping caused by the difference of
`
`shrinkage of the opposite surfaces of the tool. EX1004, [0054] (“In the present
`
`embodiment, the deformation resulting from the difference of shrinkage between
`
`the two surfaces of the soft substrate can be inhibited since both surfaces of the soft
`
`substrate 231 have abrasive particles 232 and a combining layer 233 thereon.”),
`
`[0009]. Chou explains that “[g]rinding and polishing are ultra-precision machining
`
`technologies with the ability to make the surface of a workpiece have acceptable
`
`smoothness and flatness. … Thereby, it is an important issue to develop various
`
`grinding tools that can meet process requirements.” EX1004, [0004]-[0005].
`
`70. Chou couples the second monolayer of superabrasive particles 232 to
`
`the epoxy resin 240 and a rigid stainless steel support substrate 250, as shown
`
`22
`
`
`Ex. 1002, Page 25
`
`

`

`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 8,974,270
`
`
`above in FIG. 5D. EX1004, [0056] (“Then, a backplane 250 is disposed on the
`
`
`
`surface of the adhesive layer 240, and the adhesive layer 240 is cured by a heating
`
`process so as to retain the backplane 250 on the non-working surface of the
`
`grinding plate 530.”).
`
`71. As explained by Chou, this method of fabricating abrasive tools
`
`allows for precise height control of the superabrasive particles. This enhances the
`
`precision of the tool by enabling each superabrasive particle to participate in the
`
`tool’s function (e.g., polishing a CMP pad). EX1004, [0024] (“Accordingly, by the
`
`method for fabricating a grinding tool according to the present invention, the
`
`height of the abrasive particles can be precisely controlled, and thereby each of the
`
`abrasive particles can efficiently perform machining so as to enhance the
`
`machining efficiency and precision of the grinding tool.”), [0017], [0032], [0037],