Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 9,138,862
`
`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 IPR2024-00534
`U.S. Patent No. 9,138,862
`__________________
`
`DECLARATION OF STANLEY SHANFIELD, PH.D.
`ON BEHALF OF PETITIONER
`
`CLAIMS 1-20
`
`IPR2024-00534
`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. 9,138,862
`
`
`
`TABLE OF CONTENTS
`
`Page
`Introduction ................................................................................................................ 1
`
`I.
`
`Relevant Law ................................................................................................... 6
`
`A.
`
`B.
`
`Person of Ordinary Skill in the Art ....................................................... 6
`
`Claim Construction................................................................................ 7
`
`C. Anticipation ........................................................................................... 8
`
`D. Obviousness ........................................................................................... 9
`
`II.
`
`Summary of Opinions .................................................................................... 11
`
`III. Technology Background ................................................................................ 11
`
`A.
`
`Chemical Mechanical Planarization (CMP) ........................................ 11
`
`IV. Overview of the ’862 Patent .......................................................................... 19
`
`A.
`
`B.
`
`Summary of the ’862 Patent ................................................................ 19
`
`Summary of the Prosecution History of the ’862 Patent .................... 21
`
`V.
`
`Level of Ordinary Skill in the Art ................................................................. 22
`
`VI. Overview of the Primary Prior Art References ............................................. 23
`
`A. Overview of Sung’026 ........................................................................ 23
`
`B. Overview of SungICPT ....................................................................... 26
`
`VII. Claim Construction ........................................................................................ 28
`
`A.
`
`B.
`
`C.
`
`“dresser” .............................................................................................. 28
`
`“superabrasive” ................................................................................... 28
`
`“particles” ............................................................................................ 29
`i
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`Ex. 1002, Page 2
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`

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`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 9,138,862
`
`
`
`
`“protrusion” ......................................................................................... 29
`
`D.
`
`E.
`
`F.
`
`G.
`
`“peripheral location” ........................................................................... 29
`
`“substantially” ..................................................................................... 30
`
`“about” ................................................................................................. 30
`
`VIII. Specific Invalidity Grounds ........................................................................... 30
`
`A. Ground I: Sung’026 Anticipates or Sung’026 Renders Obvious
`Claims 1-6, 9-12, and 20 ..................................................................... 30
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`Independent Claim 1 ................................................................. 31
`
`Dependent Claims 2-4 ............................................................... 41
`
`Dependent Claim 9.................................................................... 44
`
`Dependent Claim 5.................................................................... 50
`
`Dependent Claim 6.................................................................... 50
`
`Dependent Claim 10 ................................................................. 51
`
`Dependent Claim 11 ................................................................. 51
`
`Dependent Claim 12 ................................................................. 54
`
`Dependent Claim 20 ................................................................. 55
`
`B. Ground II: Sung’026 in Combination with SungICPT Renders
`Obvious Claims 5-10 ........................................................................... 55
`
`1.
`
`2.
`
`3.
`
`4.
`
`Dependent Claim 9.................................................................... 55
`
`Dependent Claim 5.................................................................... 58
`
`Dependent Claims 6-7 ............................................................... 59
`
`Dependent Claim 8.................................................................... 62
`
`ii
`
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`Ex. 1002, Page 3
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`

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`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 9,138,862
`
`
`
`
`Dependent Claim 10 ................................................................. 65
`
`5.
`
`C. Ground III: Sung’026 in Combination with Nishioka Renders
`Obvious Claims 13, and 17-19 ............................................................ 69
`
`1.
`
`2.
`
`Dependent Claim 13 ................................................................. 69
`
`Dependent Claims 17-19 ........................................................... 71
`
`D. Ground IV: Sung’026 in Combination with Lin Renders Obvious
`Claim 14 .............................................................................................. 74
`
`E.
`
`F.
`
`1.
`
`Dependent Claim 14 ................................................................. 74
`
`Ground V: Sung’026 in Combination with Kim Renders Obvious
`Claim 15 .............................................................................................. 76
`
`1.
`
`Dependent Claim 15 ................................................................. 76
`
`Ground VI: Sung’026 in Combination with Koyama Renders
`Obvious Claim 16 ................................................................................ 79
`
`1.
`
`Dependent Claim 16 ................................................................. 79
`
`IX. Availability for Cross-Examination .............................................................. 80
`
`X.
`
`Right to Supplement ...................................................................................... 80
`
`XI.
`
`Jurat ................................................................................................................ 81
`
`iii
`
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`Ex. 1002, Page 4
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`

`

`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 9,138,862
`
`I, Stanley Shanfield, declare as follows.
`
`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 5
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`

`

`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 9,138,862
`
`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 6
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`

`

`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 9,138,862
`
`
`
`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. 9,138,862 (the
`
`“’862 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 ’862
`
`Patent – May 23, 2011.
`
`13.
`
`I understand that the ’862 Patent was filed on March 13, 2013 as a
`
`U.S. Patent Application No. 13/802,112. I understand that this application is a
`
`continuation-in-part of U.S. 13/479,148 (now U.S. 8,974,270), which 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 ’862 Patent:
`
`• U.S. Patent Application Publication No. 2007/0060026 (“Sung’026”)
`
`(EX1004), which published on March 15, 2007;
`3
`
`
`Ex. 1002, Page 7
`
`

`

`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 9,138,862
`
`
`
`• The Organic Diamond Disk (ODD) for dressing of Polishing Pads of
`
`
`
`Chemical Mechanical Planarization,” International Conference on
`
`Planarization / CMP Technology, 25-27 October 2007 (“SungICPT”)
`
`(EX1005), which published/ was made publicly available at least
`
`since October 28, 2007;
`
`• U.S. Patent Application Publication No. 2008/0087644 (“Nishioka”)
`
`(EX1006), which published on April 17, 2008;
`
`• International Patent Application Publication WO 2008/049019
`
`(“Lin”) (EX1007), which published on April 24, 2008;
`
`• U.S. Patent Application Publication No. 2009/0001581 (“Kim”)
`
`(EX1008), which published on January 1, 2009;
`
`• U.S. Patent Application Publication No. 2009/0117692 (“Koyama”)
`
`(EX1009), which published on May 7, 2009.
`
`15.
`
`I provide below the list of exhibits that I have considered in preparing
`
`this Declaration. I have reviewed and considered the following exhibits and all
`
`other documents mentioned in my declaration. Additionally, my opinions are based
`
`on my technical education, training and experience in the field.
`
`Exhibit No.
`1001
`1003
`1004
`
`DESCRIPTION
`U.S. Patent No. 9,138,862 (“’862 Patent”)
`File History of the ’862 Patent
`U.S. Patent Application Publication No. 2007/0060026
`(“Sung’026”)
`
`4
`
`
`Ex. 1002, Page 8
`
`

`

`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 9,138,862
`
`
`Exhibit No.
`1005
`
`
`
`
`DESCRIPTION
`“The Organic Diamond Disk (ODD) for dressing of Polishing Pads
`of Chemical Mechanical Planarization,” International Conference
`on Planarization / CMP Technology, 25-27 October 2007
`(“SungICPT”)
`U.S. Patent Application Publication No. 2008/0087644
`(“Nishioka”)
`International Patent Application Publication No. WO 2008/049019
`(“Lin”)
`U.S. Patent Application Publication No. 2009/0001581 (“Kim”)
`U.S. Patent Application Publication No. 2009/0117692 (“Koyama”)
`U.S. Patent No. 5,036,015
`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. 2008/0292869 (Sung’869)
`Fenna, Donald. “Hardness Numbers,” A Dictionary of Weights,
`Measures, and Units, 1st ed., Oxford University Press, 2004.
`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)
`Pysher et al. “Design, Characteristics and Performance of Diamond
`Pad Conditioners”, Materials Research Society Symposium
`Procedures, Vol. 1249, 2010 (“Pysher”)
`Design, Characteristics and Performance of Diamond Pad
`Conditioners. SpringerLink.
`https://link.springer.com/article/10.1557/PROC-1249-E02-04
`Exhibit 4 of Complaint in Sung v. Samsung Electronics Co., Ltd. et
`al, 4-23-cv-00752
`
`1006
`
`1007
`
`1008
`1009
`1010
`1011
`
`1012
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`
`
`16.
`
`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
`
`5
`
`
`Ex. 1002, Page 9
`
`

`

`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 9,138,862
`
`
`“Samsung”) in the field of semiconductor integrated circuit processing and
`
`
`
`fabrication.
`
`17.
`
`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.
`
`18.
`
`I do not have any financial interest in the outcome of this case nor do I
`
`have any financial interest in Samsung.
`
`19.
`
`I do not personally know Dr. Chien-Min Sung and have never had any
`
`personal contact with him.
`
`I.
`
`Relevant Law
`
`20. Counsel has informed me about the following aspects of patent law,
`
`which I have applied in my analysis and conclusions.
`
`A.
`
`21.
`
`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 claimed priority date of the ’862 Patent is
`
`May 23, 2011.
`
`6
`
`
`Ex. 1002, Page 10
`
`

`

`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 9,138,862
`
`
`22.
`
`
`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.
`
`23.
`
`I have been informed that a POSITA is a person of ordinary creativity.
`
`A POSITA is not an automaton and would be able to consider and put together
`
`teachings from multiple prior art references.
`
`B. Claim Construction
`
`24.
`
`I have been informed that to determine the meaning of the terms in the
`
`claims of the ’862 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.
`
`25.
`
`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.
`
`7
`
`
`Ex. 1002, Page 11
`
`

`

`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 9,138,862
`
`
`26.
`
`
`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. Anticipation
`
`27.
`
`I have been informed and understand a patent claim is considered
`
`“anticipated” by the prior art when each and every of the claims is found, within a
`
`single prior art reference either expressly or inherently, meaning the wording in a
`
`prior art reference does not need to match the claim. I understand that a reference
`
`is anticipatory if a POSITA, upon reviewing this single reference, would have been
`
`able to make and use the technology described in the reference in the manner
`
`claimed.
`
`28.
`
`I further understand that a claim limitation that covers a range can be
`
`anticipated by a prior art reference that teaches a specific value (or a smaller range)
`
`within that claimed range. I further understand that a description of a single
`
`embodiment of broadly claimed subject matter can anticipate a claim. I further
`
`understand that a range disclosed in the prior art that overlaps with a claimed range
`
`may anticipate that claimed range if there is no criticality to the claimed range.
`
`29.
`
`I further understand that drawings and pictures can teach a claim
`
`limitation if they clearly show the structure that is claimed.
`
`8
`
`
`Ex. 1002, Page 12
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`

`

`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 9,138,862
`
`
`D. Obviousness
`
`
`
`
`
`30.
`
`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.
`
`31.
`
`I further understand that a claim limitation that covers a range can be
`
`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.
`
`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
`
`9
`
`
`Ex. 1002, Page 13
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`

`

`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 9,138,862
`
`
`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;
`
`• the changed element(s) represent one of a finite number of identified,
`
`predictable solutions, and a POSITA would have a reasonable
`10
`
`
`Ex. 1002, Page 14
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`

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`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 9,138,862
`
`
`
`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.
`
`II.
`
`Summary of Opinions
`
`36. For the reasons explained below, I conclude that claims 1-20 of the
`
`’862 Patent are anticipated and rendered obvious by the prior art.
`
`Grounds
`I
`II
`
`Claims
`1-6, 9-12, 20
`5-10
`
`13, 17-19
`
`14
`
`15
`
`16
`
`III
`
`IV
`
`V
`
`VI
`
`
`
`35 U.S.C. §103
`
`35 U.S.C. §103
`
`Prior Art Reference(s)
`Statutory Ground
`35 U.S.C. §102/§103 Sung’026
`35 U.S.C. §103
`Sung’026 in combination
`with SungICPT
`Sung’026 in combination
`with Nishioka
`Sung’026 in combination
`with Lin
`Sung’026 in combination
`with Kim
`Sung’026 in combination
`with Koyama
`
`35 U.S.C. §103
`
`35 U.S.C. §103
`
`III. Technology Background
`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
`
`11
`
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`Ex. 1002, Page 15
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`

`

`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 9,138,862
`
`
`semiconductor wafer (labeled “wafer” in the Figure) is pressed against a rotating
`
`
`
`polishing pad, also known as a CMP pad. Additionally, a chemical slurry is
`
`introduced onto the polishing pad. EX1011, Fig. 2. See also EX1011, 1:17-28,
`
`EX1010, 1:13-48.
`
`
`
`EX1011, Fig. 2.
`
`38. The chemical slurry typically includes abrasive particles that assist in
`
`polishing the wafer surface. EX1004, [0002]; EX1006, [0055]; EX1011, 1:19-24.
`
`Examples of such abrasives include alumina and silica, and ceria. EX1006, [0066];
`
`EX1011, 1:22-23. The slurry also often includes additional agents that oxidize the
`
`12
`
`
`Ex. 1002, Page 16
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`

`

`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 9,138,862
`
`
`
`wafer surface. Examples of such oxidizing agents include, e.g., hydrogen peroxide.
`
`EX1006, [0063]; EX1011, 1:22-24.
`
`39. The rotating polishing pad is typically made from a soft polymer. The
`
`most common polymer used for the polishing pad is polyurethane. EX1004,
`
`[0002]; EX1006, [0090]; EX1011, 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. EX1004, [0004]-[0006]; EX1011,
`
`2:7-11.
`
`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. EX1004, [0004]-[0005].
`
`13
`
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`Ex. 1002, Page 17
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`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 9,138,862
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`41.
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`In the SEM image below, a new CMP pad with closed pores is shown
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`in Fig. 14a. In Figs. 14d and e, the CMP pad has been conditioned by a DiaGrid®
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`CMP pad dresser and the asperities have been generated.
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`EX1014, Fig. 14.
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`Ex. 1002, Page 18
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`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 9,138,862
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`42. A conventional CMP pad dresser is a circular disk with diamond
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`particles covering at least a portion of the disk, as shown below.
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`EX1014, Fig. 3.
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`43. The diamond particles (sometimes called “grits”) can be arranged in a
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`regular pattern with regular spacing between the diamonds, as they are in Fig. 3. In
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`the above example of a DiaGrid® CMP pad dresser, the diamond particles are
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`arranged in a grid with an inter-diamond spacing of 500 microns. See EX1014,
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`255, Fig. 3 (reproduced above).
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`44. CMP pad conditioners typically have thousands of superabrasive
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`particles. For example, the DiaGrid® CMP pad dresser shown in Fig. 3 of EX1014
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`(reproduced above) has approximately 12,000 diamond particles across the surface
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`of the dresser. EX1014, Fig. 3, 258.
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`45. At the time of the ’862 Patent, there were multiple known CMP pad
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`dresser fabrication methods. Of particular interest were methods that enabled
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`Ex. 1002, Page 19
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`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 9,138,862
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`uniform protrusion of the diamond particles over the entire substrate surface. One
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`such method is known as “reversed casting.” EX1004, [0006], [0010], [0052],
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`[0056], [0061], [0073]; EX1005, 1:9-15, 1:30-2:4; EX1012, [0053], [0054],
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`[0056], [0057], [0067], [0079].
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`46. Reverse casting involves securing superabrasive particles in a mold,
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`pouring an organic material (typically a polymer, e.g. epoxy) over the
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`superabrasive particles, attaching the solidified organic layer to a support substrate,
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`and removing the mold. This method gives a CMP pad dresser with a single layer
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`of substantially level superabrasive particles. The particles are held in the organic
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`matrix layer, and protrude to a predetermined height above the support. Often,
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`using reverse casting to manufacture CMP pad dressers allows for better control
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`over the uniformity of tip heights of superabrasive particles, due to the pre-leveling
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`of the superabrasive particles on the mold. EX1004, [0010], [0052], [0056],
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`[0061]-[0063], [0073]-[0076], [0083]-[0088], [0099]-[0104]; EX1005, 1:9-15,
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`1:30-2:4; EX1012, [0053], [0054], [0056], [0057], [0060], [0067], [0070]-[0081],
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`[0091], [0092], [0099]-[0104].
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`47. Dr. Sung —the sole named inventor of the ’862 Patent presented the
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`“organic diamond disk (ODD),” a CMP pad dresser made by reverse casting
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`diamond particles onto an organic matrix, at a conference in 2007. EX1005
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`[SungICPT], Title, Header, 1:30-2:3. First, the diamond particles are leveled on a
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`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 9,138,862
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`mold. Then, the diamond particles are covered with an organic polymer, such as
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`epoxy. Finally, the mold is removed, exposing the diamond particles embedded in
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`and protruding from the epoxy layer. EX1005, 1:30-2:2. Because the diamond
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`particles are leveled on a mold in the first step in the reverse casting process, the
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`tip-to-tip variation can be controlled to within about 20 microns. EX1005, 2:2-3.
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`As shown below in Figure 3, the ODD CMP pad dresser has diamond particles
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`embedded in and protruding from the organic matrix and arranged in a grid with an
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`inter-diamond spacing of about 500 microns. EX1005, Fig. 3.
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`EX1005, Fig. 3.
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`Ex. 1002, Page 21
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`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 9,138,862
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`48. Furthermore, CMP pad dressers having substantially uniform
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`protrusion heights were known in the art before the earliest possible priority date of
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`the ’862 Patent.
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`49. For instance, I have reproduced Fig. 4 of EX1015 below, which shows
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`a two-dimensional surface profile of a CMP pad dresser. EX1015, p. 3, Fig. 4. I
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`understand that EX1015 was published on August 1, 2010, which is before the
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`priority date of the ’862 Patent. Nevertheless, I understand that Patent Owner
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`acknowledged that Fig. 4 of EX1015 discloses “the difference in protrusion
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`distance between the highest protruding tip and the second highest protruding tip
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`of the monolayer of superabrasive particles is less than or equal to about 10
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`microns,” as is recited in independent claim 1 of the ’862 Patent. I also understand
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`that Patent Owner acknowledged that this Figure discloses that “the difference in
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`protrusion distance between the highest 10 protruding tips of the monolayer of
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`superabrasive particles are within about 20 microns or less” also recited in
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`independent claim 1 of the ’862 Patent. See EX1017, 8-17 EX1001, claim 1.
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`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 9,138,862
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`EX1015, Fig. 4.
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`IV. Overview of the ’862 Patent
`Summary of the ’862 Patent
`A.
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`50.
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`I have reviewed the’862 Patent. See EX1001.
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`51. The ’862 Patent describes methods of conditioning CMP pads with
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`CMP pad dressers. See EX1001, Abstract. According to the ’862 Patent, these
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`CMP pad dressers should have superabrasive particles with substantially leveled
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`tips. This leveling and overall protrusion height should be such that the CMP pad
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`dresser produces asperities with a certain maximum cutting depth. See EX1001,
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`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 9,138,862
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`9:33-44, (“Thus, the relative leveling of the monolayer of superabrasive particles
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`can greatly affect the morphology and distribution of asperities cut into the CMP
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`pad by the dresser. For example, in one aspect, the monolayer is leveled such that
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`rotating the dresser against the CMP cuts asperities having a maximum cutting
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`depth of about 80 microns … 60 microns … [or] 40 microns.”).
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`52. The ’862 Patent describes that such leveling of the tips in a CMP pad
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`dresser can be accomplished using a “reverse casting” method. EX1001, 17:8-15
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`(“[S]o-called ‘reverse casting’ methods can be used to accurately orient and attach
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`the dressing segments to the rigid support.”). First, the superabrasive particles are
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`secured “to a substrate using a ‘mask’ material.” EX1001, 17:10-12. Then, the
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`superabrasive particles not covered by the masking material are “attached to the
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`rigid support.” EX1001, 17:12-14. For example, organic matrix materials like
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`epoxy can be a rigid support. EX1001, 17:16-57. Finally, “the masking material
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`can be removed.” EX1001, 17:14-15. The result of the “reverse casting” method is
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`presumably what is claimed in claim 1, such as “wherein the difference in
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`protrusion distance between the highest protruding tip and the second highest
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`protruding tip of the monolayer of superabrasive particles is less than or equal to
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`about 10 microns” and “the difference in protrusion distance between the highest
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`10 protruding tips of the monolayer of superabrasive particles are within about 20
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`microns or less.” EX1001, claim 1.
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`Ex. 1002, Page 24
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`Declaration of Dr. Stanley Shanfield
`U.S. Patent No. 9,138,862
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`Summary of the Prosecution History of the ’862 Patent
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`B.
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`53.
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`I have reviewed the file history of the ’862 Patent which I summarize
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`below. See EX1003.
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`54. The application for the ’862 Patent was filed on March 13, 2013. The
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`application claimed to be a continuation-in-part of U.S. U.S. 13/479,148 (now U.S.
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`8,974,270), which claimed priority to U.S. Provisional Application No.
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`61/489,074, filed May 23, 2011. See EX1001, Cover; EX1003, 2, 7.
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`55. The application for the ’862 Patent included claims 1-20. EX1003, 39-
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`41.
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`56.
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`In an Office Ac