Inter Partes U.S. Patent No. 9,202,720 IN THE UNITED ...€¦ · The ‘720 patent also purports to make a claim of priority to U.S. provisional application no. 61/452,450, filed

Petition for Inter Partes Review of U.S. Patent No. 9,202,720

i

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

______________________

SPTS TECHNOLOGIES LTD. Petitioner

v.

PLASMA-THERM LLC Patent Owner

______________________

PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,202,720

UNDER 35 U.S.C. §§311-319 AND 37 C.F.R. §42.100 ET SEQ.

______________________

Case IPR2017-_________

Patent No. 9,202,720

Issued December 1, 2015

Filed February 11, 2013

______________________


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TABLE OF CONTENTS I. INTRODUCTION ……………………………………………………… 1

II. STANDING……………………………………………………………… 2

III. FEE………………………………………………………………………. 3

IV. MANDATORY NOTICES (37 C.F.R. §42.8(b)……………………….. 3

A. Real Part in Interest (37 C.F.R. §42.8(b)(1))……………………... 3

B. Related Proceedings (37 C.F.R. §42.8(b)(2)) ……………………. 4

C. Lead and Back-up Counsel (37 C.F.R. §42.8(b)(1))……………… 4

D. Service Information (37 C.F.R. §42.8(b)(1))……………………... 4

E. Power of Attorney (37 C.F.R. §42.8(b)(1))………………………. 5

V. IDENTIFICATION OF CHALLENGE AND STATEMENT OF RELIEF REQUESTED…………………………………………………..

5

A. Statement of Relief Requested…….. …………………………….. 5

B. Statutory Grounds and Claims …………………………………… 5

C. Evidence Relied on in Support of the Challenge………………… 6

VI. OVERVIEW OF THE ‘720 PATENT…………………………………... 6

A. Effective Filing Date of the ‘720 Patent………………………….. 6

B. State of the Art and Applicable Technologies……………………. 7

1. Wafer Handling and Transfer.……………………………. 7

2. Plasma Etching……………………………………………. 12


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3. Wafer Dicing……………………………………………… 12

C. Summary of the ‘720 Patent………………………………………. 15

1. The Patent Owner’s Admitted Prior Art…………………... 15

a. Plasma dicing (both complete and partial)………… 15

b. Dicing frames……………………………………… 16

c. Plasma dicing in combination with dicing frames… 16

d. Etch chamber having plasma source adjacent wall... 16

e. Wafer handlers designed to handle, support and electrostatically clamp a work piece………………

17

2. Technical Overview of the Claims of the ‘720 Patent………………………………………………………

17

a. Independent Claim 1………………………………. 18

b. Dependent Claims 2-5……………………………... 20

D. Summary of Prosecution History…………………………………. 21

E. Person of Ordinary Skill in the Art……………………………….. 21

VII. CLAIM CONSTRUCTION…………………………………………….. 22

A. “plasma source”…………………………………………………... 23

B. “adjacent to the wall of the process chamber”……………………. 24

C. “lift mechanism”………………………………………………….. 25

D. “said outer diameter of the electrostatic chuck extending to the lift mechanism”……………………………………………………

25

VIII. GROUND OF CHALLENGE……………………………………………

27


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A. Claim Chart……………………………………………………….. 28

B. Argument…………………………………………………………. 33

1. Summary………………………………………………….. 33

2. Brief Discussion of Elements……………………………. 36

a. Element A and G………….………………………. 37

b. Elements B, C, D, E, H, I and J……………….…... 40

c. Element F…………………………………………. 43

d. Element K…………………………………………. 46

e. Elements L and M of the Dependent Claims……... 48

3. Obviousness Under the Framework of Graham…………... 48

a. Scope and Content of the Prior Art……………….. 49

i. Sekiya – What is discloses…………...…… 49

ii. Sekiya – What is does not disclose………... 50

iii. Yamashita – What is discloses……..……… 51

iv. Sekiya and Yamashita – What they do not disclose………………………………..…...

54

v. Pellegrin – What it discloses…………..….. 55

vi. Sekiya, Yamashita and Pellegrin – What they do not disclose………………………..

56

vii. Iwai – What is discloses…………………… 57

b. Differences Between the Claims and Prior Art…… 58


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c. Level of Ordinary Skill in the Art……….………… 59

d. Rationales Supporting the Legal Conclusion of Obviousness…………………………...…………...

59

i. Rationale #1……………………………….. 59

ii. Rationale #2……………………………….. 64

iii. Rationale #3………………………………... 67

IX. CONCLUSION………………………………………………………….. 71

X. APPENDIX OF EXHIBITS……………………………………………... 73

XI. CERTIFICATE OF WORD COUNT…………………………………… 75

XII. CERTIFICATE OF SERVICE………………………………………….. 76


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I. INTRODUCTION

U.S. Patent No. 9,202,720 (“the ‘720 patent” (Ex. 1001)) is one of at least

twenty-five (25) U.S. patents and patent applications (see the listing of Ex. 1002)

known to Petitioner claiming priority to U.S. patent application no. 13/412,119,

which issued as U.S. Patent No. 8,802,545 (Ex. 1003).

In IPR2017-01314, Petitioner submitted a challenge to the claims of a sibling

of the ‘720 patent, namely, U.S. Patent No. 8,980,764 (“the ‘764 patent”). (Ex.

1017) In that IPR, Petitioner demonstrates, among other things, that engagement of

a dicing frame by the lift mechanism of a substrate support is neither novel nor non-

obvious. The claims of ‘720 patent are similar to those of the ‘764 patent, except

that instead of claiming the use of the lift mechanism to engage a dicing frame, the

claims of the ‘720 are premised on the lift mechanism being located outside an outer

periphery of the substrate support (electrostatic chuck or ESC). Here again,

Petitioner will show that nothing novel or unobvious is claimed.

As with the ‘764 patent, the Patent Owner asserted the ‘720 patent in a

demand letter (Ex. 1004) sent to a customer of the Petitioner.

Petitioner therefore petitions for inter partes review of claims 1 and 3-4 of the

‘720 patent’ pursuant to the provisions of 35 U.S.C. §§311-319 and 37 C.F.R. §42.

This Petition demonstrates that there is a reasonable likelihood that Petitioner

will prevail in establishing that at least one of claims 1 and 3-4 of the ‘720 patent is


2

unpatentable under the provisions of “pre-AIA” 35 U.S.C. §102 and §103.

In view of the limited subject matter jurisdiction of an IPR, and to avoid

wasting PTAB resources, no challenge is made against claims 2 and 5. There is a

mountain of prior art showing the ESC dielectric thickness recited in dependent

claim 2, but the disclosure lacks the necessary written description of claim 2. As for

independent claim 5, it states that “said outer diameter of the electrostatic chuck

extending outwards to the outer diameter of the frame of the work piece.”

(Emphasis supplied) A written description of this is found at col. 12, lines 60-62, of

the ‘720 patent. However, ‘720 patent lacks an enabling disclosure of where the lift

mechanism is located if the electrostatic chuck is made to extend all the way to the

outer diameter of the frame. In all embodiments, the lift mechanism is interposed

between the outer diameter of the frame and the outer diameter of chuck.

U.S. Patent and Trademark Office records show that the ‘720 patent is

assigned to Plasma-Therm LLC, and accordingly, Plasma-Therm LLC is believed to

be the “Patent Owner” in this Petition.

II. STANDING

Petitioner certifies that the '720 patent is eligible for inter partes review

and further certifies that Petitioner is not barred or otherwise estopped from

challenging the identified claims on the ground identified within the present


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Petition. The ‘720 patent has an effective filing date before March 16, 2013

(i.e., the patent was filed under the pre-AIA “first-to-invent” patent system),

and, as of the filing of this Petition, the Patent Owner has not served a

complaint for infringement of the ‘720 patent on the Petitioner, real party in

interest or privy of the Petitioner.

III. FEE

The inter partes review fee under 37 C.F.R. §42.15(a) has been submitted

concurrently with the filing of this Petition. The undersigned further authorizes

payment for any additional fees that might be due in connection with this Petition

to be charged to the undersigned’s deposit account 50-0238.

IV. MANDATORY NOTICES (37 C.F.R. §42.8(b))

A. Real Party in Interest (37 C.F.R. §42.8(b)(1))

The real parties in interest are SPTS Technologies Limited and Orbotech

Ltd.

SPTS Technologies Limited (“SPTS”) is the Petitioner and is located at

Ringland Way, Newport, Wales, United Kingdom, NP18 2TA.

SPTS is a wholly-owned subsidiary of Orbotech Ltd., located at Shderot


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Hasanhedrin, Yavne 8110101, Israel.

B. Related Proceedings (37 C.F.R. §42.8(b)(2))

In IPR2017-01314, Petitioner has challenged the claims of U.S. Patent No.

8,980,764 (Ex. 1017 (“the ‘764 patent”)). The ‘720 patent and the ‘764 patent

make a claim of priority to the same parent U.S. patent application no.

13/412,119, filed March 5, 2012, and to the same U.S. provisional application no.

61/452,450.

C. Lead and Back-up Counsel (37 C.F.R. §42.8(b)(3))

Petitioner designates the following as lead and back-up counsel:

LEAD COUNSEL BACK-UP COUNSEL

Adam C. Volentine Stephen R. Whitt

Reg. No. 33289 Reg. No. 34753

Volentine & Whitt PLLC Volentine & Whitt PLLC

11951 Freedom Dr., Suite 1300 11951 Freedom Dr., Suite 1300

Reston, VA 20190

Tel: (571) 283-0721

Fax: (571) 283-0740

[email protected]

Reston, VA 20190

Tel: (571) 283-0722

Fax: (571) 283-0740

[email protected]

D. Service Information (37 C.F.R. §42.8(b)(4))

Counsel for Petitioner can be reached at Volentine & Whitt, PLLC,


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11951 Freedom Drive, Suite 1300, Reston, Virginia, 20190; Tel.

571.283.0720; Fax 571.283.0740.

Petitioner consents to service by electronic mail to:

[email protected]

[email protected]

E. Power of Attorney (37 C.F.R. §42.8(b)(1))

A Power of Attorney has been submitted concurrently with this Petition.

V. IDENTIFICATION OF CHALLENGE AND STATEMENT OF

RELIEF REQUESTED

A. Statement of Relief Requested

Petitioner requests cancellation of claims 1 and 3-4 of the ‘720 patent for

the reasons set forth herein.

B. Statutory Ground of Challenge and Claims

Ground of Challenge: Claims 1 and 3-4 of the ‘720 patent are invalid as

being obvious under 35 U.S.C. §103 over U.S. Patent No. 6,465,158 (“Sekiya”

(Ex. 1005))), in view of the teachings of U.S. Patent Publication No.

2007/0238199 (“Yamashita” (Ex. 1006)), U.S. Patent Publication No.

2006/0164785 (“Pellegrin” (Ex. 1007)) and U.S. Patent Publication No.

2010/0216313 (“Iwai” (Ex. 1008)).

mailto:[email protected]�

mailto:[email protected]�


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Among the applied references, Iwai constitutes prior art under pre-AIA 35

U.S.C. §102(a) and (e). The remaining applied references constitute prior art

under pre-AIA 35 U.S.C. §102(b).

C. Supporting Evidence Relied Upon for the Challenged Claims

The evidence to support the above challenge is provided herein in the form

of patent and printed publications discussed in detail throughout this Petition,

together with the Declaration of Dr. John E. Spencer submitted herewith (Ex.

1009). In particular, the Petition and Declaration identify where each claim

element is found in the prior art and explain why the claims would have been

obvious to a person of ordinary skill in the art (“POSITA”) before the alleged

invention of the ‘720 patent.

VI. OVERVIEW OF THE '720 PATENT

A. Effective Filing Date of the ‘720 Patent

The ‘720 patent is a divisional of U.S. patent application no. 13/412,119, filed

March 5, 2012, which issued on August 12, 2014 as U.S. Patent No. 8,802,545 (Ex.

1003).

The ‘720 patent also purports to make a claim of priority to U.S. provisional

application no. 61/452,450, filed March 14, 2011. (Ex. 1010)

March 14, 2011, thus constitutes the earliest alleged effective filing date of the


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‘720 patent.

B. State of the Art and Applicable Technologies

As Dr. Spencer explains in his Declaration, the ‘720 patent is generally

directed to three process categories commonly utilized in the fabrication of

semiconductor devices, namely, (1) wafer handling and transfer, (2) plasma etching,

and (3) wafer dicing. (Ex. 1009, ¶17)

1. Wafer Handling and Transfer

As testified by Dr. Spencer, robotic arms and lift devices were commonly used

long before the alleged invention of the ‘720 patent to transfer a substrate such as a

wafer into and out of a substrate processing chamber, and to place the substrate on a

substrate support within the chamber. (Ex. 1009, ¶18). As an example, Dr. Spencer

points to FIGS. 1 and 2 of U.S. Patent No. 5,669,977 (“Shufflebotham et al.” (Ex.

1011)).


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In the example of FIGS. 1 and 2 above, Shufflebotham et al. teach that a wafer

2 is supported on a robotic arm 4 and transferred under vacuum from an entrance

load lock 12 to a processing chamber 14. Lift pins 6 of a lift pin mechanism 8 are

extended to lift the wafer 2 off the robotic arm 4, and the robotic arm 4 is withdrawn

from the chamber 14, with the wafer remaining in the chamber 14 and resting atop

the lift pins 6. The lift pins are then lowered to place the wafer 2 on a substrate

support within the chamber 14. After processing, the lift pins 6 are again extended to

elevate the processed wafer 2 for placement onto another robotic arm 6 to thereby

transfer the processed wafer 2 under vacuum into an exit load lock 16. (Ex 1009,

¶19) and (Ex. 1011, 1:37-51)

Dr. Spencer further testifies that a design consideration in wafer handling


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systems is the avoidance of damage to the wafer being handled, and in particular

circuit carrying regions of the wafer being handled. Consequently, it became

conventional to engage the periphery of the wafer during handling. (Ex. 1009, ¶19)

Indeed, Dr. Spencer agrees with the observation of the prior art in the ‘720 patent

that underside contact close to the wafer edge was known (1009, ¶19):

“[Robotic wafer] Handlers are designed to support the

wafers with minimal contact, to minimize possible

contamination and reduce the generation of particulates.

Edge contact alone, or underside contact close to the wafer

edge at only a few locations (typically within 3-6 mm of

the wafer edge) is generally employed.” (Ex. 1001, 2:6-

11.)

Dr. Spencer further testifies that, in keeping with these design considerations

of wafer handling, a variety of lift mechanism designs contacting the wafer close to

the wafer edge were generally known in the art before the alleged invention of the

‘720 patent. (Ex. 1009, ¶20) As examples, Dr. Spencer points to the lift mechanism

shown at FIG. 2 of U.S. Patent No. 6,935,466 (“Lubomirsky et al.” (Ex. 1012)), the

lift mechanism shown at FIG. 11 of U.S. Patent No. 6,951,821 (“Hamelin et al.” (Ex.

1013)), and the lift mechanism shown at FIG. 8 of U.S. Patent 7,449,071 (“Aggarwal

et al.” (Ex. 1014)), illustrated below:


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Regarding the example of FIG. 2 of Lubomirsky et al., Dr. Spencer testifies

that the lift pins are located outside and adjacent the outer periphery of a wafer 106,

and each is configured with a lift finger 170. Each finger 170 in turn has a finger tip

172 which is positioned to engage the underside of the perimeter of the wafer 106 as


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the wafer 106 is lowered to and raised from a support 108 within a processing

chamber. (Ex. 1009, ¶21) (Ex. 1012, 4:61 to 5:9)

In the example of FIG. 5 of Aggarwal et al., Dr. Spencer testifies a lift

mechanism is configured by a lift ring 54 that is beveled so that its outer radial edge

82 is slightly higher than its inner radial edge 84. As such, the lift ring 54 only

touches a wafer 16 at its outer edge 17. In this way, contact between the wafer 16

and lift ring 54 is advantageously minimized. (Ex. 1009, ¶22) (Ex. 1014, 11:6-14)

In the example of FIG. 11 of Hamelin et al., Dr. Spencer testifies that a lift

mechanism is configured by a blade 500 having three or more tabs 510 and a drive

system 530 for permitting vertical translation of the blade 500 within a processing

chamber. The tabs 510 are configured to grasp a substrate as the substrate is lowered

to and raised from a substrate holder within the processing chamber. (Ex. 1009, ¶23)

(Ex. 1013, 12:32-41)

Dr. Spencer also explains that a known design consideration at the time of the

alleged invention of the ‘720 patent was for wafer handling mechanisms and/or

supports to precisely locate the work piece on the work piece support, and one early

developed technique for doing so was to “nest” the work piece. Nesting essentially

consists of forming a recess or guides in the wafer handlers or supports to inhibit

lateral movement of the work piece. For example, lift mechanisms were configured

with notches or the like to center the work piece and to inhibit lateral movement of


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the work piece during transfer to and from the support. (Ex. 1009, ¶24)

2. Plasma Etching

Dr. Spencer testifies that he is in agreement with the admitted prior art

observations made at column 1, lines 25-63, of the ‘720 patent that plasma etching

(also called dry etching) is used extensively in the production of semiconductor

devices. Etching equipment generally includes a device for producing plasma from a

process gas introduced into a plasma chamber that contains a substrate support

therein, such as an electrostatic chuck (ESC). According to Dr. Spencer, design

factors considered in plasma processing include gas composition, power, pressure,

thermal budgets, and so on. (Ex. 1009, ¶25)

The ‘720 patent (at 1:38-40) makes references to inductively coupled plasma

(ICP). Dr. Spencer testifies that ICP is generated from an RF (radio frequency)

powered magnetic field which is typically sourced by a coil arrangement positioned

outside a wall of the chamber. Other types of plasma generation for etching are also

well known, such as reactive ion etching (RIE) systems (Ex. 1009, ¶26)

3. Wafer Dicing

As testified by Dr. Spencer, semiconductor fabrication generally includes a

process known as dicing in which a wafer is separated into individual semiconductor

chips. (Ex. 1009, ¶27)

Dicing technologies vary, and include scribing of the wafer to separate the


13

wafer into chips, sawing of the wafer into chips, laser cutting of the wafer into chips,

and/or plasma dicing of the wafer into chips. (Ex. 1009, ¶27)

Dr. Spencer testifies that an example of plasma dicing is found in U.S. Patent

No. 6,642,127 (“Kumar et al.”) (Ex. 1015), which is cited at column 3, lines 22-35,

of the ‘720 patent. Kumar et al. discloses a method and apparatus for dicing a

semiconductor wafer using a plasma etch process that takes place within an etch

chamber or reactor. (Ex. 1009, ¶28) (Ex. 1015, Abstract)

Dr. Spencer is in agreement with the observation made by Kumar et al. that

plasma dicing of a wafer is not limited by the type of etching equipment being

utilized (Ex. 1009, ¶29) (Ex. 1015, 3:58-61):

“In one embodiment of the invention, the etching process is

accomplished using a decoupled plasma source (DPS)

plasma etch chamber manufactured by Applied Materials,

Inc. of Santa Clara, Calif. However, any plasma etch

chamber capable of etching silicon may be used.”

(Emphasis supplied.)

Regardless of the particular dicing technology adopted, Dr. Spencer testifies

that the use of so-called “dicing frames” were known in the art long before the

alleged invention of the ‘720 patent. Dicing frames generally consist of a hoop-

shaped frame having an inner diameter greater than a diameter of a wafer to be diced,


14

and dicing tape adhered to one side of the frame and overlapping the open interior of

the frame. Generally, the adhesive side of the dicing tape is oriented upwardly

through the opening in the dicing frame. The wafer is adhered to the dicing tape

within the opening of the dicing frame during dicing. The dicing frame and tape

function to secure the individual chips in place during and upon completion of the

dicing process. (Ex. 1009, ¶30)

As an example of a conventional dicing frame and a method of plasma dicing

a substrate mounted to the frame, Dr. Spencer points to U.S. Patent Publication No.

2004/0115901 (“Sekiya ‘901”) (Ex. 1016) (Ex. 1009, ¶31) Annotated FIG. 2 of

Sekiya ‘901 is shown below:

Regarding the example of FIG. 2 of Sekiya ‘901, Dr. Spencer testifies that a

work piece (or wafer assembly) is formed by the combination of a wafer W, a frame

F and a mounting tape T. The mounting tape T extends across the opening of the


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frame F and is adhered to the back of the frame F. The wafer W is mounted on the

tape T within the opening of the frame F. The front side of the wafer W is masked to

expose streets along which the wafer W is to be diced by plasma etching. After

plasma etching, the separated chips of the wafer are retained by the tape T adhered to

the frame F. (Ex. 1009, ¶32) (Ex. 1016, FIG. 1-3, ¶¶29-30)

C. Summary of the ‘720 Patent

1. The Patent Owner’s Admitted Prior Art

Although not relied on as a reference for the challenge presented herein,

Petitioner contends and Dr. Spencer agrees that the prior art admissions of the

‘720 patent are instructive as to the level of ordinary skill in the art before the

alleged invention of the ‘720 patent. (Ex. 1009, ¶33)

Among others, the ‘720 patent admits the following as being prior art:

a. Plasma dicing (both complete and partial)

The ‘720 patent admits and Dr. Spencer agrees that plasma wafer dicing for

“overcoming some … limitations” of mechanical wafer dicing is prior art. See Ex.

1001, col. 2, lines 49-67, and col. 3, lines 22-27 (referencing Ex. 1015, U.S. patent

no. 6,642,127). (Ex. 1009, ¶35)

Furthermore, the ‘720 patent admits and Dr. Spencer agrees that it was

known that plasma dicing may be effected by a complete process in which the

open areas (“streets”) of the wafer are etched all the way through, or by a partial


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process in which the open areas of the wafer are etched only partially therethrough

and then mechanical stress is applied to the wafer to cleave the wafer along the

thinned open areas. (Ex. 1009, ¶36) (Ex. 1001, 2:51-59).

b. Dicing frames

The ‘720 patent admits and Dr. Spencer agrees that dicing frames are prior

art. As described therein, a dicing (rigid) frame having an adhesive tape at its

interior is applied to the wafer prior to wafer dicing for the advantage that it “holds

the separated die” (or “chips”) produced as a result of the dicing. (Ex. 1009, ¶37)

(Ex. 1001, 3:5-10)

c. Plasma dicing in combination with dicing frames

The ‘720 patent admits and Dr. Spencer agrees that mounting a wafer to a

support film on a dicing frame to provide a work piece by which the wafer can be

plasma diced is prior art. (Ex. 1001, 3:36-45, citing U.S. Patent Publication No.

2010/0048001 (“Harikai et al.”) of Exhibit 1018) (Ex. 1009, ¶38)

d. Etch chambers having a plasma source adjacent a

chamber wall

The ‘720 patent admits and Dr. Spencer agrees that plasma etching of

semiconductor substrates (e.g., wafers) using an Inductively Coupled Plasma

(ICP) source is prior art. Dr. Spencer states that ICP configurations inherently

include a process chamber fitted adjacent its chamber wall with a plasma source


17

such as shown in FIG. 6 of the ‘720 patent (e.g. plasma source 12). (Ex. 1001,

1:36-41, 9:61-65) (Ex. 1009, ¶¶39-40)

e. Wafer handlers designed to handle, support and

electrostatically clamp a work piece

The ‘720 patent admits and Dr. Spencer agrees that wafer handlers for

handling a wafer within a process chamber in preparation for and during the

plasma etching of the wafer is prior art. Particularly, the ‘720 patent admits and

Dr. Spencer agrees that in the manufacturing process of plasma etching known

“fixtures” were “designed to support the wafers” within a process chamber (i.e.,

the chamber in which the wafer is processed) and include “the wafer support and

ESC”. (Ex. 1001, 2:4-13) (Ex. 1009, ¶41)

The ‘720 patent also admits and Dr. Spencer agrees it was previously

known that electrostatic chucks (ESCs) are used to facilitate a clamping and

cooling of substrates during plasma etching. (Ex.1001, 12:40-45) (Ex. 1009, ¶42)

2. Technical Overview of the claims of the ‘720 Patent

The FIELD OF THE INVENTION of the ‘720 patent provides an appropriate

statement of the technical overview of the claims of the patent. Basically, the alleged

invention of the ‘720 patent resides in “the use of an apparatus for the formation of

individual device chips from a semi-conductor wafer”. (Ex. 1001, 1:16-21) (Ex.

1009, ¶43)


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a. Independent claim 1

Dr. Spencer testifies that the following annotated FIG. 6 of the ‘720 patent is

representative of an apparatus and work piece processed by the apparatus to which

the limitations of claim 1 pertain (Ex. 1009, ¶44):

Particularly in the context of independent claim 1, provided by the apparatus

of FIG. 6 is a process chamber 10 having a wall, a plasma source 12 adjacent to the

wall of the process chamber 10 for generating a plasma in the process chamber 10, a

lifting mechanism 17 (whose function is not recited in claim 1) within the process

chamber 10, and a work piece support 13 within the process chamber 10 and having


19

an electrostatic chuck (ESC) 16. (Ex. 1001, 9:61 through 10:2) (Ex. 1009, ¶45)

Dr. Spencer further testifies that the following annotated FIG. 7 of the ‘720

patent is representative of the work piece, and the operative relationship between the

work piece, ESC and the lifting mechanism, according to independent claim 1(Ex.

1009, ¶46):

Particularly in the context of independent claim 1, FIG. 7 shows the substrate 1

placed onto a support film (tape) 5 on a frame 6 to form a work piece. In addition,

FIG. 7 shows (the frame 6 of) the work piece placed onto the lifting mechanism 17.

(Ex. 1001, 9:55 through 10:40) (Ex. 1009, ¶47)


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Claim 1 recites the “outer diameter of the electrostatic chuck [16] extending to

the lifting mechanism [17].” (Ex. 1009, ¶48*50) This limitation is not shown in the

drawings of the ‘720 patent, but is implied at column 12, line 60, through column 13,

line 2, of the ‘720 patent. This will be explained in greater detail in the CLAIM

CONSTRUCTION section of this Petition.

Referring collectively to annotated FIGS. 6 and 7 above, independent claim 1

recites that the work piece (1/5/6) is etched by the plasma generated from the plasma

source 12 with a portion of the support film 5 of the work piece (1/5/6)

electrostatically clamped by the ESC 16 during the etching of the work piece. (Ex.

1009, ¶51)

b. Dependent claims 3 and 4 of the ‘720 patent

Dependent claim 4 appears to be the product of careless draftsmanship. It goes

without saying that one must first partially etch away the unprotected areas of the

substrate before one can fully etch away the unprotected areas of the substrate.

Claim 4 does not require the process to stop after partial etching, and thus, dependent

claims 3 and 4 have the same scope when read literally. Nonetheless, Petitioner

believes the intent was to claim the two admitted prior art techniques described at

column 2, lines 55-59, namely, full etching in the case of dependent claim 3, and

partial etching to allow for downstream mechanical breaking in the case of

dependent claim 4. These admitted prior art techniques are also described as


21

different embodiments of the invention at column 10, lines 2-11, of the ‘720 patent.

(Ex. 1009, ¶52-53)

D. Summary of the Prosecution History of the '720 Patent

A copy of the filed history retrieved from Public PAIR is submitted herewith

as Exhibit 1028.

The prosecution history was atypically long (five Office Action and seven

amendments), quite convoluted, and the claims that were eventually allowed by the

Examiner bear little resemblance, in terms of substantive limitations, to the claims

that were originally presented for examination. The Spencer Declaration (Ex. 1009,

¶¶54-103) contains his detailed account of what occurred in prosecution, which is not

feasibly presented here in this Petition given the IPR word count limitations.

A Notice of Allowance was issued August 31, 2015. (Ex. 1028, p. 11) The

Examiner’s reasons for allowance of issued claim 1 (claim 33 during prosecution)

were that “[c]laim 33 is allowable for at least the reasons of placing the work piece

onto the lifting mechanism in the process chamber, as set forth in the claimed

combination” as “[t]hese features of the method of claim 33 are neither anticipated

nor rendered obvious by the prior art known to the Examiner”. (Ex. 1028, p. 16)

The issue fee was paid on October 27, 2015 (Ex. 1028, page 6), and the ‘720patent

subsequently issued on December 1, 2015. (Ex. 1028, p. 5)

E. Person of Ordinary Skill in the Art


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Dr. Spencer testifies that a person having ordinary skill in the art would have

had a Bachelor’s or Master’s degree in electrical engineering, chemical engineering,

physics, chemistry, materials science, or a similar field, and three to four years of

work experience in the development of plasma etching or chemical vapor deposition

or related fields, or alternatively, PhD in electrical engineering, chemical

engineering, physics, chemistry, materials science, or a similar field. (Ex. 1009,

¶104)

VII. CLAIM CONSTRUCTION

Petitioner’s ground of challenge is not believed to be reliant upon any

particular construction of the terms utilized in the claims of the ‘720 patent. Issues

of claim construction are not anticipated to be dispositive of this case.

Nonetheless, it is noted that a claim subject to inter partes review must be

given its “broadest reasonable construction in light of the specification of the patent

in which it appears.” 37 C.F.R. §42.100(b); see also In re Cuozzo Speed Techs.,

LLC, 793 F.3d 1268, 1275-76 (Fed. Cir. 2015), aff’d sub nom. Cuozzo Speed

Techs., LLC v. Lee, 579 U.S. --, 136 S. Ct. 2131, 2136 (2016). Under the “broadest

reasonable interpretation” (BRI) standard, words of the claim must be given their

plain meaning, unless such meaning is inconsistent with the specification and

prosecution history. Straight Path IP Grp., Inc. v. Sipnet EU S.R.O., 806 F.3d 1356,


23

1362 (Fed.Cir.2015).

Petitioner below proposes the BRI of certain claim language, as understood by

a POSITA as of the filing date of the '720 patent. 37 C.F.R. §42.104(b)(3).

Petitioner also below sets forth claim terms that were either defined in the

specification or are subject to 35 U.S.C. §112(f). Petitioner submits that all

remaining claim terms should be accorded their plain and ordinary meaning as

understood by a POSITA. Petitioner reserves all rights regarding claim constructions

presented during litigation as they do not necessarily correspond to a BRI approach.

Different standards may be involved in litigation and Patent Office proceedings.

Cuozzo Speed Technologies, LLC v. Lee, 579 U.S. --, 136 S.Ct. 2131 (2016).

A. “plasma source”

With respect to the claimed “plasma source”, the ‘720 patent states “As shown

in FIG. 6, the vacuum processing chamber (10) is equipped with … a high density

plasma source (12) to generate a high density plasma, such as an Inductively

Coupled Plasma (ICP)… .” Petitioner interprets the phrase “such as” to mean “for

example”, and thus the plasma source as claimed is not limited to ICP. Further, the

disclosure makes it clear that the plasma source as claimed need not generate “high”

density plasma, thus further evidencing that the plasma source is not limited to any

particular plasma generation technology. (Ex. 1001, 10:12-18) As testified by Dr.

Spencer, a variety of different types of plasma sources were used in etching before


24

the alleged invention of the ‘770 patent, examples of which include inductive

coupled plasma (ICP) and plated reactive ion etching (RIE). (Ex. 1009, ¶26)

Accordingly, Petitioner adopts a BRI construction of “plasma source” as suggested

by Dr. Spencer, namely, as constituting “any device or component that functions as

the source of energy to produce plasma within a plasma etch chamber.” (Ex. 1009, ¶

107)

B. “adjacent to the wall of the process chamber”

Except for the abstract and summary section which parrot the claims of the

‘720 patent, no written description is given of what is meant by the plasma source

being “adjacent to the wall of the process chamber.” The embodiment disclosed by

the ‘720 patent illustrates plasma source 12 outside of what appear to be upper side

walls (not numbered) of the chamber 10, abutting a ceiling wall (not numbered) of

the chamber 10, and on top of a lower side wall (not numbered) of the chamber 10.

(See, e.g., FIG. 6, and 9:61-63) The plasma source 12 is adjacent all these walls.

Further, the claim language does limit the plasma source as being outside “the wall”

as apparently depicted in FIG. 6. As Dr. Spencer has testified, a variety of different

types of plasma sources exist, some of which include a coil configuration external

the etch chamber, and others that include plate electrodes within the etch chamber.

In all cases, the plasma sources are “adjacent” at least one wall of the etch chamber.

As such, Petitioner adopts a BRI construction of the subject phrase as suggested by


25

Dr. Spencer, namely, as “in proximity to any wall of the process chamber, whether

inside or outside the process chamber.” (Ex. 1009, ¶ 108)

C. “lift mechanism”

As testified by Dr. Spencer, a wide variety of different wafer lift mechanism

configurations where known in the art for placing a substrate on the support surface

of an etch chamber. Likewise, col. 12, lines 9-18, of the ‘720 patent suggests that

the lift mechanism is not limited to the disclosed embodiment, i.e., it is not limited to

engagement with a lower surface of the work piece. Further, the claim itself

attributes no particular lifting action to the lifting mechanism, and late in prosecution

the Patent Owner deleted limitations which stated that the lift mechanism placed the

work piece onto the electrostatic chuck. (Ex. 1128, p. 80) As such, Petitioner adopts

a BRI construction of “lift mechanism” suggested by Dr. Spencer, namely, as “any

device configured to lift something and have a work piece placed thereon” (Ex.

1009, ¶109)

D. “said outer diameter of the electrostatic chuck extending to the

lifting mechanism”

The outer diameter of the electrostatic chuck (ESC) 16 is a fixed length that is

not capable of carrying out the act of “extending.” Petitioner thus looks to the

disclosure and drawings of ‘720 patent for interpretation. In all of the illustrated

embodiments, a filler ring 18 is interposed between the electrostatic chuck 16 and lift


26

mechanism 17, and the filler ring 18 is said to “extend to” the lifting mechanism 17.

(Ex. 1001, 12:63-64) The outer periphery of the filler ring 18 is adjacent to the lift

mechanism which is located radially outward from the filler ring 18. Thus, in the

illustrated embodiments, the lifting mechanism 17 is spaced in a radially outward

direction from the outer periphery of the ESC 16, with the filler ring 18 interposed

therebetween. However, the ‘720 patent states that “Although a separate filler ring

(18) is shown, an extension of the ESC (16) would also prevent plasma (7) exposure

to the backside of the tape (5).” (Ex. 1001, 12:67 to 13:02) Dr. Spencer interprets

this as meaning that the diameter of the ESC 16 can be increased to take the place of

the filler ring 18. In this case, the outer periphery of the ESC 16 would be extended

in a radially outward direction such that is reaches or closely approaches the location

of the lift mechanism 17. Please see annotated FIG. 7 below, where the yellow line

is intended to represent the outer diameter of the ESC 16 “extending to” the lift

mechanism 17. (Ex. 1009, ¶110)


27

In consideration of the drawings and the previously mentioned passage

bridging columns 12 and 13 of the ‘720 patent, Petitioner adopts a BRI construction

as suggested by Dr. Spencer, namely, “an outer periphery of the electrostatic chuck is

in proximity to the lift mechanism which is located radially outward from the

electrostatic chuck.” (Ex. 1009, ¶111)

VIII. GROUND OF CHALLENGE: CLAIMS 1, 3 AND 4 ARE

UNPATENTABLE UNDER 35 U.S.C. §103 AS BEING OBVIOUS OVER


28

U.S. PATENT NO. 6,465,158 (“Sekiya”), IN VIEW OF U.S. PATENT

PUBLICATION NO. 2007/0238199 (“Yamashita”), U.S. PATENT

PUBLICATION NO. 2006/0164785 (“Pellegr in”) AND U.S. PATENT

PUBLICATION NO. 2010/0216313 (“Iwai”).

A. Claim Chart (Ex. 1009, ¶113)

Element No.

Independent Claim 1 Prior Art

A

A method for plasma dicing a

substrate, the method comprising:

Sekiya (Ex. 1005, Abstract, FIG.

4, 2:50-51, 4:39-48) “… dry

etching may be adopted, such as

plasma etching … .”

B

providing a process chamber having

a wall;

Yamashita (Ex. 1006, FIG. 2, ¶

0055) Provides processing system

200 that includes process chamber

(processing chamber 210) having

walls (not numbered).


29

C

providing a plasma source adjacent

to the wall of the process chamber;

Yamashita (Ex. 1006, FIG. 2,

¶¶0054, 0070, 0071, 0076)

Processing system 200 is a plasma

etcher including plasma source

(upper electrode body 221 and gas

supply system 279 including gas

supply lines 271/272 and gas

outlet holes 276) adjacent the wall

(ceiling, not numbered) of the

process chamber (processing

chamber 210)

D

providing a lifting mechanism

within the process chamber;


¶0063) “… substrate 245 can be

received by substrate lift pins (not

shown) housed within substrate

holder 240… .”


30

E

providing a work piece support

within the process chamber, the

work piece support having an

electrostatic chuck


¶0063, 0066) Provides work

piece support (substrate holder

240) within process chamber

(processing chamber 210), having

electrostatic chuck (electrostatic

chuck 246)

F

the electrostatic chuck having an

outer diameter, said outer diameter

of the electrostatic chuck extending

to the lifting mechanism

Pellegrin (Ex. 1007, FIG. 2, 3 and

5, ¶0034 and 0040). Electrostatic

chuck 250 has outer diameter

extending to lifting mechanism

265/365.

G

placing the substrate onto a support

film on a frame to form a work

piece;

Sekiya (Ex. 1005, FIG. 1, 2:59-62

and 3:9-17) Places substrate

(wafer 4) on a support film

(mounting tape 8) on a frame

(frame 6) to form a work piece

(assembly 2).


31

H

placing the work piece onto the

lifting mechanism in the process

chamber


¶0063) “Once substrate 245 is

received [by substrate lift pins]…

it can be lowered to an upper

surface of substrate holder 240.”

I

generating a plasma through the

plasma source


¶0071, 0076). Generates a plasma

through the plasma source (upper

electrode 221 and process gases

from gas supply system 270 are

used to generate plasma in process

space 212)

J

etching the work piece using the

generated plasma


¶¶0054, 0057, 0059) Processing

system 200 is for etching a work

piece (substrate 245) using

generated plasma.


32

K

electrostatically clamping a portion

of the support film using said

electrostatic chuck during the

etching step

Sekiya (Ex. 1005, FIG. 4, 4:16-

26) Front-side etching takes place

with support film (mounting tape

4) oriented downwardly. As such,

support film is electrostically

clamped by electrostatic chuck

(electrostatic chuck 246 of

Yamashita above discussed at

element E)

Also see Iwai (Ex. 1008, FIGS.

1and 5, ¶¶0039,0043).

Electrostatic clamping

(electrostatic suction) of support

film (adhesive sheet 7) of framed

wafer 8 during etching.

Dependent Claim 3 Prior Art


33

L

etching away unprotected areas of

the substrate of the work piece

using the generated plasma

Sekiya (FIG. 4, 4:19-23) “The

etching depth of the

semiconductor wafer 4 may be

substantially the same as the

thickness of the semiconductor

wafer 4 (thus, the semiconductor

wafer 4 is divided along the

streets 14)… .”

Dependent Claim 4 Prior Art

M

etching partially away unprotected

areas of the substrate of the work

piece using the generated plasma

Sekiya (FIG. 4, 4:26-32) “If

desired, instead of etching the

semiconductor wafer 4 throughout

its thickness, unetched regions

may be left by a slight thickness

beside the back side. In this case,

a slight bending force is later

exerted on the semiconductor

wafer 4 along the streets 14 to

break the remaining unetched

regions.”

B. Argument

1. Summary


34

Claims 1 and 3-4 of the ‘720 patent are invalid as being obvious under 35

U.S.C. §103 over U.S. Patent No. 6,465,158 (“Sekiya” (Ex. 1005))), in view of U.S.

Patent Publication No. 2007/0238199 (“Yamashita” (Ex. 1006)), U.S. Patent

Publication No. 2006/0164785 (“Pellegrin” (Ex. 1007)) and U.S. Patent Publication

No. 2010/0216313 (“Iwai” (Ex. 1008)).

Referencing the element 1 numbers of the claim chart above, Dr. Spencer

testifies that independent claim 1 encompasses the following combination (Ex. 1009,

¶114):

A, G Plasma dicing using a dicing frame and support film

B – E, H – J Using an etch chamber

F Lift mechanism located outside an outer periphery of

electrostatic chuck

1 Petitioner uses the term “element” for purposes of discussion. It is noted, however,

that while the claims are purported to be directed to a method, they contain a number

of structural limitations, some of which are not germane to the method. One

example is the location of the plasma source adjacent a wall of the chamber. Thus,

the claims are hybrid in nature, and Petitioner uses the term “element” in a generic

sense to refer to both the structural features and the actual method steps recited in the

claim.


35

K Support film is electrostatically clamped during

etching.

The inventors of the ‘720 patent were not the first to invent any of these

elements A through K. Specifically, as will be discussed in greater detail below,

Sekiya discloses (A) plasma dicing and (G) the claimed use of a dicing frame during

plasma dicing; Yamashita teaches (B-E and H-J) a plasma etch chamber having all

the claimed features utilized to generate plasma and support a work piece; Pellegrin

teaches (F) locating a lift mechanism outside the outer periphery of an electrostatic

chuck; and Iwai teaches (K) the claimed electrostatic clamping of the support film

during etching (plasma dicing). In other words, NO GAP exists between the prior art

and the subject matter recited in claim 1 of the ‘720 patent. (Ex. 1009, ¶¶115-116)

As such, the question becomes -- would using these known elements in

combination as claimed in the ‘720 patent have been obvious to a person of ordinary

skill in the art (“POSITA”) at the time of the alleged invention of the ‘720 patent?

Petitioner contends that the answer is manifestly “yes.” (Ex. 1009, ¶117)

First, Dr. Spencer testifies that all of the claimed elements operate exactly as a

POSITA would expect them too. There is nothing of surprise in the combinations

claimed. No unexpected results are realized. No new interactions among the

elements of the claim are presented. No previously unknown syngergies between

elements is achieved. The claims represent nothing more than a combination of prior


36

art elements according to known methods to yield predictable results. (Ex. 1009, ¶

118)

Second, Dr. Spencer testifies that the prior art references themselves expressly

provide ample rationales for the POSITA to combine or modify the teachings of the

references in the fashion recited in the claims of the ‘720 patent. (Ex. 1009, ¶119)

Third, Dr. Spencer testifies that the claimed combination is simply the result

of choosing from a finite number of identified, predictable solutions, with a

reasonable expectation of success. At the very least, such an effort was “obvious to

try” before the alleged invention of the ‘720 patent. (Ex. 1009, ¶120)

2. Brief Discusion of Elements

This section 2 of these arguments presents a brief discussion of the elements

numbered in the claim chart above as recited by the claims of the ‘720 patent, and is

followed by Section 3 which presents a more detailed Graham-style obviousness

analysis of claims 1 and 3-4 of the ‘720 patent.

Note re. Iwai. It is acknowledged that Iwai was cited by the Examiner during

prosecution of the ‘720. However, as will become apparent herein, Petitioner relies

on Iwai merely to support their position that a POSITA would not be reluctant to

engage the dicing tape of a dicing assembly with an electrostatic chuck as would

naturally result from the combination of Sekiya and Yamashita. The remaining

references were not relied on by the Examiner.


37

Seperately, to assist the Board, the table below shows the dicing frame

terminology used by Dr. Spencer, the ‘720 claims, and the applied references (Ex.

1009, ¶121):

Dr. Spencer Dicing

Assembly Dicing Frame Dicing Tape Wafer

‘720 Patent

claims Work Piece Frame Support Film Substrate

Sekiya Wafer

Assembly Frame Mounting Tape Wafer

Iwai Framed Wafer Holder Frame Adhesive

Sheet Wafer

a. Elements A and G -- Plasma dicing using a dicing frame

and support film

The ‘720 patent admits that the inventors thereof did not invent plasma dicing

(Ex. 1001, col. 3, lines 22-27). Indeed, examples of known plasma dicing are

discussed in the background section VI.B.3. of this Petition. In addition, as testified

by Dr. Spencer, the Sekiya reference relied on by Petitioner quite clearly discloses

plasma dicing, i.e., dicing a wafer by plasma etching, as is discussed in more detail


38

below. (Ex. 1009, ¶122).

The ‘720 patent also admits that its inventors did not invent the dicing frame

and film configuration to support a substrate (Ex. 1001, 3:5-21 and 36-38), and that

they did not invent plasma dicing of a substrate as it is supported by a dicing frame

and film configuration. (Ex. 1001, 3:36-38) Further, as testified by Dr. Spencer, the

Sekiya reference relied on by the Petitioner quite clearly disloses the claimed work

piece in combination with plasma dicing. See annotated FIGS. 1 and 4 of Sekiya

presented below. (Ex. 1009, ¶123)


39

As explained by Dr. Spencer, Sekiya disloses forming a work piece (“wafer

assembly 2”) by combining a substrate (“wafer 4”), a frame (“frame 6”) and a

support film (“mounting tape 8”). The mounting tape 8 extends across the opening

18 of the frame 6 and is adhered to the back of the frame 6 with the adhesive side of

the tape 8 facing upwards through the opening 18 in the frame 6. A lower surface of

the wafer 4 is mounted on the adhesive side of the tape 8 within the opening 18 of

the frame 6. The patterned resist 20 is located on an upper surface of the wafer 4,

having openings at dicing streets 14 of the wafer 4. A front-side etching process is

carried out in which wafer 4 is etched along the streets 14 from the top side to

thereby dice the wafer 4 with the patterned resist 20 operating as an etch mask. The

frame 6 and tape 8 function to secure the individual chips in place during and upon

completion of the dicing process. (Ex. 1005, FIG. 1 and 4, 2:59-63, 4:16-27) (Ex.

1009, ¶124)

Sekiya teaches that the etching step “can be performed by an etching method

well known per se,” and cites “plasma etching” as an example. (Ex. 1005, 4:39-48).

Dr. Spencers testifies that, in the example of plasma etching, the wafer assembly 2 of

Sekiya must be exposed to plasma from the side of the wafer assembly 2 having the

patterned resist 20. That is, the top of the wafer 4 (opposite the tape 8) is exposed to

plasma through the openings in the resist 20 as is illustrated above in annotated FIG.

4. (Ex. 1005, 39-48) (Ex. 1009, ¶125)


40

b. Elements B, C, D, E, H, I and J -- Using an etch

chamber

As testified by Dr. Spencer, elements B – E and H – J simply recite inherent

and/or well-known components of an etch apparatus for etching a semiconductor

substrate as would have been known to a POSITA well before the alleged invention

of the ‘720 patent. Specifically, such etch apparatus inherently include a chamber

wall, some sort of plasma source, and a work piece support (such as an electrostatic

chuck) for supporting the wafer within the process chamber. Further, applying a BRI

construction of “adjacent”, it is difficult to imagine an etch chamber of any type in

which a plasma source is not somehow adjacent to a chamber wall. As for the

lifting mechansim, Dr. Spencer also testifies that the POSITA has long known that

an etch chamber typically includes a lifting mechanism which functions to place a

work piece on the work piece support within the process chamber. (Ex. 1009, ¶126)

In any event, as testified by Dr. Spencer (Ex. 1009, ¶127), the Yamashita

reference relied on by the Petitioner clearly teaches elements B – E and H – J of

independent claim 1 of the ‘720 patent:


41

In particular, Yamashita describes a “plasma etcher” 200 for etching a

substrate 245 that includes a process chamber 210 having mulitple walls which are

not numbered (although reference number 265 of Yamashita is referred to as a “wall

temperature control element”). (Ex. 1006, ¶¶0054, 0055) (Ex. 1009, ¶128) Under

the suggested BRI claim construction, an upper electrode body 221 and gas supply

system 270 quite clearly constitute a plasma source, namely, a “device or component

that functions as the source of energy to produce plasma within the plasma etch


42

chamber 210.” That is, the upper electrode body 221 is coupled to an RF system and

generates plasma from process gasses introduced by the gas supply system 270 in a

process space 212 within the chamber 210. Here, the gas supply system 270

includes gas supply lines 271/272 and gas outlet holes 276 for supplying the process

gases to the process space 212. (Ex. 1006, ¶¶0070, 0071, 0076) (Ex. 1009, ¶128).

Also in terms of the suggested BRI claim construction, the upper electrode body 221

and gas supply system 270 are adjacent a wall of the process chamber, namely, “in

proximity to a wall of the process chamber, whether inside or outside the process

chamber”. That is, the upper electrode body 221 and gas supply system 270 are

disposed adjacently below a ceiling wall (not numbered) located immediately above

the upper electrode body 221 as shown in FIG. 2, as well as adjacently above an

inner wall of the chamber 210 form by an inner sheild ring 225, outer sheild ring 226

and electrode cover 224. (Ex. 1006, ¶0070) (Ex. 1009, ¶128) Further, Yamashita

expressly suggests that the upper assembly (220) of the etch chamber can be

configured as an inductively coupled plasma (ICP) source of plasma, and as testified

by Dr. Spencer, an ICP source is well-known to include electrodes (such as electrode

coils) adjacent an outer wall of the etch chamber. (Ex. 1006, ¶0059) (Ex. 1009,

¶128)

Further, Yamashita expressly describes a work piece support, namely, a

substrate holder 240 within the process chamber 210 on which a substrate 245 is


43

electrostatically clamped during plasma etching. In particular, Yamashita expressly

describes the substrate holder 240 as including an electrostatic chuck (ESC) 246 for

electrostatically clamping the substrate 245 supported by the substrate holder 240.

(Ex. 1006, ¶¶0064, 0066) (Ex. 1009, ¶129) Still further, Yamashita expressly

describes providing a lifting mechanism (under the BRI construction) in the process

chamber 210 and placing the substrate onto the lifting mechanism in the process

chamber 210. That is, Yamashita teaches that the “substrate 245 can be received by

substrate lift pins (not shown) housed within the substrate holder [240] … . Once

substrate 245 is received from substrate transfer system, it can be lowered [by the lift

pins] to an upper surface of the substrate holder 240.” (Ex. 1006, ¶¶0063) (Ex. 1009,

¶129)

c. Element F – Lift mechanism located outside and in

proximity to outer periphery of electrostatic chuck

It is well established that lift mechanisms (e.g., pins) have been used long

before the alleged invention of the ‘720 patent to place a substrate on a substrate

support within an etch chamber. Indeed, the ‘720 patent admits that handling

schemes “within” the substrate support were known in the art. (Ex. 1001, 2:12-14)

(Ex. 1009, ¶130)

Element F of claim 1 states that the outer diameter of the electrostatic chuck

extends to the lifting mechanism. As with everthing else recited in claim 1, element


44

F was known in the art before the alleged invention of the ‘720 patent. (Ex. 1009,

¶131)

In particular, Dr. Spencer testifies that Pellegrin teaches the use of an

electrostatic chuck (ESC) that has an outer diameter extending to a lift mechanism.

(Ex. 1009, ¶132) Attention is directed to annotated FIGS. 2 and 5 of Pellegrin

shown below.


45

Dr. Spencer testifies that Pellegrin teaches an electrostatic chuck 250 and pins

265 as shown above. Dr. Spencer further testifies that the electrostatic chuck 250 has

an outer diameter that extends to the pins 265 as shown above. Or, in terms of the

suggested BRI construction, Dr. Spencer testifies that Pellegrin teaches that “an outer

periphery of the electrostatic chuck 250 is in proximity to the lift mechanism 265

which is located radially outward from the electrostatic chuck 250.” More

particularly, FIG. 2 and 5 show an electrostatic chuck 250 that includes upper and

lower ceramics 205 and 215, each inherently including an outer diameter. The outer

diameter of the ceramics 205/215 at the cross-section of FIG. 2 extends to the lift

pins (mechanisms) 265. This can be seen in annotated FIG. 5 above, recesses 400

are formed to receive the lift pins 265. (Ex. 1007, ¶0034, 0040) (Ex. 1009, ¶133)


46

Pelligrin describes the pins 265 as being used to “handle the wafers”. Dr.

Spencer testifies that the POSITA would understand that the pins 265 are

conventional lift pins that (such as those described by Yamashita at ¶0063) that are

used to place a wafer onto the electrostatic chuck. Further, the pins 265 are located

adjacent the outer periphery of the chuck 250, and thus are vertically aligned outside

a periphery of the substrate 200. As such, Pellegrin depicts the pins 265 as including

a protrusion extending towards the wafer 200 for engaging the wafer 200. As

testified by Dr. Spencer, the POSITA would understand the pins are configured to

support and/or nest the wafer 200 at a periphery of the wafer 200. (Ex. 1007, ¶0034,

0040) (Ex. 1009, ¶134)

d. Element K – Support film of work piece is

electrostatically clamped by ESC during etching

As will be described later, Petitioner contends that it would have been

manifestly obvious to a POSITA to use a plasma etch device such as that described

by Yamashita to carry out the front-side plasma dicing technique described by

Sekiya. In such case, Dr. Spencer testifies that wafer assembly 2 of Sekiya would be

placed with its front-side up (i.e., its resist 20 side up). Thus, the tape 8 of the wafer

assembly would be facing downward on the electrostatic chuck 246 of Yamashita, in

which case the tape 8 (or support film) would be electrostatically clamped by the

electrostatic chuck 246 during etching. (Ex. 1009, ¶135)


47

In addition, Dr. Spencer testifies that Iwai shows that the POSITA would have

known to electrostatically clamp the support film (adhesive sheet 7) of a framed

wafer 8 during plasma dicing of the framed wafer 8. (Ex. 1009, ¶136) Attention is

directed to annotated FIGS. 4B and 1 of Iwai presented below.

According to Dr. Spencer, Iwai teaches plasma dicing of a substrate 200 on a

support film (adhesive sheet 7) on a frame (holder frame 6) which form a work piece

(framed wafer 8). Iwai’s invention primarily resides in the provision of a cover

member 40 which functions to protect the top sides of the support film 7 and frame 6


48

which would otherwise be exposed during plasma dicing. (Ex. 1008, ¶¶0002, 0039,

0065, 0067) (Ex. 1009, ¶137)

Like Sekiya, the plasma process of the primary embodiment of Iwai is a front-

side etch process in which the top of the wafer 200 is oriented upwardly in a vacuum

chamber 5 and exposed to plasma. (An alternative back-side embodiment is

suggested by Iwai at ¶0075 in which adhesive tape is patterned and operates as a

mask). As such, in the primary embodiment of Iwai, the adhesive sheet 7 of the

framed wafer 8 is oriented downwardly such that the adhesive sheet 7 rests on a

support 300 of the chamber as shown in FIG. 1 above. Iwai expressly teaches that

the support 300 can include electrostatic suction of the framed wafer 8. According to

Dr. Spencer, a POSITA would understand that electrostatic “suction” and

electrostatic “clamping” have the same meaning. (Ex. 1008, 0043) (Ex. 1009, ¶138)

e. Elements L and M of the dependent claims

Dr. Spencer testifies that both elements L and M are expressly disclosed by

Sekiya as set forth previously in the claim chart. Namely, element L is expressly

described at column 4, lines 19-23, where the etching depth results in complete

dicing of the wafer. Element M is expressly described at colum 4, lines 26-32, where

the etching process is halted before completely etching through the wafer 4. (Ex.

1005, 4:19-23 and 4:26-32) (Ex. 1009, ¶139)

3. Obviousness Under the Framework as Stated in Graham v.


49

John Deere Co., 383 U.S. 1 (1966)

The factual inquiries for establishing prima facie obviousness under 35 U.S.C.

§103 as enunciated by the Court in Graham are as follows:

Determining the scope and content of the prior art; and

Ascertaining the differences between the claimed invention and the

prior art; and

Resolving the level of ordinary skill in the pertinent art.

As is well-settled, once the Graham factual inquires are resolved, a

determination is then made as to whether the invention as claimed is obvious.

a. Scope and Content of the Prior Art

i. Sekiya ‘901 – What it discloses

Sekiya is pertinent because it discloses, as described previously, a method of

plasma dicing a semiconductor substrate, while the substrate is mounted on a tape

and supported in a frame, and while the substrate is front-side masked. Sekiya does

not specify the use of any particular plasma etching technique or plasma etching

apparatus, but instead states that the “etching [plasma dicing] step can be performed

by an etching method well known per se.” (Ex. 1005, 4:39-40). As testified by Dr.

Spencer, a POSITA would interpret this as a teaching by Sekiya that conventional

etching techniques and plasma etching apparatus can be utilized to carrying out

plasma dicing of a semiconductor substrate as taught by Sekiya. And in particular,


50

according to Dr. Spencer, a POSITA would understand from Sekiya that

conventional front-side mask etching techniques and plasma etching apparatus can

be utilized to carry out plasma dicing of a semiconductor substrate as taught by

Sekiya. (Ex. 1009, ¶140)

As described above, and as testified by Dr. Spencer (Ex. 1009, ¶141), Sekiya

expressly teaches the following limitations of independent claim 1 of the ‘720 patent:

“a method for plasma dicing a substrate”

“placing the substrate onto a support film on a frame to form a

work piece”

“generating plasma…”

“etching the work piece through the generated plasma ... .”

ii. Sekiya – What is does not disclosed

As mentioned previously, Sekiya is silent as to the particularities of the

manner in which the plasma is generated to etch (dice) the work piece. In other

words, other than to suggest that known etch methods may be utilized, Sekiya does

not include a description of a specific plasma etch technique or apparatus to be used

in carrying out the plasma dicing method described by Sekiya. (Ex. 1009, ¶142)

Thus, in the context of independent claim 1, Sekiya does not expressly disclose:

1. “providing a process chamber having a wall” and “providing a plasma

source adjacent the wall of the process chamber”


51

2. “providing a lifting mechansim within the process chamber” and

“providing a work piece support within the porcess chamber, the work piece support

having an electrostatic chuck, the electrostatic chuck having an outer diameter, said

outer diameter of the electrostatic chuck extending to the lifting mechansim”

3. “placing the work piece onto the lifting mechanism in the process

chamber”

4. “electrostatically clampling a portion of the support film using said

electrostatic chuck during the etching step..”

iii. Yamashita. – What it discloses

The reference to Yamashita is pertinent prior art because it relates to a method

and apparatus of plasma etching a substrate (e.g., a wafer as a work piece) while the

substrate is supported on a work piece support within a plasma process chamber. As

testified by Dr. Spencer, the method and apparatus of Yamashita constitute an

example of “an etching method well known per se” as stated by Sekiya at column 4,

lines 39-48. Specifically, Dr. Spencer testifies that the teachings of Yamashita

constitute what Sekiya describes as “plasma etching which utilizes active particles in

plasma produced by applying a high frequency electric field to a gas.” For example,

Yamashita teaches using RF systems 280 and 285 coupled to lower and upper

electrode 247/221 to create electric fields which power gases and control plasma

within a process space 212 of the chamber 220. Dr. Spencer testifies that the plasma


52

includes “active particles” as reference Sekiya, and that the RF frequencies of

Yamashita correspond to the “high frequency” mentioned by Sekiya. (Ex. 1006,

¶¶0067, 0071) (Ex. 1009, ¶143)

As described previously, Yamashita describes a “plasma etcher” 200 for

etching a substrate 245 that includes a process chamber 210 having mulitple walls

which are not numbered. (Ex. 1006, ¶¶0054, 0055) (Ex. 1009, ¶144) The upper

electrode body 221 and gas supply system 270 constitute a plasma source, namely, a

“device or component that functions as the source of energy to produce plasma

within the plasma etch chamber 210.” The upper electrode body 221 and gas supply

system 270 are adjacent a wall of the process chamber, namely, “in proximity to a

wall of the process chamber 210, whether inside or outside the process chamber”.

(Ex. 1006, ¶0070) (Ex. 1009, ¶144) Further, as previously mentioned, Yamashita

expressly suggests that the upper assembly (220) of the etch chamber can be

configured as an inductively coupled plasma (ICP) source of plasma, and as testified

by Dr. Spencer, an ICP source is well-known to include electrodes (such as electrode

coils) adjacent an outer wall of the etch chamber. (Ex. 1006, ¶0059) (Ex. 1009,

¶144)

Yamashita expressly describes a work piece support, namely, a substrate

holder 240 within the process chamber 210 on which a substrate 245 is

electrostatically clamped during plasma etching. Yamashita expressly describes the


53

substrate holder 240 as including an electrostatic chuck (ESC) for electrostatically

clamping the substrate 245 supported by the substrate holder 240. (Ex. 1006,

¶¶0064, 0066) (Ex. 1009, ¶145) Yamashita expressly describes providing a lifting

mechanism in the process chamber 210 and placing the substrate onto the lifting

mechanism in the process chamber 210. (Ex. 1006, ¶¶0063) (Ex. 1009, ¶145)

With respect to the lifting mechanism, Yamashita teaches that the “substrate

245 can be received by substrate lift pins (not shown) housed within the substrate

holder [240] … . Once substrate 245 is received from substrate transfer system, it

can be lowered [by the lift pins] to an upper surface of the substrate holder 240.”

(Ex. 1006, ¶¶0063) (Ex. 1009, ¶146)

Attention is directed to the enlarged annotated portion of FIG. 2 of Yamashita

shown below.


54

Yamashita teaches that the lift pins are housed within the substrate holder

0063, but does not offer a precise location. Dr. Spencer testifies that a POSITA

reading Yamashita would readily understand that lift pins can be located in the

electrostatic chuck 246, the ESC enclosure 243, and/or the insulator ring 244 which

make up the substrate holder 240 of Yamashita. (Ex. 1009, ¶147)

As described above, and as testified by Dr. Spencer (Ex. 1009, ¶147),

Yamashita expressly teaches the following limitations claim 1 of the ‘720 patent:

“providing a process chamber having a wall”

“providing a plasma source adjacent to the wall of the process

chamber” and “generating a plasma through the plasma source”

“providing a lifting mechanism within the process chamber”

“providing a work piece support within the process chamber, the

work piece support having an electrostatic chuck”

“placing [a substrate] onto the lifting mechanism in the process

chamber”

“etching [a substrate] using the generated plasma”

iv. Sekiya and Yamashita – What they do not

disclose

Dr. Spencer testifies (Ex. 1009, ¶148) that neither Sekiya nor Yamashita


55

expressly describe the following limitations of independent claim 1 of the ‘720

patent:

1. The electrostatic chuck has an outer diameter that extends to the lift

mechanism.

2. Electrostatically clamping a portion of the support film using the

electrostatic chuck during the etching.2

v. Pelligrin – What is discloses

Pellegrin is pertinent prior art because it teaches an example of an electrostatic

chuck in which substrate lift pins are located outside and adjacent to an outer

diameter of the electrostatic chuck. (Ex. 1009, ¶149)

In particular, as described previously, Pellegrin teaches that the pins 265

thereof are in proximity to and outside an outer periphery of the electrostatic chuck

250. As shown in FIG. 2 and 5, the electrostatic chuck 250 includes upper and lower

ceramics 205 and 215, each inherently including an outer diameter. The outer

diameter of the ceramics 205/215 at the cross-section of FIG. 2 extends to lift

mechanisms 265. This can be seen in the annotated FIG. 5 shown previously, where

2 To be clear, as will be explained later, this limitation inherently results from the

combination of Sekiya and Yamashita, but is not expressly described by either

Sekiya or Yamashita individually.


56

the lift pins 265 are positioned within recesses 400. (Ex. 1007, ¶0034, 0040) (Ex.

1009, ¶150)

Pelligrin describes the pins 265 as being used to “handle the wafers”, and as

Dr. Spencer testifies, the POSITA would understand that the pins 265 are

conventional lift pins that (such as those described by Yamashita at ¶0063) that are

used to place a wafer onto the electrostatic chuck. Further, the pins 265 are located

adjacent the outer periphery of the chuck 250, and thus are vertically aligned outside

a periphery of the substrate 200. As previously explained, Pellegrin depicts the pins

265 as including a protrusion extending towards the wafer 200 for engaging the

wafer 200. (Ex. 1007, ¶0034, 0040) (Ex. 1009, ¶151)

As described above, and as testified by Dr. Spencer (Ex. 1009, ¶152),

Pellegrin expressly teaches the following limitation claim 1 of the ‘720 patent:

“the electrostatic chuck having an outer diameter, said outer

diameter of the electrostatic chuck extending to the lifting mechanism”

vi. Sekiya, Yamashita and Pellegrin – What they do

not disclose

Dr. Spencer testifies (Ex. 1009, ¶153) that none of the references to Sekiya,

Yamashita and Pellegrin expressly describes the following limitation of independent

claim 1 of the ‘720 patent:

1. Electrostatically clamping a portion of the support film using the


57

electrostatic chuck during the etching.3

vii. Iwai – What it discloses

Iwai is pertinent because it shows that shows that the POSITA would have

known to electrostatically clamp the support film (adhesive sheet 7) of a framed

wafer 8 during plasma dicing of the framed wafer 8. (Ex. 1009, ¶154)

As described previously, Iwai teaches plasma dicing of a substrate 200 on a

support film (adhesive sheet 7) on a frame (holder frame 6) which form a work piece

(framed wafer 8). Like Sekiya, the plasma process of the primary embodiment of

Iwai is a front-side etch process in which the top of the wafer 200 is oriented

upwardly in a vacuum chamber 5 and exposed to plasma. As such, in the primary

embodiment of Iwai, the adhesive sheet 7 of the framed wafer 8 is oriented

downwardly such that the adhesive sheet 7 rests on a support 300 of the chamber as

shown in FIG. 1 above. Iwai expressly teaches that the support 300 can include

electrostatic suction of the framed wafer 8. According to Dr. Spencer, a POSITA

would understand that electrostatic “suction” and electrostatic “clamping” have the

same meaning. (Ex. 1008, ¶0043) (Ex. 1009, ¶154)

3 Again, as will be explained later, this limitation inherently results from the

combination of Sekiya and Yamashita, but is not expressly described by either

Sekiya or Yamashita individually.


58

Moreover, the Dr. Spencer points to the prosecution history of the ‘720 patent

to evidence that Iwai teaches the electrostacic clamping of a “portion” of the film at

least insofar as the degree to which such clamping step is claimed. With reference to

the Prosecution History of the ‘720 patent summarized above, the Examiner on

several occasions (e.g., Ex. 1028, p. 188) concluded that the clamping force exerted

by the ESC in Iwai even if occurring at the wafer interface “will still clamp a portion

of the film since it is sandwiched between the wafer and chuck.” The Patent Owner

never addressed or refuted this conclusion of the Examiner. That is, consistent with

the disclosure and prosecution history of the ‘720 patent, the adhesive tape in the

method taught by Iwai is electrostatically clamped as claimed for at least the very

reason that the wafer is electrostatically clamped and the adhesive tape is sandwiched

between the wafer and the ESC. (Ex. 1009, ¶155)

b. Differences Between the Claimed Invention and the

Prior Art

As shown in the claim chart and as described above, the Sekiya, Yamashita,

Pellegrin and Iwai references quite clearly describe all of the limitations recited in

claims 1 and 3-4 of the ‘720 patent. Indeed, as testified by Dr. Spencer, the only

difference between the claimed invention and the applied references is that the

applied references do not expressly describe as a single embodiment the combination

of elements recited in the challenged claims of the ‘720 patent. (Ex. 1009, ¶156)


59

c. Level of Ordinary Skill in the Art

The educational and experience level the Dr. Spencer believes constitutes a

POSITA is set forth at section VI.E. of this Petition.

In addition, the POSITA is a hypothetical person who is presumed to have

known the relevant art at the time of the invention. Also, the “type of problems

encountered in the art” and “prior art solutions to those problems” are factors that

demonstrate the level of ordinary skill in the art. In re GPAC, 57 F.3d 1573, 1579

(Fed. Cir. 1995)

d. Rationales Supporting the Legal Conclusion of

Obviousness

With the Graham factual inquires resolved as above, Petitioner explains below

why the claims would have been obvious to one of ordinary skill in the art.

As described below, Petitioner contends there are three (3) separate and

independent rationales to support the legal conclusion of obviousness.

i. RATIONALE #1: The patent simply arranges

old elements with each performing the same function it had been known to

perform and yields no more than one would expect from such an arrangement.

As has been clearly demonstrated above, and as testified by Dr. Spencer, all of

the elements of the claims of the ‘720 patent were described in the applied references

before the alleged invention of the ‘720 patent. (Ex. 1009, ¶160)


60

Further, as testified by Dr. Spencer, all of the elements of the applied

references as claimed in the ‘720 patent perform the same function or obtain the

same result as a POSITA would have expected them to before the alleged invention

of the ‘720 patent. The combination of elements of the applied references yields a

method that a POSITA would expect from the teachings of the references. That is,

according to Dr. Spencer, there is no unexpected synergy achieved by the

combination of elements of the claims. (Ex. 1009, ¶160) For example, the lifting as

provided by the claimed lift mechanism has no impact on the clamping operation of

the electrostatic chuck and vice versa. These are independent techniques performed

by well known devices to effect functions and results that are independent of one

another in the overall method. (Ex. 1009, ¶160)

In this respect, too, the disclosure of the ‘720 patent is entirely devoid of any

detailed description of how the claimed combination yields some sort of unexpected

and non-obvious result. Indeed, according to Dr. Spencer, it is difficult at best to

pinpoint any novelty of the alleged invention when reading the disclosure of the ‘720

patent. (Ex. 1009, ¶161)

Even during prosecution the Patent Owner never explained on the record how

the claimed combination might somehow be directed to non-obvious subject matter.

Rather, in response to the Examiner’s repeated rejections, the Patent Owner simply

amended the claims to add elements allegedly not found in the references being


61

applied by the Examiner at that particular time. The prosecution history evinces an

apparent reluctance on the part of the Patent Owner to engage the Examiner in any

substantive discussion of its “invention” in the context of issues of obviousness.

Petitioner believes the reason for this is clear – the features systematically introduced

throughout prosecution added nothing inventive. The features introduced were not

germane to the invention originally sought by the Patent Owner, and seemingly had

no bearing on exactly how their alleged invention resulted in improved dicing of a

wafer into chips. (Ex. 1009, ¶161)

The lift mechanism being outside a periphery of the electrostatic chuck is a

prime example of this. Upon introducing that limitation into issued claim 1, the

Patent Owner stated:

As testified by Dr. Spencer, the Patent Owner’s argument to the Examiner was

misleading. (Ex. 1009, ¶163)

First, having the outer diameter of the electrostatic chuck extend to the lifting


62

mechanism in no way whatsoever results in an “oversized” electrostatic chuck. The

size of the chuck will depend on the location of the lift mechanism relative to the

work piece, and the claim pending at that time (or claim 1 as issued) did not recite

where the lift mechanism engages the work piece (frame or tape or wafer). It was

incorrect to say that the limitation results in an “oversized” chuck. (Ex. 1009, ¶164)

Second, the teachings of Iwai referenced by the Patent Owner relate to cover

member 40 which protects the support film and frame from a top side of the work

piece, not the back side that the Patent Owner contends would benefit from its

allegedly oversized chuck. The comments contrasting the cover member 40 with the

“oversized” chuck are thus nonsensical. The comments are additionally misleading

because (a) the stage 300 of Iwai prevents exposure to the entire back side of the

adhesive tape 7, and (b) the ‘720 patent itself teaches a cover ring 20 that is the

analog of cover member 40 of Iwai. (Ex. 1009, ¶165)

This lack of coherency is describing the “invention” is further evident by the

claim amendments made during prosecution. An apparently central aspect of the

claim resides in the positional relationship between the ESC and the “lift

mechanism.” However, the claim fails to attribute any concrete role to the lift

mechanism. That is, the claim merely states that the work piece is placed on the lift

mechanism in the chamber, but does not say anything as to how the lift mechanism

interacts with any other elements of the claim. No mention is made of what is lifted


63

by the lift mechanism. This lack of commitment to the lifting mechanism actually

lifting something was intentional on the part of the Patent Owner (presumably

because the Patent Owner was well aware of the prevalence of lift mechanism

already in the art). Specifically, during prosecution, the Patent Owner deleted a

limitation stating that the lift mechanism places the work piece on the work piece

support. As a result, the lift mechanism of the “method” has no function. (Ex. 1028,

p. 80) (Ex. 1009, ¶166)

In any event, at no time did the Patent Owner legitimately express an

unexpected advantage that results from the combinations of elements recited

independent claim 1, and dependent claim 3 and 4. Further, at no time does the

Patent Owner suggest that the claimed elements and their operational relationship

behave in anything other than an entirely predictable way. And, at no time does the

Patent Owner suggest any unexpected operational interaction or synergistic effect

between the claimed elements. (Ex. 1009, ¶167)

For the reasons stated above, Dr. Spencer concludes that independent claim 1

of the ‘702 patent is simply an arrangement of old elements with each performing the

same function it had been known to perform and yields no more than one would

expect from such an arrangement. (Ex. 1009, ¶168)

For at least these reasons, Petitioner contends that independent claim 1 is

obvious as constituting exactly the type of claims identified in the KSR case as being


64

obvious:

“… when a patent “simply arranges old elements with each

performing the same function it had been known to

perform” and yields no more than one would expect from

such an arrangement, the combination is obvious.” KSR

International Co. v Teleflex Inc. et al., 550 U.S. 398, 417

(2007), citing Sakraida v AG Pro, Inc., 425 U.S.

273(1976). (Emphasis added.)

In addition, the primary reference to Sekiya teaches precisely what is recited in

dependent claim 3 and 4 as discussed previously, and thus KRS dictates that these

claims are obvious as well. (Ex. 1009, ¶169)

ii. RATIONALE #2: Some teaching, suggestion, or

motivation in the prior art that would have led a person having ordinary skill in

the art to combine the prior art reference teachings to arrive at the claimed

invention

Sekiya describes a plasma dicing method in which a wafer mounted to a dicing

frame and tape assembly is plasma etched from a front-side of the wafer, i.e., from a

side of the wafer opposite the dicing tape. But, as previously explained, Sekiya does

not set forth any particular method of producing the plasma used to dice the wafer,

other than to suggest that known techniques can be adopted. (Ex. 1009, ¶171)


65

Yamashita discloses a method for generating plasma and a plasma etching

apparatus that, according to Dr. Spencer, a POSITA would consider as being quite

capable of generating the plasma needed to carry out the plasma dicing method of

Sekiya. (Ex. 1009, ¶172)

There are generally two reasons the POSITA would have been let to use the

apparatus of Yamashita, and the techniques executed by the apparatus to carry out

the plasma dicing of Sekiya in which the wafer is secured to a dicing frame by a

support film. (Ex. 1009, ¶173)

First, as noted before, Sekiya does not specify any particular technique for

generating the plasma needed to carry out its plasma dicing method. Thus, since the

POSITA would understand that the plasma etch apparatus of Yamashita is

configured to generate such plasma, the use of the plasma etch device of Yamashita

is merely the provision of a known technique to satisfy a need presented by Sekiya.

(Ex. 1009, ¶174)

Second, Yamashita suggests that its processing chamber 210 “can facilitate the

formation of processing plasma” in a processing space 212 adjacent to a substrate

245. (¶0055) Further, Yamashita teaches that its system 200 is capable of

controlling key processing parameters such as chamber pressure (¶0056), distribution

of process gasses (¶0058), chamber wall temperature (¶0055), substrate holder

temperature, and others. According to Dr. Spencer, the POSITA would understand


66

that these features of Yamashita would be of benefit in the plasma dicing of a

semiconductor wafer, and as a result, the POSITA would have been led to utilize the

plasma etch system of Yamashita to carry out the plasma dicing method of Sekiya.

(Ex. 1009, ¶175)

Further, as testified by Dr. Spencer, the POSITA would understand that Sekiya

teaches front-side etching of the wafer mounted to the dicing frame, and that as a

result, the tape of the dicing frame would rest on the substrate support of Yamashita

and be electrostatically clamped by the electrostatic chuck with the substrate support

of Yamashita. In this respect, Dr. Spencer directs attention to Iwai as evidence that

the POSITA would understand that the dicing tape can be electrostatically clamped

by an electrostatic chuck. (Ex. 1009, ¶176)

As noted before, Yamashita does not specify any particular location the lift

pins contained in its substrate support, and accordingly, a need exists for the

POSITA to configure the substrate support to include lift pins. Again, adopting the

lift pin configuration of Pellegrin is merely the provision of a known technique to

achieve a known outcome (location of the work piece on the support) to satisfy a

need presented by Yamashita. (Ex. 1009, ¶177)

Dr. Spencer testifies that executing the plasma dicing method of Sekiya in the

plasma etch reactor of Yamashita (with the dicing tape facing down as evidenced by

Iwai) and the lift pins configured as taught by Pellegrin results exactly in what is


67

claimed by independent claim 1 of the ‘720 patent. (Ex. 1009, ¶178)

For the reasons supplied above, Dr. Spencer concludes that the applied

references would have led a person having ordinary skill in the art to combine the

prior art reference teachings to arrive at the invention of independent claim 1 of the

‘720 patent. (Ex. 1009, ¶179)

In addition, noting the primary reference to Sekiya teaches precisely what is

recited in dependent claim 3 and 4, the same combination of references also

corresponds exactly to the subject matter of these dependent claims. (Ex. 1009, ¶179)

For at least these reasons, Petition contends, and Dr. Spencer agrees, that

claims 1 and 3-4 would been obvious to a POSITA before the alleged invention of

the ‘720 patent. (Ex. 1009, ¶179)

iii. RATIONALE #3: Choosing from a finite

number of identified, predictable solutions, with a reasonable expectation of

success, such that the effort was “obvious to try”

It has been established here that Sekiya describes a plasma dicing method in

which a wafer mounted to a dicing frame and tape assembly is plasma etched from a

front-side of the wafer, i.e., from a side of the wafer opposite the dicing tape. It has

also been established that Sekiya does not teach any particular method of producing

the plasma used to dice the wafer, other than to suggest that known techniques can be

adopted. (Ex. 1009, ¶181)


68

As testified by Dr. Spencer, a POSITA would consider use of the type of

plasma etch apparatus described by Yamashita to constitute a predicable solution to

the issue of generating the plasma necessary to dice a wafer as taught by Sekiya.

(Ex. 1009, ¶182).

In particular, Dr. Spencer testifies that, before the alleged invention of the ‘720

patent, a POSITA would have known that a plasma source is needed to generate

plasma, and that a chamber having walls is needed to contain the plasma. Dr.

Spencer also testifies that the POSITA at the time would have known that in order to

front-side etch the wafer as taught by Sekiya, a support for the back side (tape side)

of the dicing assembly of Sekiya is needed. According to Dr. Spencer, the POSITA

would have considered the plasma etch apparatus of Yamashita as offering a

reasonable chance of success in fulfilling these requirements. (Ex. 1009, ¶183).

As is described by Yamashita at ¶0063, and as testified by Dr. Spencer, a

POSITA would have considered two highly predicable techniques to introduce a

work piece such as the dicing assembly of Sekiya into a plasma etch chamber. One

is to have a robotic arm extend horizontally into the chamber, and to then have the

arm drop vertically to place the work piece on the support within the chamber. An

example is this technique is shown in Iwai at FIGS. 7-9. The other is to have the

robotic arm extend into the chamber with the work piece, where the work piece is

received by a lift mechanism of some type that places the work piece on the support.


69

An example of this technique is described by Shuffelbotham et al. (Ex. 1011) which

is discussed at background section V.B.1 of this Petition. According to Dr. Spencer,

the POSITA at the time would have considered either technique as offering a

reasonable chance of success in fulfilling the requirement that the dicing frame

assembly of Sekiya be placed on a substrate support within a plasma etch chamber.

And in particular, Dr. Spencer contends that the POSITA would have known that the

lift pins described by Yamashita at ¶0063 offer a reasonable chance of success in

fulfilling the requirement that the dicing frame assembly of Sekiya be placed on a

substrate support within an etch chamber (Ex. 1009, ¶184)

According to Dr. Spencer, the POSITA, knowing that front-side etching is

carried out in the method of Sekiya, would have also known that the tape side of the

dicing assembly of Sekiya must be supported by the substrate support within the

chamber. Dr. Spencer testifies that the substrate support 240 of Yamashita would be

considered by the POSITA to offer a reasonable chance of success in supporting the

dicing frame assembly of Sekiya. (Ex. 1009, ¶185)

Also, according to Dr. Spencer, the POSITA would have known that a

mechanism is needed to hold the dicing assembly on the support during plasma

etching, and that the electrostatic chuck 246 of Yamashita would have been

considered to offer a reasonable chance of success in fulfilling that need. Also, Dr.

Spencer points to the teachings of Iwai to demonstrate that the POSITA would have


70

considered electrostatic clamping of the dicing tape of the dicing frame assembly of

Sekiya as offering at least a reasonable chance of success. (Ex. 1009, ¶186)

As such, according to Dr. Spencer, the POSITA would have considered it

obvious to at least try the configuration taught by Yamashita to generate the plasma

needed to dice a wafer as taught by Sekiya. (Ex. 1009, ¶187)

As for the location of the lift pins of Yamashita (not shown but described in

paragraph ¶0063) relative to the electrostatic chuck 243 of Yamashita, Dr. Spencer

testifies that a POSITA would have generally considered one of two options, both

being highly predictable in an operative sense and in terms of their potential for

success. A first possible option is to have the lift pins within the electrostatic chuck,

and a second possible option is to have the lift pins outside a periphery of the

electrostatic chuck. Both options, according to Dr. Spencer, were notoriously well

known in the art well before the alleged invention of the ‘720 patent. Among these

finite available options (inside or external the chuck), Dr. Spencer testifies that the

POSITA would have considered locating the pins outside a periphery of the

electrostatic chuck as taught by Pellegrin as offering at least a reasonable expectation

of success. (Ex. 1009, ¶188)

In summary, based on the teachings of the cited references and the knowledge

of a POSITA, Dr. Spencer concludes that the combination of independent claim 1 of

the ‘720 patent is the result of choosing from a finite number of identified,


71

predictable solutions, with a reasonable expectation of success, such that the effort

was “obvious to try.” Specifically, it would have been manifestly obvious for a

POSITA before the alleged invention of the ‘720 patent to at least try to carry out the

plasma dicing method of Sekiya using a plasma dicing reactor such as that described

by Yamashita in which the dicing tape is face down and electrostatically clamped by

an electrostatic chuck as confirmed by Iwai, and to at least try a pin location such as

that described by Pellegrin. Such a combination includes all the limitations of

independent claim 1 of the ‘720 patent, and thus renders obvious independent claim

1 of the ‘720 patent. (Ex. 1009, ¶189)

And, as discussed previously, the primary reference to Sekiya expressly

teaches the subject matter of dependent claims 3 and 4, and thus these claims are also

squarely encompassed by the combination of references. Dependent claims 3 and 4

are also obvious. (Ex. 1009, ¶189)

IX. CONCLUSION

For the foregoing reasons, Petitioner respectfully requests institution of IPR

for claims 1 and 3-4 of the '720 patent because there is a reasonable likelihood that

Petitioner will prevail with respect to at least one of these claims challenged in this

Petition. Petitioner respectfully requests that these claims be declared unpatentable

and canceled.


72

Respectfully submitted,

By: /Adam C. Volentine/ Adam Volentine, Reg. No. 33289 Volentine & Whitt PLLC One Freedom Drive Reston, VA 20190 Tel: (571) 283-0720 Fax: (571) 283-0740

Date: May 22, 2017


73

X. APPENDIX – TABLE OF EXHIBITS

Exhibit No. Description

1001 U.S. Patent No. 9,202,720 (the ‘720 patent) (patent under inter partes review)

1002 Public PAIR screenshot show the ‘720 patent family

1003 U.S. Patent No. 8,802,545 (issued from the parent application of the ‘720 patent)

1004 Demand Letter sent by Patent Owner to customer of Petitioner

1005 U.S. Patent No. 6,456,158 (Sekiya)

1006 U.S. Patent Publication No. 2007/0238199 (Yamashita)

1007 U.S. Patent Publication No. 2006/0164785 (Pellegrin)

1008 U.S. Patent Publication No. 2010/0216313 (Iwai)

1009 Declaration of Dr. John Spencer

1010 Provisional Application No. 61/452,450

1011 U.S. Patent No. 5,669,977 (Shufflebotham et al.)

1012 U.S. Patent No. 6,935,466 (Lubomirsky et al.)

1013 U.S. Patent No. 6,951,821 (Hamelin et al.)

1014 U.S. Patent 7,449,071 (Aggarwal et al.)


74

1015 U.S. Patent No. 6,642,127 (Kumar et al.)

1016 U.S. Patent Publication No. 2004/0115901 (Sekiya ‘901)

1017 U.S. Patent No. 8,980,764 (the ‘764 patent) (challenged in IPR2017-01314)

1018 U.S. Patent Publication No. 2010/0048001 (Harikai et al.)

1019 U.S. Patent Publication No. 2008/0099431 (Kumar et al. ‘431) [cited in Spencer Declaration only]

1020 U.S. Patent Publication No. 2001/0019472 (Kanno et al.) [cited in Spencer Declaration only]

1021 (reserved)

1022 (reserved)

1023 (reserved)

1024 (reserved)

1025 (reserved)

1026 (reserved)

1027 (reserved)

1028 File History of the ‘720 Patent


75

XI. CERTIFICATE OF WORD COUNT

Relying on the word count of the word-processing system used to prepare this

Petition requesting inter partes review, it is certified that the length of this Petition is

13,773 words.

/Adam C. Volentine/ Adam C. Volentine Registration No. 33289


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XII. CERTIFICATE OF SERVICE

I hereby certify that on May 22, 2017, I caused a true and correct copy

of the forgoing materials:

• This Petition for Inter Partes Review of U.S. Patent No. 9,202,720

• Exhibits 1001-1020 and 1028

• Power of Attorney

to be served via Priority Mail Express ® on the following attorney of record

as listed in Public PAIR:

Russell Westerman

Plasma-Therm, LLC

10050 16th Street North

St. Petersburg FL 33716

/Adam C. Volentine/ Adam C. Volentine Registration No. 33289

Documents

Inter Partes U.S. Patent No. 9,202,720 IN THE UNITED ...€¦ · The ‘720 patent also purports to make a claim of priority to U.S. provisional application no. 61/452,450, filed