iTakeaway: If the Board does not adopt a party’s claim construction and that party’s arguments are based upon the flawed construction, then it is likely that party will not prevail.
In its Final Written Decision, the Board found that all challenged claims (1-4) of the ’697 Patent are unpatentable under 35 U.S.C. §§ 102(a) and 103 on all but two instituted grounds. The ’697 Patent relates generally to methods of fabricating integrated circuits on a semiconductor wafer, and it discloses that maintaining a consistent height across the wafer surfaces is crucial to the fabrication process.
The Board began with claim construction, stating that the terms are construed according to their broadest reasonable interpretation in light of the patent specification. The Board noted that the parties dispute the meaning of the limitation “determining a standard uniform pattern density for the surface of the semiconductor wafer.” Regarding the term “pattern density for the surface of the semiconductor wafer,” the Board adopted the definition of the term in the ’697 Patent of “the pattern density of topography is defined as the ratio of the overall surface area of raised areas on a wafer surface to the total surface area of the wafer.” The Board then analyzed the term “standardized,” looking to the use of the word within the claims of the ’697 Patent and the dictionary definition to find that the claimed method step incorporates a flexible standard for reducing variation in pattern density when determining the surface area ratio of active conductive traces and dummy raised areas for one or more surface layers on one or more wafers to be polished. In adopting this construction, the Board rejected Patent Owner’s construction. The Board then reviewed the term “uniform,” looking to the claim language to find that “uniform” modifies “pattern” in claim 1 and limits the pattern of raised areas on a wafer surface to a “uniform pattern.” Therefore, the Board concluded that “determining a standard uniform pattern density for the surface of the semiconductor wafer” means “determining a uniform arrangement of active conductive traces and dummy raised areas on a surface of a semiconductor wafer as a ratio of the overall surface area of raised areas on the wafer surface to the total surface area of the wafer, so as to reduce variation in pattern density with respect to one or more surface layers of one or more wafers to be polished.”
The Board then looked at the first grounds of unpatentability – anticipation of claims 1-4 by Ueno – concentrating on the disputed limitations, “determining a standard uniform pattern density for the surface of the semiconductor wafer” and “forming the standardized uniform pattern density.” Patent Owner argued that Ueno did not disclose a “standardized” pattern density, but the Board found that this argument was based upon Patent Owner’s proposed claim construction, which was not adopted. Patent Owner also argued that Ueno only takes into account the spacing between active lines, but not the width of active and dummy wiring, which does not equate to a “standardized” pattern density. The Board, relying upon Petitioner’s expert’s testimony, found this argument inconsistent with the ’697 Patent claims and written description.
The Board next analyzed whether claims 1 and 2 were obvious over Chesebro and Rostoker. Patent Owner again argued that the limitations “determining a standard uniform pattern density for the surface of the semiconductor wafer” and “forming the standardized uniform pattern density” are not taught by the combination. Petitioner’s expert opined that one of ordinary skill in the art at the time of the ’697 Patent filing date would have been familiar with computer implemented design programs, such as disclosed in Chesebro, to design IC devices, and Patent Owner did not contest this. Therefore, the Board found there was no dispute that Chesebro or Chesebro and Rostoker discloses an “arrangement of active conductive traces and dummy raised areas on a surface of a semiconductor wafer.” The Board also stated there was no dispute over whether Chesebro discloses a “uniform” arrangement of raised areas on a semiconductor surface; therefore, the dispute between the parties concerned the interpretation of determining a “standardized” pattern density. Again, the Board found that Patent Owner’s argument is based on its flawed claim construction, and is inconsistent with the ’697 Patent claims and written description.
Next, the Board reviewed whether claims 3 and 4 were obvious over Chesebro, Rostoker, and Nowak. The Board agreed with Petitioner’s expert’s testimony regarding Nowak’s disclosure of the additional limitations of claims 3 and 4. Patent Owner again argued that Nowak does not remedy the deficiency of Chesebro with respect to “determining a standardized uniform pattern density,” but the Board again found that this was based upon a flawed claim construction. Citing to its expert declaration, Patent Owner further argued that one of ordinary skill in the art would not have combined Nowak with Chesebro and Rostoker because Nowak teaches away from including Rostoker in the asserted prior art combination. The Board agreed with Petitioner that Patent Owner’s argument fails to account for the developments in the art that occurred after Nowak’s May 1988 filing date and prior to the January 1996 filing date of the ’697 Patent.
Then the Board addressed Petitioner’s allegation that claims 1-4 were obvious over Lee and Rostoker. Patent Owner’s expert testified that one of ordinary skill in the art would not have had a reason to substitute CMP for Lee’s etch back technique. The Board found that Petitioner’s expert did not contradict or refute this critique, and found that there would be no reason to combine Lee and Rostoker. Therefore, the Board found that Petitioner has not shown by a preponderance of the evidence that claims 1-4 were obvious over Lee and Rostoker.
Finally, the Board examined whether claim 2 was obvious over Lee, Rostoker, and Juengling. The Board found that Petitioner’s arguments do not address the deficiency asserted in the combination of Lee and Rostoker. Therefore, Petitioner has not shown by a preponderance of the evidence that claim 2 of the ’697 Patent was obvious over Lee, Rostoker, and Juengling.
BlackBerry Corporation v. NXP B.V., IPR2013-00232
Paper 25: Final Written Decision
Dated: September 19, 2014
Patent: 5,639,697
Before: Jennifer S. Bisk, Trenton A. Ward, and Brian P. Murphy
Written by: Murphy
Related Proceedings: NXP B.V. v. Research In Motion Ltd., Case No. 6:12-cv-498 (M.D. Fla.); IPR2013-00233
