Lone Star Silicon Innovations v. Iancu

CourtCourt of Appeals for the Federal Circuit
DecidedMarch 25, 2020
Docket19-1669
StatusUnpublished

This text of Lone Star Silicon Innovations v. Iancu (Lone Star Silicon Innovations v. Iancu) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Lone Star Silicon Innovations v. Iancu, (Fed. Cir. 2020).

Opinion

Case: 19-1669 Document: 55 Page: 1 Filed: 03/25/2020

NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________

LONE STAR SILICON INNOVATIONS LLC, Appellant

v.

ANDREI IANCU, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE, Intervenor ______________________

2019-1669 ______________________

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2017- 01566. ______________________

Decided: March 25, 2020 ______________________

TIMOTHY P. MALONEY, Fitch, Even, Tabin & Flannery, Chicago, IL, argued for appellant. Also represented by NICHOLAS T. PETERS, DAVID ALLEN GOSSE.

DANIEL KAZHDAN, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for intervenor. Also represented by MAI-TRANG DUC DANG, Case: 19-1669 Document: 55 Page: 2 Filed: 03/25/2020

THOMAS W. KRAUSE, BRIAN RACILLA, FARHEENA YASMEEN RASHEED, MEREDITH HOPE SCHOENFELD. ______________________

Before LOURIE, SCHALL, and CHEN, Circuit Judges. LOURIE, Circuit Judge Lone Star Silicon Innovations LLC (“Lone Star”) ap- peals from the final written decision of the Patent Trial and Appeal Board (“Board”) holding claims 2 and 7 of U.S. Pa- tent 6,388,330 (the “’330 patent”) unpatentable as obvious. For the reasons described below, we affirm. BACKGROUND Lone Star is the owner of the ’330 patent, which is di- rected to semiconductor etch stop layers with low dielectric constants. An etch stop layer is made of material that is resistant to the process used to etch other layers of a semi- conductor device and is deposited between two other layers to allow those layers to be etched separately. The invention of the ’330 patent reduces capacitive coupling between lay- ers of metal interconnects by reducing the dielectric con- stant of the etch stop layers to below 5.5, in contrast to the prior art dielectric constants of 7.5 or higher. Independent claims 1 and 6, which are not at issue in this appeal, are directed to integrated circuits comprising an “etch stop layer of silicon nitride . . . having a dielectric constant below 5.5.” ’330 patent col. 6 ll. 62–64, col. 7 ll. 22–24, col. 8 ll. 4–6. Dependent claims 2 and 7, which are at issue in this appeal, are directed to the integrated cir- cuits of claims 1 and 6 respectively, wherein the silicon ni- tride etch stop layer is a “multilayer structure.” Id. col. 7 ll. 3–4, col. 8 ll. 12–13. Micron Technology, Inc. (“Micron”) petitioned for inter partes review of claims 1, 2, 5, 6, 7, and 10. Micron asserted a single ground in its petition, namely, that the challenged Case: 19-1669 Document: 55 Page: 3 Filed: 03/25/2020

LONE STAR SILICON INNOVATIONS v. IANCU 3

claims were obvious over Watatani 1 in view of Tanaka. 2 The petition stated: “The Ground is explained below and is supported by the Declaration of Dr. Richard B. Fair.” J.A. 70. Within that single ground, Micron asserted two sepa- rate theories regarding the prior art’s teaching of the “mul- tilayer structure” limitation in claims 2 and 7. In its first theory, Micron contended that “Watatani expressly de- scribes an etch stop layer that includes ‘three or more lay- ers’ of silicon nitride.” J.A. 105 (citing Watatani col. 7 ll. 54–55). In its second theory, Micron contended that “[s]uch multilayer silicon nitride layers were well known in the prior art,” and Micron supported this second theory with declaration testimony from its expert as well as prior art references Watatani, SST 1987, 3 and Wang. 4 See J.A. 105– 07; see also J.A. 81–82 (“It Was Well Known In The Prior Art To Form Multilayer Silicon Nitride Etch Stop Films”). The Board instituted review of the challenged claims. J.A. 209. For the “multilayer structure” of claims 2 and 7, the Board rejected Micron’s first theory, i.e., the theory based on the description in Watatani. J.A. 224 (“On this record, we agree with Patent Owner that Watatani does not describe an etch stop layer that includes three or more layers of silicon nitride.”). But the Board expressly

1 U.S. Patent 6,153,511. 2 Masayuki Tanaka et al., Low-k SiN Film for Cu In- terconnects Integration Fabricated by Ultra Low Tempera- ture Thermal CVD, in 1999 SYMPOSIUM ON VLSI TECHNOLOGY, DIGEST OF TECHNICAL PAPERS, 47–48 (Bus. Center for Acad. Societies Japan, 1999). 3 Novellus Sys., Continuous Process CVD System, 30 SOLID STATE TECH., no. 10, Oct. 1987, at 49–50. 4 U.S. Patent 6,017,791. Case: 19-1669 Document: 55 Page: 4 Filed: 03/25/2020

acknowledged that Micron had asserted a second inde- pendent theory for the “multilayer structure” limitation: Petitioner’s contentions regarding claims 2 and 7 are not, however, based solely on Watatani’s disclo- sure of multilayer etch stops. Petitioner also con- tends that “multilayer silicon nitride layers were well known in the prior art.” J.A. 225. The Board found that Micron’s evidence—includ- ing the teachings of SST 1987 and Wang—was “sufficient to support its contention that multilayer silicon nitride lay- ers were known in the art.” J.A. 226. Lone Star filed a request for rehearing, arguing that the Board exceeded its authority by instituting review of claims 2 and 7 “based on a new ground not asserted in the Petition.” J.A. 241. The Board denied Lone Star’s request, finding that the institution decision relied on additional prior art references “in the same way” that Micron’s peti- tion did, namely, “as evidence of the knowledge of a person of ordinary skill in the art.” J.A. 258. The Board noted that Lone Star “cites no authority for the proposition that a reference relied upon to show that a claim limitation is within the knowledge of a [person of ordinary skill in the art] must be expressly included in the list of references that denominate the ground.” J.A. 259; see J.A. 258 (“Our reli- ance on SST 1987, however, does not transform the insti- tuted ground into a ‘new ground,’ as argued by Patent Owner.”). In its patent owner response, Lone Star again raised its contention that the Board had exceeded its authority and also addressed the merits of the obviousness challenge. Micron argued in reply that the instituted ground based on Watatani, Tanaka, and the knowledge of a person of ordi- nary skill had been asserted in the petition. J.A. 378–80. Micron also submitted a second declaration from its expert Case: 19-1669 Document: 55 Page: 5 Filed: 03/25/2020

LONE STAR SILICON INNOVATIONS v. IANCU 5

declarant, Dr. Fair, who cited yet another reference, Yota, 5 to support his opinion that that multilayer silicon nitride films were well-known in the art. See J.A. 890–94. Lone Star believed that portions of Micron’s reply im- properly relied on new evidence, particularly those por- tions that relied on Dr. Fair’s citations to additional exhibits, such as Yota, that were not previously submitted with Micron’s petition. See J.A. 1483–85. The parties jointly requested permission from the Board to submit ad- ditional briefing, which the Board allowed. Id. Lone Star thus had the opportunity to submit a sur-reply in which it addressed Dr. Fair’s second declaration, including his reli- ance on Yota. See J.A. 397–99. In its final written decision, the Board held all of the challenged claims, including claims 2 and 7, obvious over Watatani in view of Tanaka. J.A. 2. The Board again re- jected Lone Star’s argument that the Board had exceeded its authority and again emphasized that its institution de- cision and final written decision properly relied on addi- tional references like SST 1987 “in the same way as it was relied upon in the Petition: as evidence that multilayer sil- icon nitride layers were known in the prior art.” J.A. 42.

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