DCT

3:18-cv-01052

George Tzanavaras v. DR Uri Cohen

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:18-cv-01052, N.D. Cal., 02/16/2018
  • Venue Allegations: Venue is alleged to be proper in the Northern District of California because the defendant resides in the district and a substantial part of the events giving rise to the claim occurred there.
  • Core Dispute: Plaintiff alleges he is a joint inventor of four patents for which Defendant is the sole listed inventor and seeks a court order to correct inventorship pursuant to 35 U.S.C. § 256.
  • Technical Context: The technology relates to semiconductor manufacturing, specifically the creation of multiple metallic "seed layers" to enable void-free filling of high-aspect-ratio trenches for electrical interconnects.
  • Key Procedural History: The complaint alleges the parties have a history of collaboration, including being named as joint inventors on a prior, related patent (U.S. Patent No. 5,421,987). It also alleges they co-founded a partnership, Jets Technology, to commercialize the disputed technology before a falling out, after which Defendant allegedly filed for the patents-in-suit listing only himself as inventor.

Case Timeline

Date Event
1995-06-06 U.S. Patent No. 5,421,987, listing both Tzanavaras and Cohen as inventors, is issued
1999-08-25 Jets Technology partnership co-founded by Tzanavaras, Cohen, and a third party
1999-10-02 Earliest priority date for all four patents-in-suit
2000-01-01 Tzanavaras and Cohen present co-authored VMIC article
2001-07-01 Cohen allegedly absconds with partnership documents
2003-02-11 U.S. Patent No. 6,518,668 issues
2003-08-28 Jets Technology partnership is dissolved
2005-08-02 U.S. Patent No. 6,924,226 issues
2007-04-03 U.S. Patent No. 7,199,052 issues
2007-10-16 U.S. Patent No. 7,282,445 issues
2018-02-16 Complaint for Correction of Inventorship filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 6,518,668 - "Multiple Seed Layers for Metallic Interconnects," issued Feb. 11, 2003

The Invention Explained

  • Problem Addressed: In advanced semiconductor manufacturing, filling very narrow and deep trenches or vias with conductive metal (like copper) is difficult. Standard deposition techniques often result in voids or incomplete filling. Specifically, physical vapor deposition (PVD) provides poor coverage on trench sidewalls, while chemical vapor deposition (CVD) provides good sidewall coverage but is often too thin on the top "field" surface to provide the low electrical resistance needed for subsequent electroplating (Compl. ¶25; ’668 Patent, col. 3:48-67).
  • The Patented Solution: The patent describes a structure with two distinct seed layers to solve this problem. First, a thin, "substantially conformal" seed layer (e.g., deposited by CVD) is applied to ensure continuous coverage on the bottom and sidewalls of the trench. Second, a thicker, "substantially non-conformal" seed layer (e.g., deposited by PVD) is applied over the first layer. This second layer builds up thickness on the field, providing a low-resistance path for uniform electroplating, without excessively narrowing the trench opening ('668 Patent, Abstract; col. 5:7-27). Figure 1 of the patent illustrates this two-layer structure within a trench.
  • Technical Importance: This two-layer approach was designed to enable the reliable, void-free filling of high-aspect-ratio interconnects, a critical requirement for manufacturing smaller and more powerful integrated circuits (Compl. ¶25; ’668 Patent, col. 2:11-24).

Key Claims at a Glance

  • The complaint alleges contribution to the invention claimed in multiple dependent claims, which rely on independent claim 1 (Compl. ¶50).
  • Independent Claim 1 of the ’668 Patent recites the core structural elements:
    • A patterned insulating layer on a substrate with at least one opening.
    • A barrier layer over the insulating layer.
    • A first seed layer comprising a "substantially conformal seed layer."
    • A second seed layer over the first, comprising a "substantially non-conformal seed layer" that is thicker than the first seed layer over the field.
    • An electroplated metallic layer over the second seed layer.
  • The complaint reserves the right to assert other claims (Compl. ¶50).

U.S. Patent No. 6,924,226 - "Methods for Making Multiple Seed Layers for Metallic Interconnects," issued Aug. 2, 2005

The Invention Explained

  • Problem Addressed: The patent addresses the same manufacturing challenge as the ’668 patent: achieving reliable, void-free copper filling in high-aspect-ratio features on a semiconductor wafer (’226 Patent, col. 3:56–4:18).
  • The Patented Solution: Rather than claiming the structure itself, this patent claims the method of creating it. The inventive method involves the sequential steps of depositing a substantially conformal seed layer, then depositing a substantially non-conformal seed layer over it, and finally electroplating a metallic layer to fill the opening ('226 Patent, Abstract; col. 1:55–2:7). The method is the process for manufacturing the structure claimed in the ’668 Patent.
  • Technical Importance: This patent protects the manufacturing process that creates the advantageous multi-seed-layer structure, providing a different dimension of intellectual property protection for the same core technology (Compl. ¶25).

Key Claims at a Glance

  • The complaint alleges contribution to the invention claimed in multiple dependent claims, which rely on independent claim 1 (Compl. ¶53).
  • Independent Claim 1 of the ’226 Patent recites the key method steps:
    • Depositing a substantially conformal seed layer over the field and inside surfaces of an opening.
    • Depositing a substantially non-conformal seed layer over the conformal seed layer, with the non-conformal layer being thicker over the field.
    • Electroplating a metallic layer over the non-conformal seed layer.
  • The complaint reserves the right to assert other claims (Compl. ¶53).

U.S. Patent No. 7,199,052 - "Seed Layers for Metallic Interconnects," issued Apr. 3, 2007

  • Technology Synopsis: This patent claims a method for creating metallic interconnects using a multi-layer seed structure. Unlike the ’226 patent, the method claimed here involves depositing the non-conformal (PVD) seed layer before depositing the conformal (CVD) seed layer, representing a reversal of the process steps (’052 Patent, Claim 4).
  • Asserted Claims: The complaint alleges contribution to the inventions claimed in at least claims 4, 6, 10, 26, and 53 (Compl. ¶56).
  • Accused Features: This is a correction of inventorship action; no features are accused of infringement. The allegation is that Plaintiff contributed to the conception of the claimed method (Compl. ¶56).

U.S. Patent No. 7,282,445 - "Multiple Seed Layers for Interconnects," issued Oct. 16, 2007

  • Technology Synopsis: This patent claims a method for depositing two or more seed layers using an automated "cluster tool." The claims recite configuring and operating an automatic controller to move a substrate between different deposition chambers (e.g., a CVD chamber and a PVD chamber) without breaking vacuum, thereby creating the multi-layer structure (’445 Patent, Abstract; Claim 1).
  • Asserted Claims: The complaint alleges contribution to the inventions claimed in at least claims 1, 8, and 18 (Compl. ¶59).
  • Accused Features: This is a correction of inventorship action; no features are accused of infringement. The allegation is that Plaintiff contributed to the conception of the claimed automated method (Compl. ¶59).

III. The Accused Instrumentality

This section is not applicable, as the complaint is for correction of inventorship and does not allege infringement by any product or service.

IV. Analysis of Infringement Allegations

This section is not applicable, as the complaint does not contain counts for patent infringement.

V. Key Claim Terms for Construction

The complaint does not provide sufficient detail for analysis of specific claim terms for construction, as its allegations focus on contribution to the overall inventive concepts rather than disputes over the scope of specific terms. The core of the dispute appears to be factual—concerning the nature and extent of the collaboration—rather than legal interpretation of claim language.

VI. Allegations Regarding Inventorship and Deceptive Intent

The complaint alleges that Plaintiff George Tzanavaras is a joint inventor of the patents-in-suit and that Defendant Uri Cohen intentionally and deceptively omitted him from the applications (Compl. ¶¶10, 46-48). The factual basis for these allegations includes:

  • History of Collaboration: The parties were previously named as joint inventors on U.S. Patent No. 5,421,987 for a related technology and co-founded a partnership, Jets Technology, to commercialize the disputed seed layer inventions (Compl. ¶¶24, 27).
  • Joint Experimentation: The complaint alleges the parties jointly developed the technology, with Tzanavaras contributing his expertise and equipment for PVD thin film deposition, a key element of the claimed inventions (Compl. ¶¶25-26, 29).
  • Documentary Evidence: The complaint presents several pieces of documentary evidence to corroborate the claim of joint invention.
    • The complaint alleges a notebook entry from October 1999, written by Cohen, credits "George" (Tzanavaras) for a sputter-deposition step (Compl. ¶31). This notebook entry is depicted in the complaint as direct evidence of Tzanavaras's contribution.
    • The complaint includes side-by-side images comparing Scanning Electron Microscope (SEM) photographs from a 2000 technical article co-authored by both Tzanavaras and Cohen with identical figures (Figures 5 and 6) that appear in the '668 patent (Compl. ¶34). This visual evidence is used to directly link their joint public work to the patent application filed solely by Cohen.
  • Deceptive Intent: The complaint alleges that after the parties' relationship deteriorated, Cohen "absconded with many of Jets Technology's proprietary documents," including lab notebooks and the SEM photographs (Compl. ¶40). It further alleges that Cohen prosecuted the patents-in-suit pro se, using these documents while knowingly misrepresenting to the USPTO that he was the sole inventor with an intent to deceive (Compl. ¶¶45-48). These allegations form the basis for the request to declare the case "exceptional" under 35 U.S.C. § 285 and award attorneys' fees (Compl. Prayer for Relief ¶C).

VII. Analyst’s Conclusion: Key Questions for the Case

This case is not a typical infringement dispute but a contest over ownership and inventorship. The outcome will likely depend on the resolution of two central questions:

  • A central issue will be one of corroboration: can the Plaintiff provide sufficient corroborating evidence—such as the cited notebook entry, co-authored publications, and third-party testimony—to meet the "clear and convincing" evidentiary standard required to rebut the legal presumption that the named inventor on an issued patent is correct?
  • A key factual question will be the nature of the contribution: assuming the collaboration occurred as alleged, the court must determine whether the Plaintiff's contributions, particularly his work on PVD processes, rose to the level of contributing to the "conception" of the claimed inventions as understood in patent law, or if they were merely the work of a skilled technician carrying out the ideas of another.
  • A final question, relevant to the request for attorneys' fees, will be one of intent: if the court finds Tzanavaras to be a co-inventor, it will then need to determine whether Cohen's omission of Tzanavaras was the result of a good-faith disagreement over the legal standard of inventorship or constituted the kind of inequitable conduct or litigation misconduct that would render the case "exceptional."