PTAB

IPR2014-01244

Geox Spa v. OutDry Technologies Corp

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1. Case Identification

2. Patent Overview

  • Title: Package for an Electronic Component and Method of Making the Same
  • Brief Description: The ’641 patent discloses a compact semiconductor package designed to manage thermal stress. The invention centers on a structure comprising a substrate with terminals, an electronic component (die) attached to the substrate, a compliant layer positioned between the die and the substrate to absorb stress, and an encapsulant to protect the component.

3. Grounds for Unpatentability

Ground 1: Obviousness over Fjelstad and Smith - Claims 1-20 are obvious over Fjelstad in view of Smith.

  • Prior Art Relied Upon: Fjelstad (Patent 5,679,977) and Smith (Patent 5,801,441).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Fjelstad disclosed a semiconductor package meeting nearly all limitations of independent claims 1 and 12. Fjelstad teaches a die mounted on a substrate with terminals, along with a "buffer layer" between the die and substrate and an encapsulant over the die. Petitioner contended that Fjelstad’s "buffer layer," described as potentially being made of an elastomer, corresponded to the claimed "compliant layer." To address the "flowable" encapsulant limitation, Petitioner turned to Smith, which explicitly teaches applying a "flowable liquid encapsulant" that solidifies to protect a semiconductor die. Petitioner mapped limitations of dependent claims to further disclosures in Fjelstad, such as the use of solder balls for terminals and specific substrate materials.
    • Motivation to Combine: Petitioner asserted a Person of Ordinary Skill in the Art (POSITA) would combine Fjelstad's packaging structure with Smith's encapsulation method to enhance package reliability. A POSITA would recognize the well-known benefits of using a flowable liquid encapsulant, as taught by Smith, to provide superior mechanical and environmental protection for the fragile die and wire bonds in Fjelstad’s assembly. This combination represented the use of a known technique (flowable encapsulation) to improve a similar device (a semiconductor package).
    • Expectation of Success: A POSITA would have had a high expectation of success, as combining the references involved the straightforward application of a conventional encapsulation process to a conventional package structure to achieve predictable protective benefits.

Ground 2: Obviousness over Distefano and Smith - Claims 1-20 are obvious over Distefano in view of Smith.

  • Prior Art Relied Upon: Distefano (Patent 5,148,265) and Smith (Patent 5,801,441).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Distefano taught a chip package with a die bonded to a flexible circuitized substrate (e.g., a polyimide tape), which functions as the claimed "compliant layer" by flexing to accommodate thermal expansion. Distefano further disclosed terminals on the substrate for external connection. Petitioner argued this structure met most limitations of independent claim 1. However, Distefano did not explicitly disclose an encapsulant surrounding the die. Petitioner again cited Smith for its teaching of applying a flowable encapsulant to protect the die, arguing this would supply the missing element.
    • Motivation to Combine: A POSITA reviewing Distefano’s design would have been motivated to add an encapsulant for protection and structural integrity, which are standard considerations in semiconductor packaging. Smith provided an exemplary and well-known method for such encapsulation. The motivation was to improve the robustness and reliability of the Distefano package, a predictable and common design goal.
    • Expectation of Success: The process of applying a liquid encapsulant was a routine and predictable manufacturing step, ensuring a high likelihood of successfully incorporating Smith’s teaching into Distefano’s assembly.

Ground 3: Anticipation/Obviousness over Fjelstad - Claims 1-20 are anticipated by, or in the alternative, obvious over Fjelstad.

  • Prior Art Relied Upon: Fjelstad (Patent 5,679,977).
  • Core Argument for this Ground:
    • Prior Art Mapping: As an alternative to the combination grounds, Petitioner contended Fjelstad alone rendered the claims unpatentable. For anticipation under 35 U.S.C. §102, Petitioner argued that Fjelstad’s disclosed "buffer layer" made of elastomeric material inherently possesses the property of being "compliant," thus expressly or inherently disclosing every limitation of the claims. Fjelstad also discloses an encapsulant applied over the assembly. For the alternative obviousness argument under §103, Petitioner asserted that even if the "compliant" nature was not inherent, it would have been obvious to a POSITA to select a known compliant material (like an elastomer) for Fjelstad’s buffer layer to achieve the well-understood goal of mitigating thermal stress in semiconductor packages.
  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations of Fjelstad, Smith, Distefano, and Crane (Patent 5,198,881), which relied on similar motivations to combine known packaging features to enhance structural integrity and reliability.

4. Key Claim Construction Positions

  • "compliant layer": Petitioner argued this term was central to the patentability of the claims and should be construed according to its plain and ordinary meaning as a layer that is "flexible, pliable, or yielding." Petitioner contended that this construction was broad enough to encompass structures like Fjelstad's elastomeric "buffer layer" and Distefano's flexible tape substrate. This interpretation was critical to Petitioner's argument that these prior art references disclosed this key limitation, preventing the Patent Owner from arguing for a narrower construction requiring specific durometer or modulus values not recited in the claims.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of the ’641 patent as unpatentable.