Taiwan Semiconductor Mfg Co Ltd v. Godo Kaisha IP Bridge 1

1. Case Identification

• Case #: IPR2017-00931
• Patent #: RE41,980
• Filed: February 17, 2017
• Petitioner(s): Taiwan Semiconductor Manufacturing Company Limited
• Patent Owner(s): Godo Kaisha IP Bridge 1
• Challenged Claims: 18, 19, 30-36, and 47-51

2. Patent Overview

• Title: Semiconductor Device and Method of Manufacturing the Same
• Brief Description: The ’980 patent discloses a semiconductor device structure designed to prevent moisture absorption while minimizing parasitic capacitance between metal wires. The invention uses a dual-layer surface-protecting film, where a first dielectric film with a low dielectric constant fills areas between metal wires, and a second, moisture-resistant dielectric film covers the first film and the metal wires to seal them from moisture, particularly around bonding pad openings.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 18, 19, 30-36, and 47-51 under 35 U.S.C. §102

• Prior Art Relied Upon: Ting (Patent 5,169,680).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ting teaches every element of the challenged claims. Independent claims 18 and 35 recite a semiconductor device with a specific protective structure. Petitioner mapped these limitations to the device in Ting’s Figure 5, asserting that Ting’s dielectric layer 40 corresponds to the claimed "surface protecting film." This layer in Ting comprises a lower section 42 of silicon dioxide (the claimed "first dielectric film" with a small dielectric constant) and an upper section 41 of silicon nitride (the "second dielectric film" with a higher moisture preventing function). Petitioner contended that Ting’s structure shows the bonding pad (46) and the second dielectric film (41) completely cover the first dielectric film (42), preventing its exposure, thus meeting the key limitation of claims 18 and 35.
  • Key Aspects: For dependent claims, Petitioner argued Ting’s disclosure of silicon dioxide for the first film and silicon nitride for the second film inherently satisfies limitations requiring a dielectric constant of 3.9 or less and specific material compositions. Furthermore, Petitioner asserted that Ting’s disclosure of optional barrier layers under the bonding pad means that an embodiment without them would have the bonding pad directly contacting the underlying metal wire, anticipating claim 33.

Ground 2: Obviousness of Claims 18, 19, 30-36, and 47-51 under 35 U.S.C. §103

• Prior Art Relied Upon: Ting (Patent 5,169,680) in view of Jeng (Patent 5,527,737).
• Core Argument for this Ground:
  • Prior Art Mapping: As an alternative to anticipation, Petitioner argued that to the extent Ting is found not to explicitly disclose every element, the combination with Jeng renders the claims obvious. Ting discloses a VLSI integrated circuit, which inherently requires plural metal wires. Jeng explicitly teaches that VLSI circuits contain millions of interconnecting lines. Jeng further teaches the desirability of filling the spaces between closely spaced interconnects with a low-dielectric-constant material (e.g., porous silicon dioxide) to reduce line-to-line capacitance, crosstalk, and signal delay. Petitioner argued that applying Jeng’s teachings to Ting’s structure satisfies any potentially missing claim elements.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Ting and Jeng because both address improving the performance of multilevel metallization in integrated circuits. A POSITA would have been motivated to use the low-k dielectric material taught by Jeng as the first dielectric film in Ting's device to gain the known and predictable advantages of reduced parasitic capacitance and improved device speed.
  • Expectation of Success: The combination involved applying a known technique (using low-k dielectrics between metal wires) from Jeng to a similar device (Ting's VLSI structure) to achieve a predictable result (improved electrical performance). A POSITA would have had a high expectation of success.

4. Key Claim Construction Positions

• "interlayer insulating film": This term was central to the petition. Petitioner noted that in a prior IPR (IPR2016-01331), the Board construed this term as "an insulating film located between but not within other layers." The prior petition was denied because Petitioner’s identified structure in Ting (dielectric layer 25) was found to be partially within another layer. In this petition, Petitioner modified its argument to assert that Ting's upper dielectric film 26 alone satisfies the Board's construction. Petitioner argued this new mapping aligns with the Board's construction and was even suggested as a possibility by the Board in the prior proceeding.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that institution should not be denied under 35 U.S.C. §325(d) despite the previously filed IPR2016-01331. The core argument was that this petition raises substantial new arguments that could not have been reasonably raised in the first petition.
• Petitioner asserted it could not have foreseen the Board’s specific, negative-limitation-based construction of "interlayer insulating film." This petition was filed in direct response to the Board’s decision, addressing the single deficiency the Board identified. Therefore, it was not an improper "second bite at the apple" but a good-faith effort to resolve an invalidity challenge based on the Board's clarified claim scope.

6. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claims 18, 19, 30-36, and 47-51 of Patent RE41,980 as unpatentable.