PTAB

IPR2018-00525

Xilinx Inc v. Anza Technology Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Electrically Dissipative Ceramic Bonding Tips
  • Brief Description: The ’548 patent is directed to a method of using a bonding tool tip made from an electrically dissipative material for creating electrical connections on devices. The method allows for the dissipation of static charge in a smooth, controlled manner, which is intended to prevent damage to sensitive electronic components from electrostatic discharge (ESD) during the bonding process.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claim 3 under §102 over Shinji

  • Prior Art Relied Upon: Shinji (WO 98/49121).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Shinji discloses every element of claim 3. Shinji describes a method of using a wire bonding tool made from a "destaticizing" semiconductive zirconia sinter, which is an electrically dissipative material. The reference explicitly teaches that this material composition allows static electricity to be "released at a reasonable speed" and "gradually," preventing a sudden discharge that could damage the device being bonded. This directly corresponds to claim 3’s limitation of "allowing an essentially smooth current to dissipate" in a manner that is "low enough so as not to damage said device." Shinji further illustrates the use of this tool for bonding a material (wire) to a device (magnetic disc device), thus teaching all steps of the claimed method.

Ground 2: Obviousness of Claim 3 under §103 over Linn in view of Tan

  • Prior Art Relied Upon: Linn (Patent 5,816,472) and Tan (Solving Static Related Problems in Packaging, Marking, and Test, IEEE/CPMT Symposium, Dec. 4, 1995).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Linn discloses a method of using a bonding tool made of aluminum oxide ceramic for tape automated bonding but does not explicitly describe the material as dissipative. Tan addresses the known problem of ESD damage in integrated circuit (IC) handling and assembly, teaching the use of "static dissipative materials" for the tips of production tools (e.g., pick-and-place handlers) to "slow down the discharge rate and prevent ESD damage." Tan specifies that these materials should have a volume resistance between 10⁵ and 10⁹ ohms. The combination of Linn’s bonding tool method with Tan’s teaching of a dissipative tip for preventing ESD in analogous tools renders claim 3 obvious.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would have understood that the ESD-related device damage described by Tan is a well-known problem in semiconductor manufacturing, including the bonding processes taught by Linn. A POSITA would combine Tan's solution—using a dissipative material for the tool tip—with Linn's bonding tool to prevent static discharge damage, improve reliability, and increase manufacturing yields. This would have been a simple application of a known solution to a known problem.
    • Expectation of Success: The combination involved applying a known technique (dissipative materials for ESD prevention) to a known device (a bonding tool) to achieve a predictable result (preventing damage from static discharge). Therefore, a POSITA would have had a high and reasonable expectation of success.

4. Key Claim Construction Positions

  • Petitioner submitted that claim 3 of the ’548 patent should be given its plain and ordinary meaning and that no specific constructions are necessary to find the claim invalid.
  • However, Petitioner noted that in prior litigation, the Patent Owner and courts have construed related terms. Petitioner argued the Broadest Reasonable Interpretation (BRI) standard in an inter partes review (IPR) should be at least as broad as these constructions:
    • “dissipative material”: Previously construed as "a material having an electrical resistance in the range between completely insulative and completely conductive, excluding both endpoints" (court construction).
    • “essentially smooth current”: Previously construed as "a discharge of electrical current that avoids sudden surges" (patentee and court construction).

5. Key Technical Contentions (Beyond Claim Construction)

  • Priority Date and Enablement: Petitioner preemptively addressed the Patent Owner’s anticipated arguments regarding the priority date of the ’548 patent and the enablement of the Shinji reference, which were raised in a prior reexamination of the parent ’864 patent.
    • Petitioner argued that the challenged claim should not be entitled to a conception date earlier than its provisional filing date. It asserted that inventor declarations previously submitted to antedate prior art were insufficient, citing a failure to demonstrate the requisite diligence and noting long, unaccounted-for periods of inactivity between the alleged conception and filing.
    • Petitioner also contended that Shinji is presumptively enabling as a prior art printed publication. It argued that any attempt by the Patent Owner to claim Shinji is non-enabling would be an improper attempt to shift the burden, as proof of efficacy is not required for a reference to be enabled for the purpose of anticipation.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claim 3 of Patent 6,935,548 as unpatentable under 35 U.S.C. §§ 102 and 103.