PTAB

IPR2018-00527

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 ’479 patent discloses bonding tips for semiconductor manufacturing made from electrically dissipative ceramic materials. The technology aims to prevent damage to sensitive electronic devices from electrostatic discharge (ESD) by allowing static charge to dissipate slowly from the bonding tip.

3. Grounds for Unpatentability

Ground 1: Anticipation over Shinji - Claims 37, 38, and 50 are anticipated by Shinji under 35 U.S.C. §102.

  • Prior Art Relied Upon: Shinji (International Publication No. WO 98/49121).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Shinji, published in 1998, discloses a method of using a wire bonding tool made from a dissipative, semiconductive zirconia sinter material. This material is explicitly chosen to provide "destaticizing" action, thereby preventing damage from static electricity. Petitioner contended that Shinji discloses every limitation of independent claims 37 and 50, which recite a method of bonding a device with a tip made of a dissipative material that has a resistance low enough to prevent charge discharge but high enough to avoid damaging current flow. For dependent claim 38, Petitioner’s expert calculated that Shinji’s disclosed surface and volume resistivity values correspond to a total resistance within the claimed range of 10⁵ to 10¹² ohms for a tool with industry-standard dimensions.
    • Key Aspects: Petitioner emphasized that during a prior inter partes reexamination of the ’479 patent, the Patent Owner did not dispute that Shinji disclosed all limitations of these claims, instead attempting unsuccessfully to antedate the reference.

Ground 2: Obviousness over Linn in view of Tan - Claims 37, 38, and 50 are obvious over Linn in view of Tan under 35 U.S.C. §103.

  • Prior Art Relied Upon: Linn (Patent 5,816,472) and Tan ("Solving Static Related Problems in Packaging, Marking, and Test," IEEE/CPMT Symposium, Dec. 1995).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Linn discloses a method of using a ceramic bonding tip (made of aluminum oxide) for automated assembly of electronic devices. However, Linn does not explicitly state that its ceramic material is dissipative. Tan addresses the known problem of ESD damage during semiconductor backend assembly and testing, which includes the bonding processes taught by Linn. Tan explicitly teaches making production tools, such as pick-and-place handlers, from static dissipative materials with a surface or volume resistance between 10⁵ and 10⁹ ohms to safely slow the discharge of static electricity.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would have recognized that the ESD damage described by Tan was a known problem applicable to the bonding process taught by Linn. A POSITA would combine Tan's teaching of using dissipative materials with Linn's ceramic bonding tool to prevent device damage, a straightforward application of a known solution to a known problem. This combination would merely apply a known technique (using a dissipative tip) to a known device (Linn's bonding tip) to achieve predictable results.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in making Linn's bonding tip from the dissipative materials taught by Tan, as Tan explains these materials are suitable for various automated production tools in the electronics industry to prevent ESD damage. The combination would have been expected to yield a reliable bonding tool that protects against static discharge.

4. Key Technical Contentions (Beyond Claim Construction)

  • Priority Date & Antedating Prior Art: Petitioner preemptively argued against the Patent Owner’s likely attempt to antedate the prior art based on inventor declarations filed in a prior reexamination. Petitioner contended these declarations are insufficient to establish an earlier invention date because they fail to show conception and reduction to practice of the claimed invention and, critically, fail to demonstrate diligence during a 291-day period of inactivity between the alleged conception and the provisional application filing date.
  • Enablement of Prior Art: Petitioner also anticipated that the Patent Owner might argue the Shinji reference is non-enabling. Petitioner asserted that a prior art publication is presumptively enabling and that the Patent Owner’s previous arguments to the contrary, based on one inventor's limited personal experience, were subjective and insufficient to rebut this presumption.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review (IPR) and the cancellation of claims 37, 38, and 50 of the ’479 patent as unpatentable.