ASM IP Holding B.V. v. Hitachi Kokusai Electric, Inc.

1. Case Identification

• Case #: IPR2018-01523
• Patent #: 7,622,007
• Filed: August 7, 2018
• Petitioner(s): ASM IP HOLDING B.V.
• Patent Owner(s): HITACHI KOKUSAI ELECTRIC INC.
• Challenged Claims: 1-6

2. Patent Overview

• Title: Substrate Processing Apparatus and Method of Producing Semiconductor Device
• Brief Description: The ’007 patent relates to a substrate processing apparatus, specifically a batch-type vertical Chemical Vapor Deposition (CVD) furnace. The invention focuses on the configuration of reaction gas supply nozzles, particularly claiming nozzles with a substantially elliptic cross-sectional shape where the short axis is oriented toward the semiconductor wafers being processed.

3. Grounds for Unpatentability

Ground 1: Obviousness over Saito in view of Oosterlaken - Claims 1-2 and 4-5 are obvious over Saito in view of Oosterlaken.

• Prior Art Relied Upon: Saito (Patent 6,383,300) and Oosterlaken (Application # 2003/0111013).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Saito taught a vertical CVD apparatus highly similar to the one claimed in the ’007 patent, disclosing most elements of independent claims 1 and 4, such as the reaction container, heater, and a plurality of L-shaped nozzles of different lengths disposed apart from the inner wall. The Petitioner contended that the key limitations not taught by Saito—namely the nozzles’ "substantially elliptic shape" (limitation 1[h]) and the vertical portion having a larger cross-sectional area than the horizontal portion (limitation 1[g])—were expressly disclosed by Oosterlaken. Oosterlaken taught using elliptically-shaped gas injector nozzles with the short axis oriented toward the wafers to improve deposition uniformity and reduce unwanted deposition inside the nozzles, particularly for reactive Si-Ge films.
  • Motivation to Combine: A person of ordinary skill in the art (POSA) would combine Saito's versatile CVD apparatus (capable of depositing dielectric and conducting layers) with Oosterlaken's improved elliptical nozzles to add the capability of depositing high-performance semiconducting Si-Ge layers. Oosterlaken explicitly taught that its nozzles were advantageous for Si-Ge deposition and compatible with other materials like those used in Saito, making the combination a logical path to increase the versatility and performance of a known CVD furnace.
  • Expectation of Success: Both references describe conventional vertical CVD furnace architectures. A POSA would have reasonably expected success in incorporating Oosterlaken's advantageous nozzle design into Saito's furnace, as it was a substitution of one known component for an improved, compatible component to achieve a predictable and desirable result (improved film deposition).

Ground 2: Obviousness over Saito in view of Oosterlaken and Cook - Claim 3 is obvious over Saito in view of Oosterlaken and Cook.

• Prior Art Relied Upon: Saito (Patent 6,383,300), Oosterlaken (Application # 2003/0111013), and Cook (Application # 2003/0049372).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Saito and Oosterlaken from Ground 1. Dependent claim 3 adds the limitation that the heater is divided into a plurality of heater zones maintained at the same temperature. Petitioner asserted that this feature was taught by Cook, which disclosed a vertical CVD apparatus with a heater having multiple, separately adjustable temperature zones to improve temperature uniformity along the wafer boat.
  • Motivation to Combine: A POSA would be motivated to incorporate Cook's multi-zone heating system into the apparatus of Saito/Oosterlaken to further improve deposition uniformity and reproducibility. Both Saito and Oosterlaken acknowledged the desirability of uniform temperature, and Cook provided a well-known solution for achieving it.
  • Expectation of Success: Multi-zone heaters were a common and well-understood technology for CVD furnaces. Cook’s resistively-heated zones were compatible with the apparatus of Saito, and a POSA would have expected that implementing this known heating control method would successfully improve temperature uniformity in the combined apparatus.

Ground 3: Obviousness over Saito in view of Oosterlaken and Kuiper - Claim 6 is obvious over Saito in view of Oosterlaken and Kuiper.

• Prior Art Relied Upon: Saito (Patent 6,383,300), Oosterlaken (Application # 2003/0111013), and Kuiper (J. Electrochem Soc. 139:2594, 1992).
• Core Argument for this Ground:
  • Prior art Mapping: This ground challenged method claim 6, which adds steps for processing a substrate using a first nozzle and a second nozzle. The core apparatus was established by Saito and Oosterlaken. Kuiper was introduced to teach the benefits of pre-cleaning a wafer with an in situ HF gas treatment before Si-Ge deposition. Petitioner argued that Saito’s inlet 64a met the "first nozzle" limitation for supplying HF cleaning gas, while the modified nozzles from Oosterlaken would serve as the "second nozzle" for supplying deposition gases (e.g., silane and germane).
  • Motivation to Combine: A POSA modifying Saito's apparatus with Oosterlaken's nozzles to deposit Si-Ge films would be motivated by Kuiper to use Saito's existing HF cleaning capability as a pre-cleaning step. Kuiper taught that this step was beneficial for creating a pristine surface, which is critical for high-quality epitaxial growth of Si-Ge films.
  • Expectation of Success: Kuiper demonstrated the benefits of in situ HF pre-cleaning. Since Saito's apparatus already included the necessary hardware (inlet 64a) for this function, a POSA would have a high expectation of success in integrating this known, beneficial process step into the deposition method.

4. Key Claim Construction Positions

• "nozzle": Petitioner argued that based on the specification, the term should be construed as a genus that includes various species disclosed in the ’007 patent, such as "normal nozzles," "long nozzles," "straight nozzles," and "porous nozzles."
• "apart": Petitioner asserted the plain meaning of "apart," as used in limitations like 1[f], refers to a physical gap between the vertical portion of the nozzle and the inner wall of the reaction container. This construction was supported by the prosecution history, where the Patent Owner distinguished prior art by arguing its nozzles were integrated with the wall, not "apart" from it.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. The core argument was that the primary reference relied upon, Oosterlaken, was not cited or considered during prosecution. Oosterlaken was material because it disclosed the key "elliptic shape limitation" that the Patent Owner added to overcome prior art rejections and on which it based its arguments for patentability. Therefore, the asserted art was not cumulative, and the Examiner never had the opportunity to evaluate the arguments presented in the petition.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-6 of Patent 7,622,007 as unpatentable.