ASM IP Holding BV 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
• Brief Description: The ’007 patent discloses a vertical batch-type Chemical Vapor Deposition (CVD) apparatus for processing semiconductor substrates. The central technology at issue involves the structure of reaction gas supply nozzles, particularly the use of nozzles with a substantially elliptical cross-sectional shape to improve the deposition process.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 1-2 and 4-5 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 disclosed a conventional vertical CVD apparatus meeting most limitations of independent claims 1 and 4, including a reaction container, a heater, and multiple L-shaped gas supply nozzles of varying lengths. The sole limitation added during prosecution to overcome prior art was the requirement that the vertical portion of the nozzles have an "elliptic shape with a short axis thereof oriented toward" the substrate. Petitioner asserted that Oosterlaken, which was not considered during prosecution, expressly taught this missing element. Oosterlaken disclosed using gas injector nozzles with a substantially elliptical (or "oblong") shape, oriented with the short axis toward the wafers, to reduce unwanted gas-phase reactions and improve film uniformity in a vertical CVD furnace.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Oosterlaken's improved nozzle design with Saito's versatile CVD apparatus. Saito itself taught the desirability of increasing the versatility of its apparatus to deposit new types of films. Oosterlaken disclosed that its elliptically-shaped nozzles were particularly advantageous for depositing high-performance Si-Ge layers while also being compatible with the dielectric layers deposited by Saito's apparatus. A POSITA would have been motivated to incorporate Oosterlaken's nozzles to add this valuable Si-Ge deposition capability to Saito's system.
  • Expectation of Success: Both Saito and Oosterlaken described conventional vertical CVD furnace architectures. Oosterlaken demonstrated the successful use of its elliptically-shaped nozzles for depositing films. Given the compatibility of the systems and the known benefits of the nozzle design, a POSITA would have had a reasonable expectation of success in integrating Oosterlaken's nozzles into Saito's apparatus.

Ground 2: Obviousness of Claim 3 over Saito, Oosterlaken, and Cook

• Prior Art Relied Upon: Saito (’300 patent), Oosterlaken (’013 application), and Cook (Application # 2003/0049372).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground challenged dependent claim 3, which added the limitation that the heater is divided into a "plurality of heater zones" maintained at the same temperatures during processing. Building on the base combination of Saito and Oosterlaken, Petitioner introduced Cook to supply this limitation. Cook disclosed a vertical CVD apparatus with a heater comprising multiple, separately adjustable temperature zones controlled to achieve a uniform temperature profile along the wafer boat, thereby minimizing deposition variation.
  • Motivation to Combine: A POSITA would combine Cook's well-known heater zone technology with the Saito/Oosterlaken apparatus to optimize performance. The desirability of temperature uniformity was already recognized in both Saito and Oosterlaken. Cook taught that using heater zones was a known and desirable method to achieve this uniformity and improve reproducibility. It would have been a predictable design choice to implement this known heating solution to improve the combined apparatus.
  • Expectation of Success: Cook’s zoned heating was disclosed as compatible with the types of resistively-heated CVD systems described in Saito and Oosterlaken. The integration of zoned heating was a well-understood and common practice in the field, leading to a high expectation of success.

Ground 3: Obviousness of Claim 6 over Saito, Oosterlaken, and Kuiper

• Prior Art Relied Upon: Saito (’300 patent), Oosterlaken (’013 application), and Kuiper (J. Electrochem Soc. 139:2594, 1992).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed method claim 6, which recited steps including processing a substrate by supplying reaction gas through a first nozzle and a second nozzle. Petitioner argued that in the combined Saito/Oosterlaken system, Saito’s inlet for supplying hydrogen fluoride (HF) cleaning gas served as the "first nozzle," while the elliptically-shaped deposition nozzles from Oosterlaken served as the "second nozzle." Kuiper was introduced to provide the motivation for the claimed process sequence, teaching the benefits of pre-cleaning a wafer with an in-situ HF gas treatment immediately before Si-Ge deposition to create a pristine surface for epitaxial growth.
  • Motivation to Combine: A POSITA motivated to combine Saito and Oosterlaken to enable Si-Ge deposition would have looked to prior art like Kuiper to optimize that specific process. Kuiper explicitly taught that an in-situ HF pre-clean was useful for improving Si-Ge deposition. Because Saito's apparatus already included an HF gas supply, a POSITA would have been motivated to use this existing capability as instructed by Kuiper to perform the pre-cleaning step before the main deposition step using Oosterlaken's nozzles.
  • Expectation of Success: Kuiper demonstrated the benefits of the HF pre-cleaning process. Since Saito provided the necessary hardware and the process steps were well-known, a POSITA would have reasonably expected success in implementing Kuiper’s pre-cleaning method in the combined Saito/Oosterlaken apparatus.

4. Key Claim Construction Positions

• "Nozzle": Petitioner argued that based on the specification's explicit definitions of various nozzle species ("normal," "long," "porous"), the claimed term "nozzle" should be construed as a genus that includes these types. This construction was important for mapping Oosterlaken’s gas injectors, which have gas ejection ports along their sides, to the "porous nozzle" species described in the ’007 patent.
• "Apart": Petitioner contended that the plain meaning of "apart," supported by prosecution history, required the vertical portion of a nozzle to be separated by a physical gap from the inner wall of the reaction container. This was used to distinguish from prior art where nozzles were integrated with the chamber wall.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) was inappropriate. The core of this argument was that the petition relied on prior art references—Oosterlaken, Cook, and Kuiper—that were not cited, considered, or made of record during the original prosecution. Petitioner asserted that these references were materially different from the examined art because they disclosed the specific limitations (e.g., the elliptical nozzle shape) that the Patent Owner added to the claims to secure allowance. Therefore, the art and the arguments presented in the petition were neither cumulative nor previously evaluated by the USPTO.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-6 of the ’007 patent as unpatentable.