PTAB

IPR2018-01598

Toshiba Memory Corp v. Anza Technology Inc

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Dissipative Ceramic Bonding Tip
  • Brief Description: The ’864 patent relates to a ceramic bonding tool tip used in semiconductor manufacturing designed to prevent electrostatic discharge damage to sensitive electronic devices. It purports to achieve this by using a material that is "electrically dissipative," having a resistance within a specified range that is neither fully conductive nor fully insulative.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claim 28 under 35 U.S.C. §102 over Shinji

  • Prior Art Relied Upon: Shinji (Patent 6,274,524).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Shinji discloses every element of claim 28. Shinji teaches a wire bonding tool made from a zirconia sintering body mixed with additives (e.g., iron oxide) to control its electrical properties. This material is explicitly described as being neither fully insulative nor fully conductive, thereby teaching the "electrically dissipative" limitation. Critically, Shinji discloses that its material has a volume resistivity between 10⁵ and 10⁹ ohm-cm. Petitioner contended this range falls squarely within and anticipates the claimed resistance range of 10⁵ to 10¹² ohms, as a person of ordinary skill in the art (POSITA) would understand that resistance and resistivity were often used interchangeably or that the units satisfy the claim.

Ground 2: Obviousness of Claim 28 under 35 U.S.C. §103 over Shinji in view of Linn

  • Prior Art Relied Upon: Shinji (Patent 6,274,524), Linn (Patent 5,816,472).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was presented as an alternative in case Shinji was found to teach only the resistivity of a material, not the resistance of an object. Shinji teaches the dissipative material composition, while Linn discloses the specific dimensions of a commercially available alumina-based bonding tool. Petitioner argued that a POSITA, using the material resistivity from Shinji and the tool dimensions from Linn, could calculate the top-to-bottom resistance of the resulting bonding tool. This calculated resistance range (1.56x10⁷ to 1.56x10¹¹ Ω) falls within the ’864 patent’s claimed range of 10⁵ to 10¹² ohms.
    • Motivation to Combine: A POSITA would combine Shinji's novel material with Linn's conventional dimensions to ensure the resulting tool would be compatible with pre-existing commercial bonding machines. Using standard dimensions for a tool made of a new material is a simple and logical design choice.
    • Expectation of Success: The combination involved applying known physical principles (calculating resistance from resistivity and dimensions) to predictable arts (material science and mechanical design), leading to a high expectation of success.

Ground 3: Obviousness of Claim 28 under §103 over Alfaro in view of Shikata

  • Prior Art Relied Upon: Alfaro (Patent 4,974,767), Shikata (Patent 5,830,819).

  • Core Argument for this Ground:

    • Prior Art Mapping: Alfaro discloses a conventional wire bonding tool ("capillary") made from alumina, which is an electrical insulator. Shikata directly addresses the problem of static buildup on such alumina-based tools used in semiconductor manufacturing. Shikata teaches that by controlling the alumina composition with specific additives, one can create a sintered product with a volume resistivity that is "between that of an insulator and that of an electric conductor" (i.e., dissipative). The resistivity range disclosed in Shikata (1x10⁷ to 10¹³ Ω·cm) substantially overlaps with and suggests the range claimed in the ’864 patent.
    • Motivation to Combine: A POSITA would combine these references because Shikata identifies a specific problem inherent in tools like Alfaro’s (static buildup on insulative alumina) and provides an explicit solution: modify the alumina material to make it dissipative. This presents a clear and compelling reason to apply Shikata’s material teachings to Alfaro’s tool design.
    • Expectation of Success: A POSITA would have reasonably expected that substituting the insulative alumina of Alfaro's tool with the dissipative alumina taught by Shikata would successfully mitigate electrostatic discharge without negatively impacting the tool's mechanical function.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on Popp (a German patent) alone, and Popp in view of Schneider, but relied on similar arguments regarding the known benefits of using dissipative materials for handling sensitive electronic components.

4. Key Claim Construction Positions

Petitioner argued that several key terms in claim 28 are indefinite but provided analysis under various constructions for the purposes of the inter partes review (IPR).

  • "bonding tool tip": Petitioner contended this term is indefinite because the ’864 patent uses it inconsistently. In some figures and descriptions, it refers to the entire bonding tool, while in others, it refers only to the distal end portion of the tool. This ambiguity allegedly leaves a POSITA unable to determine the scope of the claimed "tip."
  • "resistance": Petitioner argued this term is indefinite because claim 28 fails to specify the two points between which the resistance of the "tip" should be measured. Without this, the resistance value is meaningless. Furthermore, Petitioner asserted that in the relevant art, artisans often used the terms "resistance" (in ohms) and "resistivity" (e.g., in ohm-cm) interchangeably, and that skilled artisans would understand the claim to encompass materials with a certain resistivity, which the prior art clearly discloses.

5. Relief Requested

  • Petitioner requests institution of IPR and cancellation of claim 28 of Patent 6,651,864 as unpatentable.