Lam Research Corp v. Inpria Corp

1. Case Identification

• Case #: IPR2024-00033
• Patent #: 9,823,564
• Filed: October 16, 2023
• Petitioner(s): Lam Research Corp.
• Patent Owner(s): Inpria Corp.
• Challenged Claims: 1-12

2. Patent Overview

• Title: Patterned Inorganic Layers, Radiation Based Patterning Compositions and Corresponding Methods
• Brief Description: The ’564 patent relates to inorganic coating materials for use as UV, EUV, or electron beam resist materials. The coating comprises metal ions with radiosensitive ligands that alter their chemical properties upon exposure to radiation, allowing for patterning.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-12 under §102 over the ’888 Publication

• Prior Art Relied Upon: ’888 publication (Application # 2011/0293888).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the challenged claims are not entitled to their asserted priority date of August 4, 2010. The specific thickness ranges recited in independent claim 1 (5 nm to 30 nm) and dependent claim 6 (5 nm to 25 nm) were first introduced when the continuation ’612 application (which issued as the ’564 patent) was filed on September 18, 2015. Petitioner contended these ranges lack written description support in the parent ’867 application. This later priority date makes the ’888 publication, which is the published version of the parent ’867 application, qualifying prior art under 35 U.S.C. §102. Because the ’888 publication and the ’564 patent share an identical specification, Petitioner asserted that the ’888 publication inherently discloses and anticipates every limitation of claims 1-12.

Ground 2: Obviousness of Claims 1-10 and 12 under §103 over Stowers 2008

• Prior Art Relied Upon: Stowers 2008 (a doctoral dissertation by a named inventor of the ’564 patent).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Stowers 2008 discloses all limitations of the claims except for an express recitation of the exact thickness range of "from 5 nm to 30 nm." Stowers 2008 discloses HafSOx and ZircSOx films with thicknesses of 30 nm to 35 nm. Petitioner asserted that this disclosure of an overlapping range establishes a prima facie case of obviousness for claim 1. For dependent claims, Stowers 2008 discloses a broad thickness range (2 to 500 nm) that encompasses the range of claim 6, and discloses or renders obvious the remaining limitations regarding material composition and properties.
  • Motivation to Combine: A POSITA would be motivated to optimize film thickness, a known result-effective variable, to mitigate known problems in lithography such as pattern collapse. Stowers 2008 provides a starting point of 30-35 nm, making it obvious to try thicknesses within the claimed range.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in achieving the claimed thickness range through routine experimentation, such as by adjusting spin coating rates and times, which are conventional and predictable methods disclosed in the art.

Ground 3: Anticipation and/or Obviousness of Claims 1, 3, 6-7, 9, 11-12 over Trikeriotis

• Prior Art Relied Upon: Trikeriotis (a 2010 article on inorganic photoresists).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued Trikeriotis, which was not considered during prosecution, anticipates or renders obvious the challenged claims. Trikeriotis discloses an inorganic resist made of hafnium oxide nanoparticles with organic ligands for DUV, EUV, and electron beam lithography. It expressly teaches using a film that was "only 30 nm thick," directly meeting the thickness limitation of claim 1 that was the basis for allowance of the ’564 patent. Trikeriotis also discloses using organic ligands that are radiation sensitive, spin-coating on a substrate, and achieving differential dissolution rates for patterning, thereby teaching the other key limitations of claim 1.
  • Motivation to Combine (for §103 grounds): For claims rendered obvious, a POSITA would find it obvious to modify the parameters in Trikeriotis (e.g., spin speed) to achieve slightly different thicknesses, such as the 5 nm to 25 nm range of claim 6, through routine optimization.
  • Expectation of Success: The predictable nature of spin coating would provide a POSITA with a reasonable expectation of successfully producing films within the claimed thickness ranges.

• Additional Grounds: Petitioner asserted that claims 1-5, 7-10, and 12 are anticipated by Stowers 2008. Petitioner also asserted an obviousness challenge for claim 8 over Stowers 2008 in view of Stowers 2009 (a 2009 article by the same inventors), arguing Stowers 2009 explicitly discloses the metal-to-peroxide ratio of 1:0.5 that meets the "at least 2" metal ion to ligand ratio limitation.

4. Key Claim Construction Positions

• Petitioner argued that claim 8, which recites "a metal ion to radiosensitive ligand ratio of at least 2," contains a potential error. The specification only supports a "ligand to metal" ratio of at least 2. Petitioner contended that the Board is not permitted to correct this type of error via claim construction. As written, the claim requires 0.5 or fewer ligands per metal ion. Petitioner argued that subsequent publications by a named inventor show this ratio is inherently met in the films disclosed by the prior art, as the peroxide-to-metal ratio saturates at approximately 0.5 in the final film, regardless of the precursor solution concentration.

5. Arguments Regarding Discretionary Denial

• §325(d) Arguments: Petitioner argued discretionary denial is inappropriate because the Examiner committed material errors. For Ground 1, the Examiner never questioned the patent’s priority claim or considered whether the ’888 publication was prior art. For other grounds, although Stowers 2008 was cited in an IDS, the Examiner did not appreciate its disclosure of 30 nm thick films, instead relying on Stowers 2009 (which taught 35 nm films) to reject the claims, an error which Patent Owner overcame by a narrow amendment. Trikeriotis was never before the Examiner.
• §314(a) (Fintiv) Arguments: Petitioner argued against denial under Fintiv, stating the parallel district court litigation is in its earliest stages. No answer has been filed, no scheduling order is in place, discovery has not begun, and no trial date has been set.

6. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 1-12 of the ’564 patent as unpatentable.