Samsung Austin Semiconductor LLC v. Sung Chien Min

1. Case Identification

• Case #: IPR2024-00533
• Patent #: 8,974,270
• Filed: February 29, 2024
• Petitioner(s): Samsung Electronics Co. Ltd., Samsung Electronics America, Inc., Samsung Semiconductor, Inc., and Samsung Austin Semiconductor, LLC
• Patent Owner(s): Chien-Min Sung
• Challenged Claims: 1-8

2. Patent Overview

• Title: Abrasive Tool Having Superabrasive Particles
• Brief Description: The ’270 patent discloses abrasive tools, such as Chemical Mechanical Planarization (CMP) pad dressers, designed to be substantially flat and free of warpage. The invention addresses warpage caused during high-temperature brazing by securing a first and second monolayer of superabrasive particles on opposite sides of a metal support layer, creating symmetrical forces, and specifies a narrow range for the protrusion height difference among the particles.

3. Grounds for Unpatentability

Ground 1: Claims 1 and 3-8 are obvious over Chou in view of Sung’479

• Prior Art Relied Upon: Chou (Application # 2010/0022174) and Sung’479 (Application # 2008/0096479).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Chou taught all limitations of independent claim 1 except for the specific protrusion distance requirement. Chou disclosed a CMP pad dresser with a first monolayer of superabrasive particles (e.g., diamond) on a metal support layer, a second monolayer on the opposite side to inhibit warpage, a substantially same distribution between the monolayers, and a rigid support coupled to the second monolayer. To supply the missing element, Petitioner asserted that Sung’479 taught precisely leveling the tips of superabrasive particles, disclosing that tip heights can be controlled to vary by less than 1 micron from a designated profile (i.e., less than 2 microns tip-to-tip), which inherently satisfied the claimed limitation of the protrusion distance being "less than or equal to about 50 microns." For dependent claims 3 and 4, Sung’479 taught configuring particles with an apex (a "sharp portion") oriented toward the workpiece. For dependent claims 5-8, Sung’479’s teaching of a tip-to-tip variation of less than 2 microns met the more specific claimed ranges of 10, 20, and 40 microns.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the teachings because Chou and Sung’479 are analogous art directed to improving abrasive tools. Both references recognize that leveled abrasive particles enhance performance and precision. A POSITA would have been motivated to incorporate Sung’479’s superior particle leveling techniques into Chou’s tool structure to improve its machining efficiency and to use Sung’479’s low-melting-point braze to reduce warpage, a problem Chou sought to solve.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because both references employ similar brazing methods for attaching abrasive particles to a metal substrate, making the integration of their teachings straightforward.
  • Key Aspects: Petitioner asserted that the Patent Owner is collaterally estopped from arguing that Chou fails to teach the preamble and other structural elements of claim 1, as the Board previously found these elements were taught by Chou in an FWD for a nearly identical claim in the related ’699 patent (IPR2014-01523).

Ground 2: Claims 6-7 are obvious over Chou in view of Sung’479 and SungECS

• Prior Art Relied Upon: Chou (Application # 2010/0022174), Sung’479 (Application # 2008/0096479), and SungECS (a 2009 article from ECS Transactions).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground added SungECS to the primary combination to address limitations in claims 6 and 7 concerning protrusion distance differences between the highest tip and the 10th and 100th highest tips. Petitioner argued that while Chou and Sung’479 provided the foundational teachings, SungECS established that it was common knowledge for CMP pad dressers to contain tens of thousands of superabrasive particles. Therefore, a POSITA would understand that a tool implementing the precise leveling of Sung’479 (less than 2-micron variation across all tips) on a standard dresser (with thousands of tips, per SungECS) would necessarily and inherently meet the claimed protrusion requirements for the 10th and 100th highest tips.
  • Motivation to Combine: The combination was presented as a trivial modification. A POSITA would apply the known leveling techniques of Sung’479 to the known structure of Chou, with the understanding that such dressers typically contain thousands of particles as shown by SungECS. This was merely combining known elements to achieve a predictable result.

Ground 3: Claim 2 is obvious over Chou in view of Sung’479 and Goers

• Prior Art Relied Upon: Chou (Application # 2010/0022174), Sung’479 (Application # 2008/0096479), and Goers (Application # 2008/0004743).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground added Goers to the primary combination to teach the limitation of dependent claim 2: arranging the superabrasive particles in an annular configuration with a central region devoid of particles. Petitioner asserted that Goers explicitly disclosed this exact configuration, teaching a "particle free zone" near the disk center for a typical conditioning disk.
  • Motivation to Combine: A POSITA would be motivated to modify the Chou/Sung’479 tool with the particle arrangement from Goers. Both Sung’479 and Goers suggested different ways to arrange particles to manage mechanical stresses on a spinning disk. Using a particle-free zone as taught by Goers would have been a simple and predictable design choice among a finite number of known options for arranging particles on a circular CMP pad dresser.

4. Key Claim Construction Positions

• Petitioner argued that the Patent Owner acted as his own lexicographer, providing specific definitions in the ’270 patent specification that should be applied.
• "protrusion": Construed as "the height of a particle relative to some reference point."
• "superabrasive": Construed as a material with a "Moh[]s hardness of about 8 or greater," such as diamond.
• "sharp portion": Construed as "any narrow portion to which a crystal or particle may come," including corners and apexes.

5. Arguments Regarding Discretionary Denial

• §325(d) (Advanced Bionics Factors): Petitioner argued against discretionary denial because the same or substantially the same art and arguments were not previously presented to the Office. Goers was never before the Examiner. While Chou and Sung’479 were listed in an Information Disclosure Statement, they were among over 450 cited documents and were never used in a substantive rejection, meaning the Examiner did not perform a substantive review. Petitioner contended the Office erred by not considering these references, particularly given that Chou was used to invalidate a nearly identical claim in a related patent.
• §314(a) (Fintiv Factors): Petitioner argued the Fintiv factors strongly favor institution. The parallel district court litigation is in a very early stage with minimal investment, and the scheduled trial date is after the statutory deadline for the IPR Final Written Decision. Furthermore, Petitioner stipulated that it would not pursue the same invalidity grounds in the district court if the IPR is instituted. Finally, Petitioner argued the merits of the petition are compelling, as evidenced by the Board's prior decision invalidating a sister patent’s claim based on the same primary reference (Chou).

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-8 of Patent 8,974,270 as unpatentable.