Apple Inc v. ImberaTek LLC

1. Case Identification

• Case #: IPR2025-00582
• Patent #: 9,107,324
• Filed: February 6, 2025
• Petitioner(s): Apple Inc.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Circuit Module and Method of Manufacturing The Same
• Brief Description: The ’324 patent discloses circuit modules and methods for manufacturing them, focusing on forming reliable electrical contacts between components with aluminum contact terminals and copper conductors using a multi-layer intermediate structure.

3. Grounds for Unpatentability

Ground 1: Claims 1-2, 4-11, 13-15, 17, and 19 are anticipated by or obvious over Sakamoto.

• Prior Art Relied Upon: Sakamoto (Application # 2004/0168825).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Sakamoto, which teaches a structure for connecting a multilayer printed circuit board to an IC chip, discloses every element of the challenged claims. Sakamoto's IC chip with aluminum die pads corresponds to the claimed "component" with "contact terminals" containing a "first metal" (aluminum). Its "conductor circuits," comprising a metallic layer (Ni/Cu) and an electroplated film, map to the claimed "conductors" containing a "second metal" (copper or nickel). Sakamoto’s multi-layer "transition layer" serves as the "contact elements," which includes an "intermediate layer" containing a "third metal" (e.g., zinc). Petitioner further argued that Sakamoto's figures show a passivation layer that exposes only a central portion of the die pad, inherently disclosing a contact surface area less than the total surface area of the terminal.
  • Motivation to Combine (for §103 grounds): For any claim elements argued to be missing from Sakamoto's express teachings, Petitioner asserted it would have been obvious to modify Sakamoto's design. For instance, Petitioner contended that making the contact opening smaller than the terminal pad was a standard, well-known design choice to improve alignment, providing a motivation to ensure the contact surface area was less than the terminal surface area.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success in implementing any minor modifications, as they involved applying conventional circuit manufacturing techniques to Sakamoto's disclosed structure.

Ground 2: Claims 3 and 9-11 are obvious over Sakamoto in view of Eichelberger.

• Prior Art Relied Upon: Sakamoto (Application # 2004/0168825) and Eichelberger (Patent 6,396,148).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the Sakamoto reference to address claim 3, which requires the first metal of the contact terminal to be gold. Eichelberger, which was cited in the ’324 patent’s background, explicitly teaches that certain IC chips have gold pads and that electroless metallization processes work on such pads. Eichelberger also reinforces the obviousness of using a pure copper seed layer (as required by claims 9-11) instead of Sakamoto’s Ni/Cu layer.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Sakamoto with Eichelberger to improve performance. Sakamoto itself notes that aluminum pads can oxidize, increasing connection resistance. A POSITA, knowing from general knowledge and from Eichelberger that gold is resistant to oxidation and is a common material for bond pads, would have been motivated to substitute gold for aluminum in Sakamoto’s die pads to achieve lower, more reliable contact resistance.
  • Expectation of Success (for §103 grounds): The substitution of one known contact terminal material (aluminum) for another (gold) to gain a well-known benefit (corrosion resistance) was a predictable modification with a high expectation of success.

Ground 3: Claims 1-2, 4-12, and 14-20 are obvious over Lee in view of Sakamoto.

• Prior Art Relied Upon: Lee (Application # 2008/0032447) and Sakamoto (Application # 2004/0168825).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Lee discloses a microelectronic device assembly that meets most claim limitations. Lee teaches a component (die) with terminals, insulator layers, and conductors (copper foil). Lee also teaches that if terminals are not compatible with electroless plating, a protective layer (e.g., zinc or nickel) can be deposited, corresponding to the claimed intermediate layer. Sakamoto was used primarily to corroborate that certain materials, not explicitly defined in Lee, would have been obvious choices. For example, Sakamoto’s disclosure that IC pads are normally aluminum was used to support the obviousness of Lee’s terminals being aluminum (the "first metal").
  • Motivation to Combine (for §103 grounds): A POSITA, when implementing Lee’s design, would have been motivated to use the most common and suitable materials for the various components. Sakamoto provided evidence of what those common and suitable materials were at the time, such as aluminum for contact pads. The motivation was simply to build Lee's device using standard, well-understood materials to achieve a functional and reliable result.
  • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success in using standard materials like aluminum for Lee's terminals, especially since Lee's own disclosure of using zincation is a process specifically suited for aluminum surfaces.

• Additional Grounds: Petitioner asserted numerous additional obviousness challenges, including combinations of Sakamoto or Lee with Chang (journal article on copper seed layers), Ito (Application # 2007/0126030), and Tuominen (WO 2006/056643). These grounds relied on similar core teachings from Sakamoto and Lee, with the additional references cited to provide specific teachings for features like contact element dimensions (Ito) or the use of hardened adhesives (Tuominen).

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) is unwarranted because neither Sakamoto nor Lee was applied or addressed during the original prosecution. Although a related application was cited, the examiner’s failure to appreciate its teachings for the claimed elements constituted a material error.
• Petitioner also argued that discretionary denial under Fintiv is inappropriate. It asserted that a Final Written Decision would likely issue months before a trial in the parallel district court litigation, the petition was filed early in that litigation, and the merits of the petition are compelling.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of the ’324 patent as unpatentable.