By Eric Schweibenz
On January 29, 2010, ALJ Carl C. Charneski issued the public version of the Remand Determination (dated January 14, 2010) in Certain Semiconductor Integration Circuits Using Tungsten Metallization and Products Containing Same (Inv. No. 337-TA-648).

By way of background, the Complainants in this investigation are LSI Corporation and Agere Systems Inc. and the Respondents are Tower Semiconductor, Ltd., Jazz Semiconductor, Qimonda AG, Powerchip Semiconductor Corporation, Grace Semiconductor Manufacturing Corporation, Integrated Device Technology, Inc., Spansion, Inc., and Nanya Technology Corporation (collectively, “Respondents”).  On September 21, 2009, ALJ Charneski issued an initial determination (“ID”) finding no violation of Section 337.  In this respect, ALJ Charneski determined that “it was established by clear and convincing evidence that claims 1, 3, and 4 of [U.S. Patent No. 5,227,335 (the ‘335 patent)] are invalid due to anticipation in view of IBM Process A.”  On November 23, 2009, the Commission issued a notice determining to review-in-part the ID finding no violation of Section 337 and determining to remand a portion of the investigation related to obviousness back to ALJ Charneski.  See our November 30, 2009 post for more details.

In the Remand Determination, ALJ Charneski held that the Respondents’ and the Commission Investigative Staff’s (the “Staff”) obviousness arguments relating to IBM Process A “do not have merit” and thus it was not shown by clear and convincing evidence that claim 4 of the ‘335 patent is invalid due to obviousness under 35 U.S.C. § 103.  More particularly, ALJ Charneski held that “[l]isting prior art references, and concluding that the invention would have been obvious in view of those references is insufficient to show obviousness.  Rather, the challenger must show clearly and convincingly both how and why prior art could have been combined.”  According to ALJ Charneski, while the Respondents and the Staff demonstrated that “tungsten plugs and planarization are found in the prior art” there is “no example from the prior art of the type of planarization required by claim 4 occurring in connection with the fabrication of a device that meets all the limitations of the claim.”  Further, “[i]f one adopted their arguments, it is unclear how one could convincingly substantiate the fact that one of ordinary skill would have made a specific combination consisting of IBM Process A and other prior art, and further how one would have successfully accomplished such a combination of elements.”