By Barry Herman
On January 29, 2010, ALJ Carl C. Charneski issued the public version of the Initial Determination (dated September 21, 2009) 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. (collectively, “Complainants”) and the Respondents are Tower Semiconductor, Ltd. (“Tower”), Jazz Semiconductor (“Jazz”), Qimonda AG, Powerchip Semiconductor Corporation (“Powerchip”), Grace Semiconductor Manufacturing Corporation (“Grace”), Integrated Device Technology, Inc. (“IDT”), Spansion, Inc. (“Spansion”), and Nanya Technology Corporation (“Nanya”) (collectively, “Respondents”).

On September 21, 2009, ALJ Charneski issued the initial determination (“ID”) finding no violation of Section 337.  The ID held “that each accused process of each Respondent  practices each of the claims[1, 3, and 4]” asserted against it, but [Respondents] also “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.”  ALJ Charneski found that a domestic industry existed for the ‘335 patent based on Complainants’ licensing activities.

The asserted claims relate to methods of fabricating an integrated circuit by depositing a tungsten layer by chemical vapor deposition covering a glue layer consisting of a conducting nitride.  The Complainants accused several of Respondents’ processes of infringement, but these processes were identified only in the heavily-redacted portion of the ID.


ALJ Charneski interpreted four claim terms within the ‘335 patent.  Complainants argued that “depositing” as used in the patent, did not include forming a layer through nitridization.  ALJ Charneski disagreed, relying upon applicants’ reference during prosecution to Titanium Nitride being “deposited,” and the ‘335 specification reciting that “depositing” includes “well known techniques,” and nitridization “is a well known technique.”

The Complainants and Respondents disagreed on the meaning of a “glue layer” and whether this layer required actual contact between the underlying dielectric layer and the tungsten. ALJ Charneski held that while the nitride itself within the glue layer need not contact the dielectric, “in order to have good adhesion to both the underlying dielectric layer and the tungsten (i.e. to adhere to them, which is the very nature of a glue) the glue layer must come into contact with them.”

Additionally, ALJ Charneski held that the “exposed underlying material” covered by the glue layer in claim 1 is not limited to silicon or metallic silicides on the substrate, denying the interpretation requested by IDT.

Finally, contrary to IDT and Grace’s arguments,  ALJ Charneski interpreted “etching” in claim 4 to include chemical mechanical polishing.

ALJ Charneski held that “IDT’s non-infringement defense turns largely on disputed claim constructions.”  ALJ Charneski’s rejection of IDT’s proposed constructions of “glue layer,” “exposed underlying material” and “etching,”  are “key to IDT’s arguments.”  Accordingly, ALJ Charneski found that the “IDT Process [ ] meets every element of claims 1, 3, and 4.” He similarly found Grace’s non-infringement arguments to “hinge primarily on its [rejected] proposed construction” of “glue layer” and “etching,” and its process also met “every element of claims 1, 3, and 4.”  Nanya, Powerchip and Spansion relied upon a  rejected construction of “depositing” for non-infringement.  For at least this reason, ALJ Charneski held that Nanya’s process meets every element of claims 1 and 4, Powerchip’s process meets every element of claim 1, and Spansion’s process meets every element of claims 1, 3, and 4.  ALJ Charneski additionally stated that the accused processes of Jazz and Tower met every element of claim 1.


According to the ID, in late October 1985, an IBM research team signed an invention disclosure form ("IDF") that eventually led to the issuance of U.S. Patent No. 5,760,475.  The IDF included a “Process A” that depicts “a glue layer in which a layer of titanium is sputtered onto the surface and then thermal annealed in nitrogen (nitridized).”  Respondents asserted that “Process A”  anticipated claims 1, 3, and 4 of the ‘335 patent under 35 U.S.C. §102(g).

Complainants argued that IBM suppressed and concealed Process A “to gain a competitive edge over its rivals.”  ALJ Charneski rejected this argument.  He found that the seventeen month gap between the IDF and filing of a patent application was within the six to 24 month period IBM commonly took to review and file a patent application.  ALJ Charneski additionally noted that during the seventeen month gap, IBM continually worked to commercialize and improve part of the invention relating to the glue layer, and this additional work was described in the specification of the IBM ‘475 patent.

Complainants additionally argued that IBM’s Process A did not include all limitations of claim 1, because it did not disclose “depositing” a glue layer containing at least one nitride.   This argument, however, relied upon Complainant’s rejected construction argument that “depositing” not including “nitridization.”   ALJ Charneski further held that “Process A” anticipated dependent claims 3 and 4 of the ‘335 patent.

Domestic Industry

Complainants asserted that the ‘335 patent played a prominent role in their licensing activities, with an in-house licensing program (with employees across four states), substantial payments to outside counsel and consultants, and substantial royalty revenue.  Respondents challenged the alleged nexus between the ‘335 patent and Complainants’ licensing activities, and demanded that Complainants “break out or account for expenditures specifically for the ‘335 patent.”  ALJ Charneski noted an absence of any authority requiring Complainants to separately break out expenses to show a nexus.  He agreed with the Complainant and the Commission Investigative Staff that a sufficient nexus between the ‘335 and substantial licensing activities had been shown, and that the domestic industry requirement was satisfied.

Please see our November 30, 2009, January 22, 2010, and January 29, 2010 posts for more details about this investigation.