22
Apr
By Eric Schweibenz
Further to our March 23, 2010 post, on April 20, 2010, the International Trade Commission (“Commission”) issued its Opinion in Certain Semiconductor Integration Circuits Using Tungsten Metallization and Products Containing Same (Inv. No. 337-TA-648).  In the Opinion, the Commission affirmed the ALJ’s ultimate determination of no violation, but on different grounds with respect to claim 4 of U.S. Patent No. 5,227,335 (the ‘335 patent).

By way of background, this investigation was instituted on May 21, 2008.  Complainants LSI Corporation and Agere Systems Inc alleged a violation of Section 337 in the importation into the US, the sale for importation, and the sale within the US after importation of certain semiconductor integrated circuits using tungsten metallization and products containing the same by reason of infringement of claims 1, 3, and 4 of the ‘335 patent.  Several of the originally named respondents were terminated from the investigation and the remaining Respondents in this investigation are Tower Semiconductor, Ltd., Jazz Semiconductor (“Jazz”), Powerchip Semiconductor Corporation; Grace Semiconductor Manufacturing Corporation; Integrated Device Technology, Inc.; and Nanya Technology Corporation (collectively, “Respondents”).

On September 21, 2009, ALJ Charneski issued a final Initial Determination (“ID”) finding that claims 1, 3, and 4 of the ‘335 patent were anticipated in view of IBM process A, and thus that no violation of Section 337 had occurred.  See our February 2, 2010 post for more details.  On November 23, 2009, the Commission determined to review-in-part the ID.  Specifically, the Commission determined to review: (1) the invalidity of claims 1, 3, and 4 of the ‘335 patent with respect to IBM Process A, IBM Process B, and a specific piece of prior art (“the AMD prior art”), and (2) Jazz’s stipulation regarding whether its process met one of the steps of claim 1.  The Commission also issued an order remanding the investigation to the ALJ for further proceedings relating to whether claim 4 is obvious in light of IBM Process A and the other prior art Asserted by Respondents and the Commission Investigative Attorney (“IA”).  See our November 30, 2009 post for more details.  On January 15, 2010, ALJ Charneski issued a Remand Initial Determination (“Remand ID”) determining that claim 4 was not rendered obvious by the relevant prior art.  See our January 29, 2010 post for more details.

In the Opinion, the Commission reversed the Remand ID, determining that claim 4 was invalid due to obviousness in view of IBM Process A in combination with other prior art.

Additionally, the Commission affirmed-in-part, reversed-in-part, and modified-in-part the ID, determining that there was no violation of Section 337 by the Respondents.

Anticipation

In the ID, ALJ Charneski determined that IBM Process A anticipated claims 1, 3, and 4 of the ‘335 patent under 35 U.S.C. § 102(g).  In the Opinion, the Commission affirmed this determination with regard to claims 1 and 3.  However, the Commission did not find anticipation under 35 U.S.C. § 102(g) with regard to claim 4.  Specifically, the Commission disagreed with ALJ Charneski’s determination that the step of “etching said tungsten and said glue layer to form a planar surface of said dielectric and said tungsten in said hole, said tungsten being etched before said glue layer” was disclosed by teaching that IBM Process A is integratable with metal “chemical mechanical polishing (CMP).”  ALJ Charneski relied on inventor testimony as to the definition of CMP.  The Commission determined there was insufficient evidence to corroborate the inventor testimony and that the discussion of CMP in connection with IBM Process A was insufficient to suggest to one of ordinary skill in the art that etching of both the tungsten and glue layers was disclosed and reduced to practice.

Obviousness

In the Remand ID, ALJ Charneski determined that claim 4 was not obvious in view of IBM Process A in combination with other prior art asserted by the IA and Respondents.  The Commission disagreed.

In the Opinion, the Commission found that three references disclosed the “etching” step of claim 4, missing from IBM Process A, by disclosing “tungsten plugs.”  The Commission determined that in discussing “tungsten plugs,” Smith and Sachdev “disclose[d] etching back a tungsten layer and a glue layer to form a planar surface.”  The third reference, Chow, also described “tungsten plugs,” however without the use of a glue layer.  The Commission also noted that during prosecution, the inventors stated that the dependent claims stood or fell with claim 1, thereby admitting that the etching step of dependent claim 4 was not novel.  The Commission thus determined that the recited “etching” step of claim 4 was simply an application of a well-known technique to prior art ready for the improvement.

The Commission also found that one skilled in the art would be motivated to combine any of these three references with IBM Process A, and that nothing suggested doing so would be beyond such a person’s skill.  The Commission noted that Smith, Sachdev, and Chow use the etching back of tungsten plugs to form a planar surface in order to improve tungsten metallization semiconductor devices.  According to the Commission, tungsten metallization semiconductor devices (Smith, Sachdev, and Chow) are so similar to tungsten metallization semiconductor integrated circuits (IBM Process A) that one skilled in the art would recognize it could improve tungsten metallization semiconductor integrated circuits (IBM Process A) in the same manner disclosed in Smith, Sachdev, and Chow.  The Commission added that one of ordinary skill in the art would have been further motivated to combine IBM Process A with Smith, Sachdev, or Chow because they all cover the same subject matter.  Ultimately, the Commission reversed ALJ Charneski’s Remand ID, finding claim 4 obvious under 35 U.S.C. § 103 in view of IBM Process A in combination with Smith, Sachdev, or Chow.

Other Issues

Based on the invalidity of all asserted claims in view of IBM Process A, the Commission determined it was unnecessary to evaluate the validity of the claims in view of IBM Process B or the AMD prior art.  Accordingly, the Commission took no position on that issue.

Lastly, in the ID, ALJ Charneski determined that Jazz stipulated to practicing both portions of the third recited step of claim 1 of the ‘335 patent.  In the Opinion, the Commission modified the ALJ’s determination, finding that Jazz only stipulated to the first portion of the step, and not both portions.