On May 20, 2009, ALJ Carl C. Charneski issued Order No. 80 and Order No. 81 in Certain Semiconductor Integrated Circuits Using Tungsten Metallization and Products Containing Same (Inv. No. 337-TA-648).  In the Orders, ALJ Charneski denied five motions for summary determination relating to the validity or invalidity of U.S. Patent No. 5,227,335.

Order No. 80 addresses four motions for summary determination concerning alleged anticipation and/or obviousness of certain claims of the ‘335 patent in light of prior work conducted at non-party IBM (“IBM Prior Art”).  According to the Order, Respondents National Semiconductor Corp., Integrated Device Technology, Inc., STMicroelectronics N.V., Grace Semiconductor Manufacturing Corp., Spansion Inc., Nanya Technology Corp., Powerchip Semiconductor Corp., Cypress Semiconductor Corp. and Elpida Memory, Inc. moved for summary determination of invalidity of claims 1, 3, and 4 of the ‘335 patent for anticipation and obviousness.  Complainants LSI Corp. and Agere Systems, Inc. (“Complainants”) filed a response and cross motion for summary determination of validity of claims 1, 3, and 4.  Complainants also filed a separate motion for summary determination that the IBM Prior Art does not anticipate claims 1, 3, or 4 of the ‘335 patent against respondents Microchip Technology, Inc., ProMOS Technologies, Inc., United Microelectronics Corp., Micronas Holding AG, NXP Semiconductors USA, Inc., Vanguard International Semiconductor Corp., Dongbu HiTek Semiconductor Business, Qimonda AG, Jazz Semiconductor, Tower Semiconductor, Ltd. and ON Semiconductor Corp.  Lastly, Complainants filed an additional motion for summary determination that the IBM Prior Art does not anticipate or render obvious claims 1, 3, or 4 of the ‘335 patent against respondent Magnachip Semiconductor, Ltd.

Order No. 81 addresses a motion for summary determination of invalidity of claim 1 of the ‘335 patent based on alleged non-enablement under 35 U.S.C. § 112.  According to the Order, respondents Tower Semiconductor, Inc. and Jazz Semiconductor (“Respondents”) argued that claim 1 was invalid because “while claim 1 claims a glue layer that comprises at least one member of the group consisting of conducting nitrides, the patent ‘only teaches how to make a functioning glue layer out of one material, namely titanium nitride.’”  In other words, according to Respondents, the patent does not enable the full scope of claim 1 because it does not teach a person of ordinary skill in the art how to make a functioning glue layer using any of the other unlimited combination of materials that are within the scope of the claim (i.e., any combination of materials such that at least one of the materials is a conducting nitride).  In response, Complainants argued that a person of ordinary skill in the art would in fact know how to make a functioning glue layer using any of the materials within the scope of the claim based on the patent’s disclosure, and that under well-established legal precedent it was not required to describe every mode of the claimed invention in order to satisfy the enablement requirement.  The Commission Investigative Staff argued that the motion should be denied.

ALJ Charneski denied all of the motions for summary determination, finding that genuine issues of material fact remain and that it had not been established that any of the movants were entitled to determination as a matter of law.