PUBLIC VERSION UNITED STATES INT ERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of CERTAIN SEMICONDUCTOR CHIPS WITH MINIMIZED CHIP PACKAGE SIZE AND PRODUCTS CONTAINING SAME .. "I 4 4 Investigation No. 337-TA-432 c3 C: C3 Cd h ". c.; INITIAL DETERMINATION Administrative Law Judge Sidney Harris Pursuant to the Notice of Investigation, 65 Fed. Reg. 25758 (2000), this is the Administrative Law Judge's Initial Determination in the Matter of Cerfain Semicondi~ctor Chips wilh Minirnized Package Size and Products Containing S am, United States International Trade Commission Investigation No. 337-TA-429. 19 C.F.R 9 210.42(a). The Administrative Law Judge hereby determines that a violation of section 337 of the Tariff Act of 1930, as amended, has been found in the importation into the United States, the sale for importation, or the sale within the United States after importation of certain semiconductor chips with minimized package size and products containing same by reason of infringement of claims 6 or 22 of U. S. Letters Patent 5,679,977 and claims 1, 3, or 11 of U.S. Letters Patent 5,852,326.
Transcript
PUBLIC VERSION
UNITED STATES INT ERNATIONAL TRADE COMMISSION Washington, D.C.
In the Matter of
CERTAIN SEMICONDUCTOR CHIPS WITH MINIMIZED CHIP PACKAGE SIZE AND PRODUCTS CONTAINING SAME
. . "I
4 4 Investigation No. 337-TA-432
c3 C: C3 Cd h ". c.;
INITIAL DETERMINATION Administrative Law Judge Sidney Harris
Pursuant to the Notice of Investigation, 65 Fed. Reg. 25758 (2000), this is the
Administrative Law Judge's Initial Determination in the Matter of Cerfain Semicondi~ctor Chips
wilh Minirnized Package Size and Products Containing S a m , United States International Trade
Conclusions of Law.. ....................................................................................................... .3 56
Initial Determination and Order .................................................................................... .357
I. BACKGROUND
A. Institution and Procedural History of This Investigation
On April 27, 2000, the Commission ordered that this investigation be instituted, based on
a complaint filed by Tessera, Inc., of San Jose, California (“Tessera” or “complainant”).
Consequently, on May 3, 2000, by publication of a Notice of Investigation in the Fbderal
Register, this investigation was instituted, pursuant to section 337 of the Tariff Act of 1930, as
amended, to determine:
(a) whether there is a violation of subsection (a)(l)(B) of section 337 in the importation into the United States, the sale for importation, or the sale within the United States after importation of certain semiconductor chips with minimized chip package size or products containing same by reason of infringement of claims 6 or 22 of U. S . Letters Patent 5,679,977 or claims 1, 3, or 11 of U.S. Letters Patent 5,852,326; and
(b) whether an industry in the United States exists as required by subsection (a)(2) of section 337.
65 Fed. Reg. 25758 (2000).
The Commission named as respondents: Texas Instruments of Dallas, Texas (“Tl”);
Sharp Corporation of Osaka, Japan; and Sharp Electronics Corporation of Mahwah, New Jersey
(collectively, “Sharp” or “respondents.”). Id.
Benjamin D. M. Wood, Esq. of the Ofice of Unfair Import Investigations (OUII) was
designated as the Commission Investigative Attorney. Id.
On June 2, 2000, the Administrative Law Judge issued Order No. 4, setting a target date
and procedural schedule for this investigation. The hearing was scheduled to commence on
October 30, 2000, and May 14, 2001, which was approximately 12 months from the date of
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institution, was set as the target date for completion of the investigation. On August 23, 2000,
upon the request of complainant and respondents, the Administrative Law Judge issued Order
No. 6, which rescheduled the hearing to commence on January 23, 2001. On November 22,
2000, through Order No. 10, the Administrative Law Judge issued a limited stay of this
investigation to commence on November 30, 2000, for a period of 45 days. The stay issued
because the Administrative Law Judge granted TI’S motion to seek interlocutory review of Order
No. 5, which denied TI’S motion for termination as a respondent. The Administrative Law
Judge’s determination to grant TI leave to apply for interlocutory review of Order No. 5 was
based on an a subsequent opinion by the Court of Appeals for the Federal Circuit concerning
related litigation in Federal District Court and a license agreement which was at issue in this
investigation. On January 22, 2001, the Commission issued an Order continuing the limited stay
during the pendency of the Commission’s interlocutory review of Order No. 5 .
On February 14, 2001, the Administrative Law Judge issued Order No. 16, granting
complainant’s motion to withdraw the complaint allegations as to TI, and to terminate the
investigation as to TI. On February 14, 200 1, the Administrative Law Judge issued Order No.
18, setting a new procedural schedule. In accordance with that Order, the hearing in this
investigation commenced on April 5, 2001.2 However, the hearing did not conclude on April 13,
On March 2, 200 1, the Commission issued its Notice of Commission Determination Not to Review an Initial Determination Granting a Motion to Withdraw All Allegations Against Respondent Texas Instruments Incorporated, and to Terminate the Investigation As to That Respondent; and of Commission Determination to Terminate As Moot Commission Review of ALJ Order No. 5 and to Terminate Limited Stay.
No jurisdictional challenge was made in this investigation. The Administrative Law Judge finds that the Commission has personal jurisdiction over the parties, and subject matter
(continued., .)
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2001, as scheduled. The hearing concluded on April 19, 2001, with a pending request by
respondents to reopen the record at some later date to receive additional, allegedly
newly-discovered evidence, proffered on the question of patent validity. On June 1, 2001 , the
Administrative Law Judge issued Order No. 33, which denied respondents’ Motion No. 432-80
to reopen the hearing record in this investigation.
On April 23, 2001, the Administrative Law Judge issued Order No. 30, an initial
determination extending the target date for completion of this investigation to January 25, 2002.
On May 23, 200 1, the Commission issued its Notice of a Commission Determination Not to
Review an Initial Determination Extending the Target Date for Completion of the Investigation.
The following abbreviations may be used in this Initial Determination:
ALJ - Administrative Law Judge
cx - Complainant’s Exhibit
CPX - Complainant’s Physical Exhibit
Dep. - Deposition
EDIS - Electronic Document Imaging System
FF - Finding(s) of Fact
PCL - Proposed Conclusion of Law
PFF - Proposed FF (CPFF, RPFF or SPFF)
R x - Respondents’ Exhibit
(. ..continued) jurisdiction over this investigation. See, e.g., Op., Section 11; FF, Sections I1 and IV G.
50, 53-58, 62-64. See CX-14C. Sharp disclosed additional CSP products in Attachment One to
c x - 2 2 c .
A finding as to infringement or non-infringement requires a two-step analytical approach.
First, the claims of the patent must be construed to determine their scope. Carroll Tomch, Inc.,
15 F.3d at 1576. Second, a determination must be made as to whether the properly construed
claims read on the accused device. Id. Accord Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
1576, 1581-82 (Fed. Cir. 1996).
A. Claim Construction
1. The General Law Pertaining to the Interpretation of Patent Claims
Carroll Touch Inc. v. Electro Mechanical Sys., Inc., 3 F.3d 404, 407 (Fed. Cir. 1993) (“Although claim 24 was the only claim asserted at trial, it is turn is dependent on claim 16, which in turn is dependent on addressing whether claim 24 was infringed by the accused . . whether claim 1 was infringed.”).
dependent on claim 23, which in independent claim 1. Thus, in . products, we must consider
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Claim construction is a question of law decided by the court. Markman v. Westview
in the written description may not be read into a claim. One looks “to the specification to
ascertain the meaning of the claim term as it is used by the inventor in the context of the entirety
of his invention,” and not merely to limit a claim term. C‘omark, 156 F.3d at 1 186-87.
If the meaning of the claim limitation is apparent from the totality of the intrinsic
evidence, then the claim has been construed. If, however, a claim limitation is still not clear, one
may look to extrinsic evidence to help resolve the lack of ~ l a r i t y . ~ Relying on extrinsic evidence
to construe a claim is “proper only when the claim language remains genuinely ambiguous after
consideration of the intrinsic evidence.” Bell & Howell Docunzenf Mgmf. Prods. C‘o. v. AItek Sys.,
132 F.3d 701, 706 (Fed. Cir.1997); Vitronics, 90 F.3d at 1583-85 (“Such instances will rarely, if
ever, occur.”). Extrinsic evidence may always be consulted, however, to assist in understanding
the underlying technology. See Pifney Bowes, 182 F.3d at 1309 (“[C]onsultation of extrinsic
evidence is particularly appropriate to ensure that [a judge’s] understanding of the technical
aspects of the patent is not entirely at variance with the understanding of one skilled in the art.”);
Vitronics, 90 F.3d at 1585 (“Had the district court relied on the expert testimony and other
extrinsic evidence solely to help it understand the underlying technology, we could not say the
Dictionaries are a form of extrinsic evidence with a special place in claim construction, and may sometimes be considered along with the intrinsic evidence. See Vitronics, 90 F.3d at 1584 n. 6 (stating that, although technically extrinsic evidence, the court is free to consult dictionaries at any time to help determine the meaning of claim terms, “so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents”).
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district court was in error.”). Extrinsic evidence may never be used “for the purpose of varying
or contradicting the terms in the claims.” Markman, 52 F.3d at 98 1.
Throughout the claim construction process, the claims are construed in view of a person
skilled in the art.‘ Intellicall, Inc. v. Phonometvics, Inc., 952 F.2d 1384, 1387 (Fed. Cir.1992);
Hoechsf Celanese Coip 11. BP Cheins. Lfd, 78 F.3d 1575, 1578 (Fed. Cir.1996) (The court
assigns a claim term the meaning that it would be given by persons experienced in the field of the
invention.).
2. The Claims at Issue
The asserted claims of the ‘977 patent are as follows:
1. A semiconductor assembly comprising a semiconductor chip having a plurality of surfaces and having contacts on at least one of said surfaces and a flexible sheetlike element having terminals thereon, and flexible leads electrically connecting said terminals to said contacts, wherein said sheetlike element and at least some of said terminals overlie one said surface of said chip and said sheetlike element bears upon such surface of said chip, said terminals are movable with respect to said chip and said contacts, said flexible leads and said flexible sheetlike element being adapted to deform to accommodate movement of said terminals with respect to said contacts.
* * *
6 . A chip assembly as claimed in claim 1 or claim 2 or claim 3 or claim 4 wherein said chip has oppositely-facing front and rear surfaces, said contacts are disposed on said front surface, and said sheetlike element and said terminals overlie said rear surface of said chip.
* * *
‘ The hypothetical person of ordinary skill in the art in 1990 is someone who had an engineering degree with four to five years of industry experience in electronic packaging, with an interest in the reliability of electronic products. Engelmaier Tr. 653 -654, 707-708.
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22. A semiconductor chip assembly as claimed in claim 1 firther comprising a substrate having contact pads thereon, said sheetlike element being disposed between said chip and said substrate, each said terminal being connected to one said contact pad of said sub st r at e.
CX-2/RX-1 (‘977 Patent).
The asserted claims of the ‘326 patent are as follows:
1. A semiconductor assembly comprising:
a semiconductor chip having oppositely facing front and rear surfaces and edges extending between said front and rear surfaces, said chip firther having contacts on a peripheral region of said front surface;
a backing element having electrically conductive terminals and lead portions thereon, wherein said lead portions are connected to said terminals, said backing element overlying said rear surface of said semiconductor chip such that at least some of said terminals overlie said rear surface of said chip;
bonding wires connected to said contacts on said front surface of said chip, said bonding wires extending downwardly alongside said edges of said chip and being connected to the lead portions on the backing element;
wherein said terminals are movable with respect to said chip.
* * *
3. The semiconductor assembly as claimed in claim 1, wherein said backing element is flexible to facilitate the movement of the terminals with respect to the chip.
* * *
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11. The semiconductor assembly as claimed in claim hrther including bonding material attached to said terminals through said holes.
CX-URX-2 (‘326 Patent).
3. Interpretation of the Term “Movable,” As Used in Both the ‘977 and ‘326 Patents
Independent claim 1 of the ‘977 patent contains the following element: said terminals are
movable with respect to said chip and said contacts. CX-2 (‘977 Patent), col. 34, lines 9-10
(emphasis added). Independent claim 1 of the ‘326 patent contains the following element:
wherein said terminals are niovahle with respect to said chip. CX-1 (‘326 Patent), col. 34, lines
35-36 (emphasis added). The parties dispute the proper meaning of the term “movable” as used
in the patents at issue. Inasmuch as the ‘977 and ‘326 patent specifications are virtually identical,
and the term is used similarly in the patents, e.g., to refer to terminals that are movable, the
parties have presented their arguments pertaining to the term “movable” in general sections
applicable to both patents. The Administrative Law Judge has also determined that the most
As stated in claim 11 of the ‘326 patent, it depends from claim 10. Claim 10 depends from dependent claim 9. Claims 9 and 10 of the ‘326 patent are as follows:
9. The semiconductor assembly as claimed in claim 1, wherein:
a) said backing element has a top surface facing toward the chip and a bottom surface facing away from the chip; and
b) said lead portions and terminals are located on said top surface of said backing element.
10. The semiconductor assembly as claimed in claim 9, the backing element fbrther including holes therethrough from said top surface to said bottom surface, wherein the terminals are exposed through said holes.
C X - 1 M - 2 (‘326 Patent).
efficient way to discuss the term “movable” is to do so in a section applicable to both the ‘977
and ‘326 patents.
Dictionary definitions of “movable” may include: “inclined to move or quick in
movement . . , capable of being moved . . . not fixed . . . not stationary.” See Wehster ’,s Third
New Int ’I Dictiorinry 1479 (1976). However, each of the parties implicitly or explicitly
acknowledge that a simple dictionary definition of the term does not settle the disputes
concerning the movable terminals covered by the claims at issue. See, e.g , OUII Post-Hearing
Br. at 19 (“[Olne of ordinary skill in the art would understand from the patent disclosure and
prosecution history that ‘movable’ in the context of the present invention has a special meaning
and particular limitations.”). In connection with their arguments, the parties rely on the claims,
the lengthy remainder of the specification, the prosecution history, and in some cases extrinsic
evidence. The claim construction disputes pertain to: (1) the type of movement involved (Le.,
whether there are limitations requiring “fixed position” movement, including limitations as to the
direction of the movement), (2) the amount of movement required for “movable” terminals (i.e.,
whether terminals should be considered “movable” only if they compensate for a specific amount
of thermal expansion, or only if the movement of the terminals relieves a specific amount of
.
stress on solder joints), and (3) the conditions in which the claimed movement will occur (Le.,
whether there are limitations on operating or testing temperatures, and if so, the temperature
parameters).
Complainant Tessera argues that “[als properly construed, one of ordinary skill in the art
would understand that ‘movable’ refers to terminals that can move relative to the chip to provide
substantial compensation for differential thermal expansion, and thus significantly improve
solder joint reliability.” See Tessera’s Post-Hearing Br. at 13-14. Tessera argues that one of
ordinary skill who focuses on the claims and specification would never adopt respondents’
proposed claim construction, which requires “fixed position’’ movement, ostensibly to relieve all
or substantially all stress on the solder joints. Indeed, Tessera denies that the limited movement
proposed by Sharp would relieve all or substantially all of the stress on the solder joints. See,
e.g., Tessera’s Reply to Sharp’s Br. at 6- 7. Tessera argues that the movement covered by the
claims may occur in any direction. See, e.g., Tessera’s Post-Hearing Br. at 17. Tessera rejects
the argument that the claims require decoupiing or a compliant layer for the moveable terminals.
See, e.g., Id,; Tessera’s Reply to Sharp’s Br. at 8. Tessera hrther rejects arguments that seek to
limit “movable” to movement that occurs only when the chip package is turned on, or over a
“normal operating temperature” of the package. See, e.g., Tessera’s Reply to Sharp’s Br. at 9.
Tessera’s Reply to OUII Br. at 3 .
The Sharp respondents argue that one of ordinary skill in the art would discern from the
intrinsic evidence that the term “moveable” means movement of the terminals that compensates
for the thermal expansion between the chip package and the PCB. In particular, Sharp argues
that movement which compensates for differential thermal expansion is “fixed position”
movement, resulting in the relief of all or substantially all of the stress and strain on the solder
ball joints by which the solder ball joints of the chip package become substantially resistant to
fatigue failures caused by thermal cycling. Sharp argues that the “fixed position” movement
required as a result of the prosecution history means that the terminals will move in tandem with,
and to the same general extent as, the solder pads on the PCB substrate. See Sharp’s
Post-Hearing Br. at 5-8.
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Sharp has illustrated the type of “fixed position” or “in tandem” movement that it
proposes, as follows:
Sharp’s Post-Hearing Br. at 1.
As seen in Sharp’s illustration, points located along an axis running from the top of the
solder ball (where the terminal is located) through the solder ball to the bottom of the solder ball
(where the contact is located) move in a strictly horizontal direction and remain in the same
relationship to each other as the entire solder ball moves, seemingly free of stress and strain.
The Commission Investigative Staff argues that in the context of the present invention
“‘movable’ means movable to an extent necessary to serve the inventors ’purposes, as
understood by one of ordinary skill in the art.” OUII Post-Hearing Br. at 19 (emphasis in
original)(citing Wright Medical Technology, Inc. v, Osteonics Corp., 122 F.3d 1440, 1443 (Fed.
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Cir. 1 997)).8 Based on the patent specifications, the Staff argues that “the claimed movability
must occur during the operation of the chip, and must be sufficient to improve the reliability of
the chipRCB interconnections to a degree significant to one of ordinary skill in the art.”’ The
Staff argues that there is no particular purpose to be gained by relieving all or substantially all of
the mechanical stress on the solder joints, that not all stress is harmful, and it would be
impractically difficult to relieve all of it. OUII Post-Hearing Br. at 22-23.
The plain language of the patent claims in most cases provides answers to most of the
disputed questions. The claims at issue of both ‘326 patent and the ‘977 patent read on a
semiconductor assembly that includes a semiconductor chip. The claims of the patents require
that the terminals be located on “a backing element” which overlies the rear surface of the chip,
in the case of claim 1 of the ‘326 patent - or, in the case of the ‘977 patent, on “a flexible
sheetlike element” which overlies one surface of the chip. In the case of claim 1 of the ‘326
’ The Federal Circuit’s opinion in the Wrighi case quotes the court’s earlier opinion in Bausch & Lonib, Inc. v. BarMes-Hind/Hydrocurve, Inc., 796 F.2d 443 (Fed. Cir. 1986), which contains language similar to that relied on by the Staff. See Bausch & Lonzh, 796 F.2d at 450 (“We hold that smooth means smooth enough to serve the inventor’s purpose.”). However, by rejecting such a claim construction in the Wr.ight case, it is evident that under Federal Circuit precedent, such a claim construction does not apply in all cases in which a claim element is modified by an adjective, adverb or similar phrase, e.g., “smooth,” “SO that” or “closely fit.” Rather, it applies only when it is in agreement with the particular disclosure made by a patent’s claims, specification and prosecution history. See Wright, 122 F.3d at 1443. One cannot limit a claim only to the extent that it “serves the inventor’s purpose” and thereby ignore other genuine claim limitations. See Id at 1444 (“Wright does not seek to interpret the claim terms, as we did in Laitrani [Corp. 11. Cambridge Wire Cloih Co., 863 F.2d 855, 858 (Fed. Cir.1988)] and Bausch & Lomh, but seeks to eviscerate them.”).
From the Staffs discussion of the infringement issues, it is clear that the Staff argues that only movement during normal operation of a device is relevant. The Staff relies on test data allegedly pertaining only to the “normal operation” of Sharp’s accused CSP products. See OUII Post-Hearing Br. at 29.
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patent, the specific claim language pertaining to the movable nature of the terminals requires that
the “terminals are movable with respect to said chip.” In the case of claim 1 of the ‘977 patent,
the claim language requires that the “terminals are movable with respect to said chip,” and
firther expressly specifies that the terminals be movable with respect to “said contacts,” i.e., the
contacts on at least one surface of the semiconductor chip.
The claim language does not state how much stress must be relieved by movement of the
terminals. Although the claim language states that the terminals must be movable with respect to
the chip or the contacts on the PCB, it does not specify the sort of “in tandem” movement
proposed by respondents. Furthermore, the asserted claim language requires a “backing element”
or a “flexible sheetlike element.” Yet, it does not specify “decoupling” or a “compliant layer,” as
proposed by respondents. Indeed, the ‘326 patent’s claim 17 (which depends from claim 1 or
claim 4 and is not asserted in this investigation), and the ‘977 patent’s claim 2 (which depends
from claim 1 and is not asserted in this investigation) add limitations requiring a compliant
layer.’” Thus, it would be expected that the asserted claims would not contain limitations added
‘‘I Claim 17 of the ‘326 patent is as follows:
17. The semiconductor assembly as claimed in claim 1 or claim 4, further comprising a compliant layer disposed between said backing element and said rear surface of said chip to facilitate the movement of said terminals.
CX-1 (‘326 Patent).
Claim 2 of the ‘977 patent is as follows:
2. An assembly as claimed in claim 1 wherein said sheetlike element includes a compliant layer disposed between said terminals and said chip.
CX-2 (‘977 Patent). (continued.. .)
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in dependent claims. See Doiv C‘hein. Co. v. UnifedSfafes, 226 F.3d 1334, 1341- 42 (Fed. Cir.
2000)(applying the doctrine of claim differentiation and concluding that an independent claim
should be given broader scope than a dependent claim to avoid rendering the dependent claim
redundant); Karlin Tech., Inc. v. Surgical Dynamics, hzc., 177 F.3d 968, 971-72 (Fed.
Cir. 1999)(explaining that the doctrine of claim differentiation “normally means that limitations
stated in dependent claims are not to be read into the independent claim from which they
depend”).
The language of the asserted claims does not place limitations on direction of movement
or whether movement is in tandem with the solder balls. However, with respect to the question
of direction, unasserted claim 24 of the ‘326 patent, which depends from claim 1, explicitly adds
the limitation that movement must be in directions parallel to the chip surface, i.e. horizontal
movement.” Unasserted claim 25 of the ‘326 patent, which also depends from claim 1,
(. . .continued) Claims 3 and 4 of the ‘977 patent fbrther limit the compliant layer by specifling properties of
the compliant layer required by claim 2, as follows:
3. A chip assembly as claimed in claim 2 wherein said compliant layer is formed from an elastomeric material.
4. A chip assembly as claimed in claim 2 wherein said compliant layer includes masses of a low modulus material and holes interspersed with said masses of low modulus material, said masses of said low modulus material being aligned with said terminals, said holes in said compliant layer being out of alignment with said terminals.
CX-2 (‘977 Patent).
l 1 Claim 24 of the ‘326 patent is as follows:
24. The semiconductor assembly as claimed in claim 1, wherein said terminals are (continued.. .)
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explicitly adds the limitation that the movement must be perpendicular to the chip surface, Le.,
vertical movement.
movement of the terminals that is both parallel and perpendicular to the rear surface of the chip. l 3
Thus, one would expect that independent claim 1 would be broad enough to cover both types of
movement, and would not be restricted to horizontal movement, as proposed by respondents.
See Desper Prods., Inc v. QSoundLahs, Inc., 157 F.3d 1325, 1338 n.5 (Fed. Cir.
1998)(dependent claims are necessarily narrower than the independent claims from which they
depend); Wahpeton Canvas Co., Inc. v. Frontier, Inc., 870 F.2d 1546 (Fed. Cir. 1989) (“It is
axiomatic that dependent claims cannot be found infringed unless the claims from which they
Claim 25 may also depend from claim 24, and thereby literally cover
I ’ (...continued) movable in a direction parallel to said rear surface of said chip.
CX-1 (‘326 Patent).
l 2 In its reply brief, Sharp appears to concede that perpendicular movement of the terminals in this context is the same as vertical movement. See Sharp’s Rebuttal Br. at 5. Nevertheless, Sharp argues the only vertical movement of terminals disclosed in the specification concerns the testing of chip contacts by probes, and that thus under Tessera’s analysis, claim 25 would lack support in the specification and would be invalid under 35 U.S.C. 6 112, fl 1. Id. However, it is not clear that the only disclosure of vertical movement is in fact in the context of testing. See, e.g., CX-1 (‘326 Patent) col. 3, lines 61-64; col. 8, lines 1-8. Moreover, if vertical movement is specifically discussed only in the context of testing, the significance of that fact would be unclear.
l3 Claim 25 of the ‘326 patent is as follows:
25. The semiconductor assembly as claimed in claim 1 or claim 24, wherein the terminals are movable in a direction perpendicular to said rear surface of said chip.
CX-1 (‘326 Patent).
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depend have been found to have been infringed . . . . ” ) . I 4
No claim in either the ‘326 patent or the ‘977 patent contains an explicit limitation of
temperature associated with the movable terminals. The specifications of the ‘326 and ‘977
patents contain little information concerning temperature, other than to state under the caption
“TECHNICAL FIELD” that thermal cycling occurs when interconnection structures connecting a
chip to a substrate ordinarily are subject to substantial strain caused by thermal cycling as
temperatures within a device change during operation. See CX-l/RX-2 (‘326 Patent), col. 2,
lines 4-26; CX-2RX-1 (‘977 Patent), col. 1, line 59 - col. 2, line 14. While this is pertinent
background to the claimed inventions, it. does not elucidate any claim term.
The claim language would be significant to one of ordinary skill in the art, who would
understand more than a lay person about the terminals and their movement simply by reading the
claims. See, cg. , Engelmaier Tr. 724.‘ Nevertheless, reference must be had to the remainder of
the specification to be sure that the claims are properly construed and to resolve the specific
disputes about the term “movable” which the parties have raised in this investigation.
In the specification, the “SUMIVLARY OF THE INVENTION” portion begins with a description
of the physical features of one aspect of the invention, and thereby introduces a discussion of
how movement will occur according to the invention. The Summary begins with the following
paragraph:
One aspect of the present invention provides a semiconductor chip assembly. An assembly according to this aspect of the invention
It appears that the patentee in writing dependent claims that cover all possible types of 14
movement encompassed in the term “movable” sought to be particularly carehl not to exclude any type of movement from claim coverage. The patentee may also have added these dependent limitations to protect against patent invalidity. See, e.g., D. Chisum, Patents, Ej 8.06[5] (1998).
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typically includes a semiconductor chip having a plurality of surfaces and having contacts on at least one of said surfaces. The assembly fbrther includes a sheetlike, preferably flexible, element having terminals thereon, the terminals being electrically connected to the contacts on the chip. Assemblies according to this aspect of the invention are characterized in that the sheetlike element and at least some of said terminals overly one surface of said chip, said terminals are movable with respect to said chip and in that resilient means for permitting displacement of the terminals toward the chip, but resisting such displacement are provided. Most preferably, a compliant layer is disposed between said terminals and said chip so that said compliant layer will be compressed upon movement of said terminals toward said chip.
Thus, from the outset it is clear that a compliant layer, located between the terminals and
the chip, while preferable, is an optional element and need not be present according to the
invention. It is also clear that some “displacement of the terminals toward the chip” and
“movement of said terminal[s] toward said chip” is expected and accounted for in the invention,
with or without the complaint layer. Thus, perpendicular, or vertical, movement is disclosed in
the specifications
The Summary quickly proceeds to a short discussion of thermal expansion, as follows:
Because the terminals, and hence the contact pads on the substrate overlie the chip front or back surface, the assembly is compact. The ability of the terminals to move with respect to the chip in directions parallel to the chip surfaces provides compensation for differential thermal expansion of the chip and substrate.
C X - I N - 2 (‘326 Patent), col. 4, lines 6-1 1.
Consequently, in addition to perpendicular or vertical movement, movement parallel to
the chip surfaces, i.e., horizontal movement, is taught in the specification, as is the use of such
movement to compensate for differential thermal expansion.
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In the Summary, there is no quantification of the amount of movement to be expected by
a device practicing the invention. Nor is there any discussion of operating temperature or
temperature parameters for testing the movable nature of the terminals. The Summary portion of
the specification does, however, support the claims, discu’ssed above, which demonstrate that a
semiconductor assembly according to the invention may or may not include a compliant layer.
See CX-I (‘326 Patent), col. 3, lines 61-65 (“Most preferably, a compliant layer is disposed
between said terminals and said chip so that said compliant layer will be compressed upon
movement of said terminals toward said chip.”); col. 4, lines 24-29 (“Methods according to this
aspect of the invention desirably are characterized . . . in that a compliant layer is disposed
between said chip and said terminals.”); col. 5, lines 14-16 (“The assembly according to this
aspect of the invention optionally may include a compliant layer as discussed above.”); col. 6,
lines 11-14 (“Here again, the assembly may optionally include a compliant layer as discussed
above.”); col. 8, lines 6-8 (“Desirably, the terminals on the backing elements are also moveable
relative to the chip in directions towards the bottom surface of the chip as discussed above, and
the assembly may include resilient means for permitting movement of the terminals towards the
bottom surface but resisting such movement. For example, the assembly may incorporate a layer
of a compliant material disposed between the chip rear surface and the terminal^.").'^
l 5 Sharp argues that the asserted claims must be interpreted to require a compliant material located between the terminals and the chip (if they are attached). It is argued that if the claims are not so interpreted, they lack written description support and are invalid under 35 U.S.C. 9 112. See Sharp’s Post-Hearing Br. at 15. However, as discussed, supra, the specification unequivocally states that a compliant layer, while preferable, is an optional element and need not be present according to the invention. Furthermore, Sharp has not demonstrated by clear and convincing evidence that its proposed narrower interpretation of the disputed claims is the only possible interpretation. See OUII Post-Hearing Br. at 36 (citing Johnson Worldwide A.s~socs., Inc.
(continued.. .)
20
The portions of the ‘326 and ‘977 patent specifications that contain a discussion of the
preferred embodiments of the claimed invention (“DETAILED DESCRIPTION OF THE PREFERRED
EMBODIMENTS”) are identical in the two patents, and include references to the following Figures
2 and 3 .
CX-l/RX-2 (‘326 Patent); CX-2RX-1 (‘977 Patent).
In Figure 2, a rigid substrate 20 has a top surface 22 on which contact pads 24 are
disposed. A semiconductor chip 28 is depicted above the substrate 20. The chip 28 has a
generally planar rear face 36, and a generally planar front face 38 on which electrical contacts 40
l5 (...continued) v. Zehco C o p , 175 F.3d 985, 993 (Fed. Cir. 1999).
21
are disposed. The electrical contacts 40 are electrically connected to the internal electronic
components of the chip 28. The chip is mounted on the substrate 20 in a front-face-down
orientation, i.e., with the front face 38 of the chip facing toward the top surface 22 of the
substrate. In this embodiment, a flexible, sheetlike, dielectric interposer 42 is located between
the chip and the substrate. The interposer may incorporate one or more layers (not depicted), and
prqferahly includes a compliant, compressible layer. l6 The interposer 42 has a plurality of
terminals 48 on its second face 46. Each terminal is associated with one of the contacts 40 on the
chip and is connected to a contact 40 by a flexible lead 50. The lead associated with each
l 6 As indicated in detail above with respect to the Summary portion of the specification and the embodiment depicted in Figures 2 and 3, the interposer may have a plurality of layers, and may include a compliant layer. Where an embodiment of the invention includes more than one layer, the specifications of the ‘326 and ‘977 patents provide as follows:
In an assembly method according to one embodiment of the invention, a sheet-like dielectric interposer 836 is assembled to chip 820. Interposer 836 includes a flexible top layer 838 (FIG. 13) formed by a thin sheet of material having a relatively high elastic modulus and a compliant bottom layer 840 formed from a material having a relatively low elastic modulus. The high-modulus material of top layer 838 may be a polymer such as a polyimide or other thermoset polymer, a fluoropolymer or a thermoplastic polymer. The compliant, low-modulus material of bottom layer 840 may be an elastomer. Desirably, the low-modulus material has elastic properties (including modulus of elasticity) comparable to those of soft rubber, about 20 to 70 Shore A durometer hardness. Interposer 836 has a first or bottom surface 842 defined by bottom layer 840 and a second or top surface 844 defined by top layer 838. Bottom, compliant layer 840 includes holes or voids 841 interspersed with masses 843 of the low-modulus material.
Such “particular embodiments appearing in a specification will not be read into the claims when the claim language is broader than such embodiments.” EIectro Med. S’s. S.A. v. Cooper Life Sci., Inc., 34 F.3d 1048, 1054 (Fed. Cir.1994). See also Intervet, 887 F.2d at 1053 (Care must be taken to avoid reading “limitations” appearing in the specification into the claims.).
22
terminal 48 has a contact end 56 which is disposed within an associated aperture 54 and
connected to the associated contact on the chip. An elastomeric, dielectric encapsulant 60 is
disposed in the apertures 54 so that the encapsulant covers the contact ends 56 of the leads 50
and the junctures of the leads with the contacts 40. Each lead also has a terminal end 58
connected to an associated terminal 48. Each terminal is also associated with one contact pad 24
on the substrate 20, and each terminal 48 is bonded to the associated contact pad 24 by a mass 52
of electrically conductive binding materials such as solder or a conductive polymer. Thus, the
contacts on the chip are interconnected via leads, terminals and masses (such as solder) with the
contact pads on the substrate. CX-1 (‘326 Patent), col. 10, line 23 - col. 11, line 18; CX-2 (‘977
Patent), col. 10, line 11 - col. 11, line 5.
Sharp argues that contrary to the description of one embodiment of the invention depicted
in Figures 2 and 3, when the terminals are attached to the chip, a compliant layer must be used,
and that when the terminals are decoupled from the chip, a compliant layer is not required.
Sharp’s argument depends, however, on its own particular reading of the claims and the
specifications which does not hold up upon scrutiny. For example, in its reply brief Sharp
argues :
Claim I does not require a compliant layer. However, the patents clearly state that when the terminals are physically attached to the chip (e.g., by a “die bond”), a coniplimt mnterial must be located between them in order for the terminals to remain “movable.” (RX-2, Col. 22, lines 9-20) Thus, a compliant layer is not required when the chip is literally decoupled from the substrate (i.e., unattached). When a die attach is used, a compliant layer is necessary to effectively decouple the chip and substrate.
Sharp’s Rebuttal Br. at 13
23
The portion of the specification cited by Sharp discusses a specific embodiment of the
claimed invention, which is an “alternate” arrangement to that depicted in Figures 11-14. In this
alternate arrangement, an interposer incorporates a “flexible top layer similar to the top layer 838
of the interposer discussed . . . with reference to FIGS. 11-14.” The “[tlerminals and leads are
positioned on the first or bottom surface of this layer, so that the terminals face toward the chip
when the layer is in position on the chip.” See C X - I N - 2 (‘326 Patent), col. 22, lines 3-8.
However, the subsequent 12 lines, relied on by Sharp, address the question of how horizontal
movement is to be accommodated in such an arrangement in which the terminals face toward the
chip. However, there is no indication that one wishing to practice the claimed invention must
stay within the construct proposed by Sharp, Le., terminals attached to the chip with a compliant
layer versus decoupled chip and terminals with no compliant layer. The construct argued by
Sharp is necessary to support its argument concerning horizontal, “fixed position” or “in tandem”
movement, which neither the claims nor the specification support.
Indeed, in addition to a description of many physical characteristics of this embodiment,
the specifications of the ‘326 and ‘977 patents also discuss the behavior of the interposer and the
terminals. With reference to the embodiment depicted in part by Figure 3, the specification
states:
The contact end 56 of each lead 50 is moveable relative to the associated terminal 48. As best seen in FIG. 3, the contact end 56n of lead 50n can be displaced from its normal, undeformed position (shown in solid lines) in the directions parallel to the faces 44 and 46 of interposer 42 and parallel to the front face 38 of chip 28. For example, the contact end 56n may be displaced to the position indicated in broken lines at 56n’. This displacement is permitted by the flexibility of the lead 50 and by buckling and wrinkling of interposer 42. Encapsulant 60 is compliant, and does not substantially
24
resist flexing of leads 50 and buckling and wrinkling of interposer 42. The displacement illustrated in FIG. 3, from the normal undisplaced position 56a to the displaced position 56a’ places the lead 50 in compression. That is, the terminal end 56n moves generally toward the associated terminal 48 in moving from position 56n to position 56n’. Movement in this direction is particularly well accommodated by buckling of the lead 50. The contact end of each lead can also move in other directions, such as in the opposite direction from position 56n away from the associated terminal 48, and in directions perpendicular to these directions, into and out of the plane of the drawing as seen in FIG. 3 .
Thus, the specification describes “buckling and wrinkling” of the interposer upon which
the terminals are located. Such action does not connote uniform movement, such as strictly
horizontal or strictly vertical. Indeed, while the illustration of Figure 3 depicts movement
parallel to the faces 44 and 46 of interposer 42 and parallel to the front face 38 of chip 28, the
portion of the specification quoted above states that the terminal end 56n moves generally toward
the associated terminal 48 in moving from position 56n to position 56n’. In addition, the
specification teaches that the movement depicted in Figure 3 is not the only movement that may
occur or that the invention is designed to accommodate. The specification explicitly states that
“[tlhe contact end of each lead can also move in other directions, such as in the opposite
direction from position 56a away from the associated terminal 48, and in directions
perpendicular to these directions, into and out of the plane of the drawing as seen in FIG. 3.”
Such movement of the contact end of the lead follows from movement of the interposer, which is
not described as, e.g., sliding, shifting or any other movement that could possibly be thought of
as strictly horizontal or parallel in nature. Rather the “movable” characteristic of the terminals is
better understood when one considers the movement of the interposer in this preferred
25
embodiment, which bears the terminals and, as discussed above, is described as “wrinkling and
buckling.”
The question of the amount of movement that must occur in the movable terminals is also
discussed in connection with a krther embodiment of the claimed inventions disclosed in the
specifications of the ‘326 and ‘977 patents. That embodiment, which is depicted in part in Figure
13, has a sheetlike dielectric interposer that includes a flexible top layer and a compliant bottom
layer. See C X - I N - 2 (‘326 Patent), col. 17, lines 45-62; CX-2/RX-1 (‘977 Patent), col. lines
32-49. The specification contains a detailed discussion of the movement of the terminals and the
stresses and the bonds between the terminals and contacts:
The interconnections between the chip and the substrate (between peripheral contacts 830 and contact pads) are accommodated within the area of the chip itself, Le., within the area on the substrate occupied by chip 820. Thus, no space on the surface of the substrate is wasted by a conventional “fan-out” pattern of interconnections. Moreover, the assembly is suhstantially resistant to themal cycling. Each of the composite leads connecting one of the chip peripheral contacts and one of the central terminals 848 on the interposer is flexible Thus, the partial leads 50 (FIG. 13) on the interposer surface itself preferably are flexible, and the fine bonding wires 856 are also flexible. The interposer itself, and particularly the top layer 838 and bottom compliant layer 840 may be flexible. Accordingly, there can be substantial niovenzent of terniinals 848 on the interposer relative to contacts 830 on the chip in directions parallel to the chip front surface. Such movement can be accommodated without applying substantial forces to the junctions between the leads and the chip contacts. During use of the assembly, differential thermal expansion of chip 820 and substrate may cause appreciable displacement of the contact pads on the substrate relative to peripheral contacts 830 on the chip. Inasmuch as the central terminals 848 of the interposer are bonded to the contact pads of the substrate by relatively stiff noncompliant conductive masses, the central terminals will tend to niove with the contact pads. However, such movement is readily accommodated and does not result in substantial stresses at the bonds between the central terminals and contact pads.
In addition, there is evidence that one of ordinary skill in the art would read the claims
and specifications to teach significant improvement in solder joint reliability. See Engelmaier Tr.
7 15-7 16, 723. Indeed, one of ordinary skill in the art would understand that it would be
impossible to construct an assembly capable of eliminating all the stress on solder joints due to
thermal cycling in contemporary semiconductor chip assemblies. Qu Tr. 351-353. In fact, a
theoretical device modeled by Sharp’s expert according to Sharp’s proposed claim construction
showed that stress would still remain on the solder joints. See Pitarresi Tr. 1406; RX-833.
Nevertheless, one skilled in the art would understand that there is an exponential relationship
between the reduction of stress and improvement in reliability. For example, a 50 percent
reduction in strain in this equation would result in a fourfold increase in fatigue life. See Charles
28
Tr. 1800-1 802. To a person of ordinary ski.11 at the time the of the invention, applying industrial
standards to manufactured products, a “significant” improvement in reliability of a solder joint
would begin at about 20 to 25%. Engelmaier Tr. 973-974. Consequently, it would be apparent
to one of ordinary skill in the art that the “fixed position” movement proposed by Sharp or an
attempt to avoid all stress on a solder joint is impossible and not required by the claims of the
‘326 and ‘977 patents in view of the specifications and patent claims.
Despite these facts, Sharp argues that the claims of the ‘326 and ‘977 patents must be
construed to require “fixed position” or in tandem movement to avoid all or substantially all of
the stress on the solder joints because of statements made during patent prosecution to overcome
a rejection in view of a prior art patent, Le., United States Patent No. 4,878,098 to Saito et al.
(RX-4 (Saito Patent)).
The statements at issue pertain directly to the prosecution of U.S. Patent No. 5,148,266,
Semiconductor Chip Assemblies Having Interposer and Flexible Lead, which issued on
September 15, 1992, to the inventors listed on the ‘326 and ‘977 patent, i.e., Khandros and
DiStefano.I7 The ‘266 patent is a parent of the ‘326 and ‘977 patents-in-suit.’* The specification
l 7 A copy of the ‘266 patent is included in its prosecution history. See CX-5; RX-3e.
The ‘326 patent is a continuation of U.S. patent application Ser. No. 08/861,280, filed on 18
May 21, 1997, which is in turn a continuation of U.S. patent application Ser. No. 08/3 19,966, filed on Oct. 7, 1994, now U.S. Patent No. 5,685,885. U.S. patent application Ser. No. 08/319,966 is a continuation of U.S. patent application Ser. No. 08/030,194, filed Apr. 28, 1993 as the national phase of International Application PCT/US91/06920 filed Sep. 24, 1991. Ser. No. 08/030,194 application, now U.S. Patent No. 5,679,977, was in turn a continuation of U.S. patent application Ser. No. 07/765,928, filed Sep. 24, 1991, now U.S. Patent No. 5,347,159. U.S. patent application Ser. No. 07/765,928 was a continuation in part of U.S. patent application Ser. No. 071673,020, filed Mar. 21, 1991, now U.S. Patent No. 5,148,265 and said U.S. patent application Ser. No. 07/765,928 was a continuation in part of U.S. patent application Ser. No.
(continued.. .)
29
of the ‘266 patent consequently contains several portions that are identical to the specifications of
the ‘326 and ‘977 patent Among the identical illustrations in the ‘266 patent are Figures 2 and 3
of the ‘326 and ‘977 specifications, which are reproduced above.
Sharp points out that according to Federal Circuit precedent, “[wlhen multiple patents
derive from the same initial application, the prosecution history regarding a claim limitation in
any patent that has issued applies with equal force to subsequently issued patents that contain the
same claim limitation.” See, e . g , Sharp’s Rebuttal Br. at 1 1 (quoting Elkay Mfg. Co. v. Ehco
wfg. Co., 192 F.3d 973, 980 (Fed Cir. 1999)). Thus, Sharp argues, the January 8, 1992
Amendment is significant intrinsic evidence in the claim interpretation of both the term
“movable,” and the term “flexible,” which is below.
Tessera argues that the claims of the ‘266 patent are addressed to face-down
embodiments, while most of the asserted claims are addressed to face-up embodiments, and
fbrther that the ‘977 and ‘326 patents are continuations-in-part of the ‘266 patent, and their
specifications include material not disclosed in the ‘266 patent. Because the claims at issue in
the ‘266 patent differ from those of the asserted patents, Tessera argues that the prosecution
history of the ‘266 patent is of limited relevance to the interpretation of the asserted claims. See,
’’ (...continued) 07/586,758, filed Sep. 24, 1990, now U.S. Patent No. 5,148,266. Said U.S. patent application Ser. No. 08/030,194 is also a continuation in part of said U.S. patent application Ser. Nos. 07/586,758 and 07/673,020. CX- 1RX-2 (‘326 Patent).
The application for the ‘977 patent was a continuation in part of U.S. patent application Ser. No. 07/586,758, filed Sep. 24, 1990, now U.S. Patent No. 5,148,266, which was a continuation in part of U.S. patent application Ser. No. 07/673,020 filed Mar. 21, 1991, now U.S. Patent No. 5,148,265, and a continuation of U.S. patent application Ser. No. 07/765,928 filed as PCT/US91/06920 Sep. 24, 1991, now U.S. Patent No. 5,347,159. The ‘977 patent issued with the notice that the term of the patent shall not exceed the expiration date of U.S. Patent No. 5,148,266. CX-2RX-1 (‘977 Patent).
30
e.g. , Tessera’s Post-Hearing Br. at 18
Despite the clear differences between the ‘266 patent and the patents at issue, among
them there is a continuity in the concepts relating to the terms “moveable” and “flexible.”
Furthermore, claim limitations pertaining to those terms appear in the ‘266 patent. Thus, an
examination of the prosecution of the application which led to the ‘266 patent is relevant and
important to claim construction of the patents-in-suit
On August 8, 1991, the PTO mailed an office action relative to Application No. 586,758,
which led to the ‘266 patent, and parent to the suit patents. The Examiner rejected claims 1-3, 5-
10 and 15-1 8 of the pending ‘758 application “under 35 U.S.C. 5 103 as being unpatentable over
Saito et a1 in view of Quinn et a1 [U.S. Patent No. 4,685,9981,” CX-5 (Part 8); RX-3a. The
substance of the Examiner’s rationale is, as follows:
Saito et a1 show a semiconductor chip assembly comprising a chip 10 having a plurality of contacts 14 and a sheet like dielectric interposer 16 formed of flexible material having apertures in the form of vias extending from surface to surface.
A plurality of generally, planar terminals 20 are shown disposed in a pattern overlying a second surface of interposer 16 and associated with one of the contacts on said chip. A conductive lead 18 in the form of a metallic strip is shown extending between said terminals 20 and contact 14, extending through said aperture or via and formed integrating with said terminal. Said lead in shown to have a contact end connected to contact 14 and a terminal end connected to terminal 20. Said apertures are aligned with the contacts of chip 10, and said leads are shown connected to the contacts on said chip. Figures 1 and 2 shows lead 18 having a curved portion in a direction perpendicular to the second gurface of the interposer.
Saito shows consistent or even spacing between terminal and chip contacts in figures 5 and 6.
As the materials of the interposer of Saito et a1 are disclosed to formed of such materials as polyamide. It would have been obvious to one having ordinary skill in this art to form the leads of Saito et a1 flexible because substrates formed of materials such as polyamide are
31
conventionally formed with flexible leads and as said substrate are formed of flexible materials said leads are deemed to also be inherently flexible.
Figures 6 of Saito et a1 shows terminals 20 disposed in a rectilinear grid pattern.
Quinn et a1 discloses interposer 310 bonded to chip 30 by an adhesive (Le SiO,, nitride).
It would have been obvious to one having ordinary skill in this art to bond the interposer of Saito to chip 10 with an adhesive because Quinn et a1 teaches use of adhesives to bond interposers to chips.
CX-5 (Part 8); RX-3a.
On January 2, 1992, the Examiner conducted an interview with the applicants’ patent
attorney, Marcus Millet, concerning rejected claim 1 of the ‘758 application. Relative to the
interview, the Examiner recorded:
Mr. Millet presented arguments relative to the Saito et a1 reference as well as discussed an amendment to claim 1 relative to the “movable” element in the last line. Mr Millet% arguments were noted and will be considered upon receipt ofthe response to the rejections of the last office action.
CX-5 (Part 9).
Indeed, on January 13, 1992, the PTO received an Amendment and Remarks on behalf of
applicants. Among the amended claims was the following:
1. (Amended) A semiconductor chip assembly comprising:
(a) a semiconductor chip having a front surface and a plurality of contacts disposed in a pattern on said front surface, said pattern encompassing a contact pattern area on said front surface;
a sheetlike dielectric interposer overlying said front surface of said chip, said interposer having a first surface facing toward said chip and a second surface facing away from said chip, an area of said interposer overlying said contact pattern area of said chip, said interposer having apertures extending from said first
surface to said second surface;
(b)
32
(c) a plurality of terminals disposed in a pattern on said second surface of said interposer, at least some of said terminals being disposed in said area of said interposer overlying said contact pattern area, each such terminal being associated with one of said contacts on said chip; and
(d) a flexible conductive lead extending between each said terminal and the associated one of said contacts, each such lead extending through one of said apertures, each said lead having a contact end connected to the associated contact and a terminal end connected to the associated terminal, said terminals being moveable relative to the contact ends of said leads so as to compensate for thermal expansion of said chip.
CX-5 (Part 13); RX-3b (underlining in original to show added text in claim).
With respect to amended claim 1 of the ‘758 application, a series of statements appeared
in the Remarks, some of which form the basis of Sharp’s prosecution history arguments in this
investigation. Specifically with respect to amended claim 1, the Remarks state:
Claim 1 was rejected under 35 USC 5 103 on Saito et al, U.S. Patent 4,878,098 in view of Quinn et al, U.S. Patent 4,685,998. By the present amendment, claim 1 has been modified to more clearly state a hnction of the moveability referred to in the last line of the claim. As discussed in the interview, and as set forth in applicant’s specification at page 6, lines 25 et seq and page 7, line 26 et seq moveability of the contact ends of the leads relative to the terminals permits movement of the chip contacts relative to the terminals and thus permits movement of the chip contacts relative to the terminals. This allows for movement of the chip contacts relative to a substrate when the terminals are ultimately bonded to a substrate. Such relative movement typically is in directions parallel to the planes of the chip surface and the interposer surface. See page 13, line 15 et sey in the specification[ .]
Saito was relied upon in the Official Action as teaching a chip assembly having a chip with contacts, a sheetlike interposer overlying the chip and having terminals thereon. The Official Action characterizes Saito as having an interposer “formed of flexible material” and as suggesting that the leads should be flexible “because substrates formed of materials such as polyimide are conventionally formed with flexible leads” and also because the leads [of Saito] “are deemed to also be inherently flexible.” It is thus understood that
33
Saito is relied upon as meeting the recitation in applicant’s claim 1 that the terminals on the interposer are “moveable relative to the contact ends of the leads”
As noted in the interview however, Saito does not suggest or teach an interposer which is flexible or leads which are flexible. Applicant need not dispute that polyimide under certain circumstances can be formed into a flexible structure. But as pointed out at the interview, there is no reason whatever to believe that the interposer of Saito, if formed from polyimide, would be flexible, or that any such flexibility would permit relative movement of the terminals and the contact ends of the leads. As noted during the interview, Saito nowhere states explicitly that the interposer or leads should be flexible. Indeed, Saito suggests that the interposer can be made from “SiOx or SiNx” (column 4, line 4), which are manifestly non-flexible and essentially rigid materials. Insofar as the reference teaches a synthetic resin interposer layer 16, the reference suggests that the same should be formed from a synthetic resin, such as polyimide, epoxy, acrylic or teflon resin, which can be hardened by ultraviolet rays (column 3, lines1 5- 17). That range of polymers encompasses materials of widely varying physical properties including brittle, inflexible materials. The reference does not state or suggest that the polymer should be or must be flexible in any way. Moreover, the statement that the polymer should be selected so that
the polymer “can be hardened by ultraviolet rays” instantly informs one of ordinary skill that the reference contemplates a coating process, in which the polymer is deposited on the chip face and cured in place. One of ordinary skill in this art thus would understand the Saito disclosure of polyimide as calling for a coating of polyimide on the chip surface adherent to the chip itself and forming a part of the chip. Moreover, one of ordinary skill would appreciate that such coatings ordinarily are of microscopic thickness. Although not mentioned at the interview, it is noted that Quinn also relied upon for this rejection, discloses a polyimide coating “6 microns” thick (column 4, line 9). One of ordinary skill in the art would understand Saito as calling for a layer of polyimide of similar thickness firmly bonded to the top surface of the chip. The terminals 20 on the top surface of Saito’s coated layer 16 would be in fixed position relative to the contacts on the chip Therefore, Saito’s terminals would be in fixed positions relative to the contact ends of the leads.
Applicant does not concede that leads on polyimides substrates are “inherently” or “conventionally” flexible, but insofar as Saito is concerned it makes no difference. Whether or not the leads themselves might be flexible is immaterial. In the Saito structure,
34
with a thin coated layer firmly fixed in position on the chip, the leads would be incapable of flexing even if the lead structure itself, apart from the underlying structure, were flexible. As pointed out in the interview, Saito’s leads 18 entirely fill the holes or vias in layer 16 (Fig. 1). Saito does not suggest an arrangement where part of a lead extending in an aperture is free to flex whether or not the interposer flexes, as is used in some of applicant’s embodiments (specification, pages 13 - 14) With Saito’s bound, coated layer, the leads cannot flex.
Clearly, Saito offers not the slightest suggestion that terminals should be moveable relative to the contact ends of the leads “so as to compensate for thermal expansion of said chip,” as set forth in amended claim 1, Le., to compensate for movement of the chip contact relative to the terminals, and hence to allow the terminals to remain in fixed positions when bonded to a substrate. There is not the slightest hint in Saito that the polyimide layer, or the lead structure or both should provide sufficient flexibility to accommodate relative movement between the terminals and the contact ends of the leads, so as to provide substantial compensation for thermal expansion of the chip and movement of the contacts caused by such thermal expansion. Nothing in Saito has been pointed out as suggesting that the interposer and lead structure could or should accommodate any such relative movement.
At the interview, counsel noted that, under applicable law the burden of proof with regard to obviousness is upon the Patent and Trademark Office. Thus, mere speculation that the terminals on the Saito interposer might be moveable with respect to the contacts on the chip is not enough. Speculation and assumptions cannot take the place of a clear teaching in the reference. In Re Warner, 154 USPQ 173,178 (CCPA 1967). Quinn was not relied upon as offering any disclosure relevant to the
moveability feature discussed above But in any event, Quinn does not support the rejection of claim 1 . As noted above, Quinn’s disclosure clearly contemplates a 6-micron (about .0002 inch) coating of polyimide firmly bonded to the chip and forming an integral part of the chip itself (column 4, lines S - 29). Indeed, Quinn speaks of the 6-micron “thick layer of polyimide” as forming part of “chip 300” (column 4, lines 54 - 58). Quinn therefore teaches away from any arrangement involving movement of terminals on such a layer relative to the remainder of the chip. Quinn thus leads away from the invention of claim 1 Quinn subsequently bonds this composite “chip” to a conventional lead frame for connection to a substrate (Figs. 5 - 7).
35
For all of the reasons set forth above, the 35 USC $103 rejection should be withdrawn with respect to claim 1, and also with respect to claims 2 - 3, 5 - 10 inclusive and 1.5 - 18 inclusive, dependent from claim 1.
CX-5 (Part 13); RX-3b (emphasis in original).
Sharp argues that to distinguish the claimed invention of the ‘758 application (and ‘266
patent) over Saito, Tessera19 amended its claims to require a particular type of movement, Le.,
movement which compensates for differential thermal expansion, and in its Remarks also
provided a clear understanding that the movement which compensates for thermal expansion
allows the terminals to move in fixed positions with the PCB substrate to which the chip package
is attached. It is argued that as stated in the prosecution history, the terminals “remain in fixed
positions” with respect to the PCB substrate, and thus the terminals will move in tandem with
and to the same general extent as, the solder pads on the PCB substrate. Sharp argues that as
stated in Tessera’s Remarks, and as confirmed by Dr. Pitarresi during the hearing, because the
terminals move in “fixed positions” with the PCB, the solder ball joints of the chip package
become substantially resistant to fatigue failures caused by thermal cycling, as also described in
the specification of the ‘977 patent.2” Sharp’s Post-Hearing Br. at 5-7.
l9 Although Sharp refers to “Tessera’s” amendment and statements before the PTO, the ‘266 patent was, or course, prosecuted on behalf of the applicantshnventors, A Tessera predecessor was listed as the patent’s assignee. See CX-5; Bottoms Tr. 97-98, 102-103 (concerning IST Associates, “which later became Tessera.”).
2” In related arguments, Sharp states that in connection with the prosecution of the ‘977 patent, Tessera removed the phrase “so as to compensate for thermal expansion” from the “movable” clause in its claims, thus making the ‘977 claims appear broader. The PTO rejected the ‘977 claims, and asked Tessera to explain where the movable feature was taught in the specification. Sharp argues that in response to the rejection, Tessera represented to the PTO that the term movable by itself means movement that “compensates” for the differential thermal
(continued.. .)
36
Tessera argues that none of the prosecution history, not even the January 1992
Amendment, approaches a “clear disavowal” of the claim interpretation it proposes in this
investigation or that is contained in the specifications of the ‘977 and ‘326 patents. See Tessera’s
Post-Hearing Br. at 7-8 (citing York Prods., Inc. 11. Central Tractor Farm & Family c‘tr., 99 F.3d
1568, 1575 (Fed. Cir. 1996)). It is argued that Sharp has failed to consider the prosecution
history as a whole. See Tessera’s Post-Hearing Br. at 7-8 (citing Buyer AG v. Elan Pharm.
Research Corp., 212 F.3d 1241, 1252 (Fed Cir 2000)).
As an initial matter, the Administrative Law Judge observes that the prosecution history
of the ‘758 application (which led to the ‘266 patent) pertains to movement which “Compensates
for differential thermal expansion” and is wholly consistent with the claim construction proposed
by Tessera for the ‘977 and ‘326 patents in this investigation. This appears to be without
controversy in the parties’ briefs. The fact that the movement involved in the ‘758 application
compensates for differential thermal expansion was significant to that patent prosecution
because, as pointed out to the Examiner, Saito disclosed no movement that would compensate
for thermal expansion. The controversies arise in this investigation when one considers the
actual movement which takes place according to the claimed inventions, particularly its direction
and its extent.
2” (. . .continued) expansion that occurs between the chip and the PCB substrate. See Sharp’s Post-Hearing Br. at 7-8 (RX-10 at 5-6 (All of the passages cited above state the concept that the terminals should be movable with respect to the chip and with respect to the contacts of the chip so as to compensate for thermal expansion of elements in the svstem.”)). As indicated supra in this opinion, the movement at issue compensates for differential thermal expansion. That point does not appear to be in controversy. The qusstions at issue in the argument between the parties are the type of movement covered by the claimed invention, and the extent to which movement relieves stress on the solder joints according to the claimed invention.
37
To support its argument that the terminals and solder pads must move in tandem, Sharp
relies on the fact that the applicants, through their patent attorney, stated that in the claimed
invention of amended claim 1 of the ‘758 application, the terminals move “in fixed positions.”
However, a reading of that statement in context shows that it does not require the sort of in
tandem movement proposed by Sharp. The portion of the prosecution history relied on by Sharp
is herein repeated:
Clearly, Saito offers not the slightest suggestion that terminals should be moveable relative to the contact ends of the leads “so as to compensate for thermal expansion of said chip,” as set forth in amended claim 1 , i.e., to compensate for movement of the chip contact relative to the terminals, and hence to allow the terminals to remain in fixed positions when bonded to a substrate. There is not the slightest hint in Saito that the polyimide layer, or the lead structure or both should provide sufficient flexibility to accommodate relative movement between the terminals and the contact ends of the leads, so as to provide substantial compensation for thermal expansion of the chip and movement of the contacts caused by such thermal expansion. Nothing in Saito has been pointed out as suggesting that the interposer and lead structure could or should accommodate any such relative movement.
It is evident from the applicants’ statement, when considered in context, that the
applicants did not seek to limit their invention to fixed position movement. The Remarks speak
of an invention that would “allow” the terminals to remain in a fixed position, yet they do not
suggest that fixed position movement would constitute the entirety of the movement according to
the invention, nor do the Remarks indicate that fixed position (or in tandem) movement would
alleviate all or substantially all stress on the solder joints. The applicants state that there is not
the slightest hint in Saito of sufficient flexibility to accommodate relative movement between the
terminals and the contact ends of the leads, so as to provide substantial compensation for thermal
38
expansion of the chip and movement of the contacts caused by such thermal expansion. There is
no indication that “relative movement” would always require the terminals to move in horizontal,
fixed positions, as proposed by Sharp. In fact, as quoted above, the applicants pointed out that
“[a]s discussed in the interview, and as set forth in applicant’s specification . . . the claimed
invention permits movement of the chip contacts relative to the terminals and thus permits
movement of the chip contacts relative to the terminals. This allows for movement of the chip
contacts relative to a substrate when the terminals are ultimately bonded to a substrate. Such
relative movement typically is in directions parallel to the planes of the chip surface and the
interposer surface.” It is clear that the movement of the applicants’ invention is “relative” and
thus only “typically” in directions parallel to the planes of the chip surface and the interposer
surface.
Finally, there is the question of the extent to which movement must occur. Sharp relies
on the ‘758 application for the ‘226 patent to argue that Tessera is bound by prosecution history
to movement that relieves all or substantially all of the stress. As shown above, the ‘758
applicants’ Remarks call for “substantial compensation for thermal expansion of the chip and
movement of the contacts caused by such thermal expansion.” Such “substantial compensation”
in the prosecution history of the ‘266 patent is not the equivalent of the limitation that Sharp
would read into the claims of the ‘977 and ‘326 patents. “Substantial compensation” for thermal
expansion (with no mention of relieving all or substantially all the stress on the solder joints)
supports Tessera’s proposed construction of the ‘977 and ‘326 patents at issue, which requires
.
39
“substantial compensation for differential thermal expansion.”21 Indeed, the language used by
Tessera is virtually the same as its proposed claim construction here.
Summary with Eiespecf l o lhhe 7 k i w “A4ovuhle ’’ us (/.sed in the ‘977 urd ‘326 Patents
Claim 1 of the ‘326 patent and claim 1 of the ‘977 patent, the patent specifications and
the relevant prosecution histories in evidence all support the conclusion that the term “movable,”
as used in those claims, refers to terminals that provide substantial compensation for differential
thermal expansion by horizontal movement, vertical movement, or movement in directions with
both horizontal and vertical components (e.g., in response to “wrinkling and buckling). The
“movable” terminals may, but need not, move in tandem with and to the same general extent as
the solder pads on the PCB substrate. Although the claimed inventions cover the use of a
compliant layer, the term “movable” does not refer to a limitation such that when the terminals
are physically attached to the chip (e.g., by a “die bond”), a compliant material must be located
between them in order for the terminals to remain “movable” within the scop of the claims.22
4. Interpretation of the Term “Flexible,” As Used in Both the ‘977 and ‘326 Patents
As shown above, the semiconductor assembly of independent claim 1 of the ‘977 patent
includes “a plurality of surfaces [ ] having contacts on at least one of said surfaces and a.flexihle
21 As quoted, supru, in connection with a preferred embodiment in the ‘977 and ‘326 patent specifications, the applicants stated that “the assembly is sinhstunfiully resistunf to therniul CJ’Cling. ”
22 The claims of the ‘977 and ‘326 patent do not set forth temperature parameters with reference to the movable terminals. The question of how temperature may be a factor in determining whether the claims read on particular devices will be discussed below in the section on infringement I
40
sheetlike elemen1 having terminals thereon, andaflexihfe feuds electrically connecting said
terminals to said contacts . . . said terminals are movable with respect to said chip and said
contacts, suid,flexihfe fends and .suid,flcxihle sheetlike efenient k i n g udupted to dcfomi to
ncconiniodute movement of mid feniiiirals with respect to mid contacts.” CX-2KX- 1 (‘977
Patent)(emphasis added). The semiconductor assembly of independent claim 1 of the ‘326 patent
comprises “a hacking element having electrically conductive terminals and lead portions thereon,
wherein said lead portions are connected to said terminals . .” CX-l/RX-2 (‘326
Patent)(emphasis added). With respect to the backing element, claim 3 (which depends from
claim 1) adds a limitation “wherein said backing element is,flexihle to facilitate the movement of
the terminals with respect to the chip ” fd (emphasis added).
As pointed out by the Commission Investigative Staff, there is no evidence that the term
“flexible” is a term of art. Indeed, the patent specifications do not expressly define “flexible,” or
indicate that it is a term of art. They use the term consistently with its ordinary meaning, and the
Administrative Law Judge construes the term as such for the purposes of interpreting the asserted
claims of the ‘326 and ‘977 patents. The ordinary meaning of the term “flexible” is “capable of
being bent or flexed.” See OUll Post-Hearing Br. at 13-14 (citing SX-3 (dictionary) at 487; SX-4
(dictionary) at 5 13; SX- 1 (dictionary) at 973) To “bend” is to “[florce (a thing having some
rigidity) out of straightness or normal form; bow, curve, crook, inflect;” also, to “assume a
curved, crooked, or angular form or direction ” Id. (citing SX-1 (dictionary) at 213; SX-3
(dictionary) at 165) No party contests the definition of “flexible” and this simple concept of
flexibility. The disputes arise when the term is applied to the specific claim elements at issue,
particularly, the extent to which the elements must be flexible, and whether the elements must be
41
flexible throughout their entire length
Tessera argues that one of ordinary skill in the art would understand that the claims at
issue require that the leads, the sheetlike element and the backing element be flexible prior to
assembly, Le., bendable or pliable, and retain sufficient flexibility in the completed assembly so
- in the words of the claims - to be “adapted to conform,” or to “accommodate” or to “facilitate”
the movement of terminals in the package. It is argued that if the term “flexible” only referred to
flexibility in the completed assembly. the limitation “flexible,” and the limitation “adapted to
deform,” “accommodate,” or “facilitate” would collapse into a single limitation, which is
disfavored under the canons of claim construction. See Tessera’s Post-Hearing Br. at 21-22
(citing Texas Instrimeiits, Inc. 1). (Jiiifed States Int ’ I Trade Conm ’n, 988 F.2d 1165, 1171 (Fed.
Cir. 1993). Tessera also relies on examples from the specifications which refer to the leads, the
sheetlike element and the backing element as flexible before assembly. See Id. at 22-23. Tessera
argues that nothing in the file histories disavows partially flexible elements that are adapted to
deform to accommodate movement in the completed assembly. See Id. at 24-25.
Tessera rejects Sharp’s proposed construction which would require the elements to be
“not restrained” or completely free to flex Tessera characterizes Sharp’s proposed construction
as an attempt to import limitations from specific embodiments. It is argued that flexibility has
been recognized to be a relative concept, and further that the specifications confirm that the
flexible leads, sheetlike or backing elements need not be completely flexible, Le., flexible over
their entire lengths. See Id. at 23-24; Tessera’s Reply to Sharp at 10-1 1.
Tessera argues that the proposed construction of the Commission Investigative Staff is
nearly consistent with its own, except that the Staff would impermissibly import certain language
42
from the specification into the claims. The Staff urges that the discussion of “tape automated
bonding” or “TAB” in the “TECHNICAT, FIELD” portion of the specifications shows that “flexible”
means that the leads must “bend readily” in the completed assembly. See OUII Post-Hearing Br.
at 14. Tessera argues that TAB assemblies, while discussed in the “TECHNICAL FIELD,” appear to
be constructed differently than the claimed packages.23 Moreover, it is argued that inasmuch as
the specification does not require a “bend readily” limitation, it should not be read into the
claims.24 Rather, the amount of flexibility necessary in the completed assembly is defined in the
claim language itself, Le., “adapted to deform to accommodate movement” of the terminals. See
Tessera’s Reply to OUT1 at 2-3 (citing L S / m x i / / y Coni,tms//e 11. Cahot Corp,, 845 F 2d 981, 987
(Fed. Cir. 1988); Coinark, 156 F 2d at 1 1 86).25
The Administrative Law Judge finds Tessera’s arguments concerning the proposed “bend
23 For example, the specifications state that in TAB, “because the leads utilized in tape automated bonding extend outwardly in a radial, ‘fan out’ pattern from the chip, the assembly is much larger than the chip itself.” CX-I/FW-2 (‘326 Patent), col. 3, lines 9-12; CX-2/RX-1 (‘977 Patent), col. 2, lines 64-67.
24 Within the context of the ‘326 and ‘977 patent specifications, the discussion of TAB is part of the explanation of the technical field in which the claimed inventions occurred. There is no indication that the features of TAB were meant by the inventors necessarily to constitute any limitations on the claimed inventions. See, e . g , CX-l/RX-2 (‘326 Patent), col. 2, lines 29-35 (“Various attempts have been made heretofore to provide primary interconnection structures and methods to meet these concerns, but none of these is truly satisfactory in every respect. At present, the most widely utilized primary interconnection methods are wire banding, tape automated bonding or “TAB” and flip-chip bonding.”); CX-2/RX-1 (‘977 Patent), col. 2, lines 17-23.
2s For example, in Specinlty C‘o~i~posi fc.~, the Federal Circuit stated: “Though polyvinylchloride entails a very high concentration of external plasticizer added to preformed polymer, the specification does not require a numerically high concentration of external plasticizer, but only a ‘suficiently high concentration of organic plasticizer’ to achieve specified results. Where a specification does not require a limitation, that limitation should not be read from the specification into the claims.” 845 F.2d at 987 (emphasis in original).
43
readily” limitation to be persuasive i n view of the intrinsic evidence, and does not construe
“flexible” to mean or require that a lead or any other element of the claim must “bend readily.”26
Sharp argues that the proper interpretation of “flexible” is “free to flex” in the completed
assembly, and that this interpretation is required by the specification and prosecution history of
the patents at issue.27 Sharp also relies on the deposition testimony of inventor Igor Khandros.
26 In addition, the Staff rejects Tessera’s argument that the term “flexible” refers to the nature of the sheetlike element and leads prior fo n.s.seiiihly Citing Exxon Chenz. Patents, Inc. v. Lubrzzol C O I . ~ . , 64 F 3d 1553 (Fed Cir 1995), the Staff argues that the asserted claims of the ‘977 patent “must be interpreted as containing the specified elements - here, a flexible sheetlike element and flexible leads - at any t i i i ie , j ion i the iiioment a t which the ingredients a re assembled.” See OUlI Post-Hearing Br at 14-16 (emphasis in original). In Luhrizol, the Federal Circuit held that a patent’s claims to a “lubricating oil composition . . . comprising” five ingredients were not to a “recipe,” a product-by-process covering any composition made of the ingredients, or a “final” product with the ingredients Rather, the Luhrizol claims covered a composition that contains simultaneously all the ingredients at any time. In any event, the Luhrizol holding does not prohibit temporal limitations in all composition claims, but rather to afirm that each composition claim, like other claims, must be construed in the context of its unique specification and prosecution history See Biogt.71, Inc. v. Berlex Labs., Inc, 113 F. Supp.2d 77 (D. Mass 2000)(interpreting and applying the Lubrizol case). Furthermore, the holding in Luhrzzol appears to be limited to similar composition claims, and appear not to apply to the ‘977 patent As discussed, .si/prcr, the ‘977 patent specification contains teachings that support Tessera’s argument that “flexible” applies to a type of element which is modified to arrive at the claimed final product, a type of semiconductor assembly.
27 Sharp argues that although the term “flexible” is not expressly included in the ‘326 patent, proper construction of the patent requires that there be a “flexible” component within the chip assembly to permit the claimed relative movement. See Sharp’s Post-Hearing Br. at 15-16. This argument is unclear inasmuch as there are numerous occurrences of the term “flexible” in the ‘326 patent, including occiirrences of the term in asserted claim 3 (“said backing element is
flexible”), unasserted claim 4 (“said lead portions are.flexihle”), unasserted claim 5 (“said backing element is a,jkxib/e sheet of a material selected from the group comprising . . .”), and unasserted claim 13 (“a,flexihle dielectric material connected to and covering at least a portion of said bottom surface of said backing element theflexible dielectric material acts as a solder mask”). CX-1RX-2 (‘326 Patent)(emphasis added).
Sharp appears to argue that a person of ordinary skill in the art would interpret claim 1 of the
. said.ji’exihle dielectric material has apertures . . .
It is, however, the case that the term “flexible” is not found in claim 1 of the ‘326 patent.
(continued.. .)
44
See Sharp’s Post-Hearing Br. at 15-1 9; Sharp’s Rebuttal Br. at 4-5. In particular, Sharp relies on
a portion of Mr. Khandros’ testimony that the lead and the sheetlike elements must be flexible
and either unattached or attached with a soft material. See Id. at 15-16 (quoting RX-12
(Khandros Dep.) Tr. 181. Sharp fiirther relies on a portion of the prosecution history of the ‘977
patent in which the applicants discuss “free to move” and “free to flex,” and argues that Tessera
distinguished the claimed invention over the Saito patent’s bound leads, see Id. at 16-17 (quoting
RX-3b, Jan. 1992 Resp. at S), and over the epoxy encapsulated sheetlike element of the Hawkins
patent, U.S. Patent No. 4,989,069 (RX-5), see Zd at 17-18 (quoting RX-3d at 2). Based upon the
specification of the ‘977 patent and prosecution history, Sharp also argues that the flexible
component must be surrounded by a compliant material in the completed assembly. See Zd. at
18-19 (quoting CX-2/RX-1 (‘977 Patent), col. 5, lines 24-35, col. 11, lines 13-17; and RX-10 at
4-5).
Any claim construction analysis begins with the patent claims. Pitney Bowes, 182 F.3d at
1305. In this case, based on the plain language of the claims, one of ordinary skill in the art
would understand that the claimed flexible elements - “leads” and “sheetlike element” in claim
1 of the ‘977 patent, and the “backing element” in claim 3 of the ‘326 patent - are flexible (i.e,,
bendable or pliable) prior to assembly. See Engelmaier Tr. 727-729. One of ordinary skill in the
27 (...continued) ‘326 patent implicitly to require that either the bonding wires or the backing element, or both, be flexible to permit the terminals to move with respect to the chip. See Sharp’s Post-Hearing Br. at 16 (not specifically mentioning claim 1). While some flexibility may be implicitly understood by a person skilled in the art with respect to claim 1 of the ‘326 patent, that is not a material point in this investigation because, as discussed in the infringement section, Sharp’s accused devices have enough flexibility to infringe claim 1 , even if a “flexible” limitation is read into, or understood to be implicit in, the claim.
45
art would know that the components used for ‘‘leads’’ and the “sheetlikehacking elements” in the
electronic packaging industry are bendable or pliable prior to assembly. For example, package
substrate materials - corresponding to the sheetlike or backing element - are commonly referred
to as “flex substrates” by those in the industry In addition, flexible package substrates often
come with “lead portions” or metallic traces already installed, and the entire package substrate is
bendable or pliable before assembly Engelmaier Tr 727-728; Kada Tr. 1303; CX-33 1C (Kada
Dep.) Tr. 81, Thin gold bonding wires are also obviously flexible before assembly. In addition,
one of skill in the art would understand that the leads and sheetlike/backing elements must retain
sufficient flexibility in the completed assembly to be “adapted to deform” to “accommodate” or
“facilitate” the movement of terminals in the package. Engelmaier Tr. 728-729.
Indeed, the claims recite a separate limitation which provides that the flexible leads and
sheetlike element are “adapted to deform to accommodate movement of [the] terminals with
respect to [the chip] contacts ” CX-2/RX-l (‘977 Patent), col. 34, lines 11-13. Claim 3 of the
‘326 patent requires that the flexible backing element be able to “facilitate the movement of the
terminals with respect to the chip ” CX-I/RX-2 (‘326 Patent), col. 34, lines 41-42. This claim
language identifies a subset of flexibility that characterizes the behavior of flexible elements aRer
they are assembled into a completed product. Engelinaier Tr. 731, 733-734. If the term
“flexible” only referred to flexibility in the completed assembly, the limitations “flexible” and
“adapted to deform” to “accommodate” or “facilitate” movement would collapse into a single
limitation. Such a construction is disfavored See Texus Instruments, Inc. v. US. Int ’I Trade
Comm ’n, 988 F.2d 1 165, 1 17 1 (Fed Cir 1993) (rejecting construction that renders disputed
claim language “mere surplusage”) Thus. the separate limitation, “adapted to deform,” confirms
46
the understanding of one of ordinary skill in the art that “flexible” refers to the characteristics of
the elements prior to assembly.2x
The ‘977 and ‘326 patent specifications support the understanding of one of ordinary skill
in the art who has read the claims to mean that “flexible” refers to a characteristic of components
before assembly. For exaniple, the specifications refer to: (a) “assembling a flexible, sheetlike
element having terminals thereon to a [semiconductor] chip” (CX-2RX-1 (‘977 Patent), col. 4,
lines 9-10); and (b) “[tlhe fine, flexible bonding wires 856 applied in the wire bonding operation”
(CX-2RX-I (‘977 Patent), col. 18, lines 33-35). These descriptions clearly refer to the
characteristics of the elements prior to assembly.
The specifications also discuss the retention of enough flexibility in the completed
assembly to accommodate or facilitate movement. For example, the specifications state that a
“flexible top layer” can be attached to a die through an adhesive compliant layer, so that “the top
layer will reniain flexible even when bound to the chip through the compliant layer, and the
terminals will still be movable.” CX-2/RX-1 (‘977 Patent), col. 21, lines 57-60; col. 22, lines 4-6
(emphasis added). Here, the specifications clearly refer to an element that is flexible before
assembly that retains enough flexibility to allow movement of the terminals in the final package.
With respect to claim language, Sharp argues that “[c]ommon sense and the basic rules of 28
grammar dictate that the ‘adapted to deform’ element occurs prior to assembly. Sharp’s Rebuttal Br. at 4 (emphasis in original). Sharp also argues that Tessera’s proposed interpretation is incorrect. See Sharp’s Reply to Tessera’s PFF at 120 - 122 (“‘Adapted’ is in the past tense, rendering Tessera’s interpretation grammatically incorrect.”). The Administrative Law Judge observes that word “adapted” is “in the past tense” in the sense that it is a past participle, which is apparently used in this instance as an adjective. The word indicates that the subject elements are or become “adapted” at some point. Yet the fact that “adapted” is a past participle does not indicate precisely when the adaptation occurred, or how long and to what extent the subject elements must remain in their adapted state.
47
In another example, the specifications state that “the assembly also includes flexible,
refers to flexibility prior to assembly, because the specifications also state that “[tlhe leads and
the interposer are constructed and arranged so that the contact ends of the leads are movable
relative to the terminals. , . . The leads desird7ij) nre,flexih/e to permit such movement.”
CX-2/RX-1 (‘977 Patent), col 4, lines 62-67 (emphasis added). That is, the leads desirably are
flexible enough after assembly to facilitate movement.
Sharp construes “flexible” to niean “not restrained” by other package components, and
completely free to flex. However, the notion that an element must be “absolutely flexible” or
“completely flexible” tends toward the absurd In a general sense, flexibility is a feature that
must be thought of in relative terms ’‘) The degree to which something must be flexible depends
on the circumstances. This is consistent with the understanding of one of ordinary skill in the art
that a flexible lead need not be flexible over its entire length. As Tessera’s expert stated by way
of example at the hearing, even though a human arm is not “flexible” between the wrist and the
elbow, it is still “flexible” because it is bendable at the elbow. Engelmaier Tr. 734.
The specifications confirm that the tlexible leads and sheetlike or backing element need
not be “completely” flexible For example, in the SIJMMAKY OF THE INVENTION portion of the
specifications, the patents state
The assembly also includes flexible, electrically conductive leads.
29 In Stryker Corp v. Inferiim/ic.s Orfhopedics, h c . , 891 F. Supp. 751, 81 1 (E.D.N.Y. 1995), ajf’d, 96 F.3d 1409 (Fed. Cir. 1996), the district court stated that “[fllexibility, like size and weight, is a relative concept.” While that observation may not be universally applicable to all claimed inventions, it does apply to the ordinary concept of flexibility, and to the ‘977 and ‘326 patents.
48
The leads preferably extend through the apertures in the interposer. Each such lend has a contact end connected to the associated contact ofthe chip and a terminal end connected to the associated terminal on the second surface of the interposer. The leads and the interposer are constructed and arranged so that the contact ends of the leads are moveable relative to the terminals at least to the extent required to compensate for differential thermal expansion of components. The leads desirably w e ,flexible to permit such movement. Most pr<ferahly, the i i i le iymsei . itself’ i s jlexihle so as to facilitate such movement. The assembly according to this aspect of the invention optionally may include a compliant layer as discussed above.
CX-2RX-1 (‘977 Patent), col. 4, line 57 - col. 5, line 3; CX-1RX-2 (‘326 Patent), col. 5, lines
3-16 (emphasis added).
The SUIvlMARY OF 1’1 11: 1NVl:N’fION further teaches “partial” flexibility, as follows:
A chip assembly according to yet another aspect of the present invention incorporates a chip having a front surface including a central region and a peripheral region surrounding the central region, the chip having a plurality of peripheral contacts disposed in the peripheral region of the front surface. * * * The peripheral contact leads and yr~fhraldy /he iirler~~oser as well are at least partially jZexihle so that the central terminals are movable with respect to peripheral contacts to accommodate movement caused by differential thermal expansion. Here again, the assembly may optionally include a compliant layer as discussed above. Desirably, the peripheral contact leads include bent portions.
CX-2RX-1 (‘977 Patent), col. 5 , lines 36 - 67; C X - I N - 2 (‘326 Patent), col. 5, line 50 - col. 6,
line 14 (emphasis added).
In the detailed description of the preferred embodiments, the specifications teach that the
flexible lead deforms so that its contact end - the end attached to the chip - moves relative to the
terminal:
The contact end 56 of each lead SO is moveable relative to the associated terminal 48 As best seen in FIG. 3, the contact end 56a of lead 50a can be displaced from its normal, undeformed position
49
(shown in solid lines) in the directions parallel to the faces 44 and 46 of interposer 42 and parallel to the front face 38 of chip 28. For example, the contact end 56a may be displaced to the position indicated in broken lines at 56a’. This displacement is permitted by the flexibility of the lead S O and by buckling and wrinkling of interposer 42.
(emphasis added). While this passage states that the contact end must be flexible, it suggests that
the remainder of the lead need not be flexible.
With respect to another preferred embodiment, the specifications state that a “portion of
the lead can themfbre,jlex to accommodate relative movement of the contact and terminal.” Id.,
col. 11, lines 34-36 (emphasis added). See also id., col. 5 , lines 58-64 (leads “at least partially
flexible” so that terminals are movable relative to contacts); col. 20, lines 30-33 (“partial leads”
that “ppreferahly are flexible” and “fine bonding wires” that “are also flexible”).”)
All of these passages confirm that the only flexibility which is necessary in the completed
assembly relates to the ability of the flexible elements to deform to accommodate or facilitate the
movement of the terminals relative to the chip. One of ordinary skill, considering the claims in
light of the specification, would understand that this is why the flexible elements are recited. See
Engelmaier Tr. 727-729, 73 1
Although Sharp has pointed to several prosecution history references, none approaches a
clear disavowal of the clear and unambiguous meanings of the claim terms “flexible” and
3” In addition, Sharp’s proposed interpretation of “flexible” would appear to exclude these preferred embodiments from coverage by the patent’s claims. As indicated, supra, with respect to the term “movable,” such an outcome is highly unlikely and almost completely excluded by the canons of claim construction See Burke, 183 F 3d at 1341; Hoechst Celanese, 78 F.3d at 1581; Yitronics, 90 F 3d at IS83
50
“adapted to deform to accommodate movement.” See York, 99 F.3d at 1575, For example, one
of ordinary skill in the art would understand that the prosecution history of the ‘977 patent clearly
distinguishes between the flexible sheetlike element of claim 1 of the ‘977 patent and the
sheetlike element in Saito which is obviously not free to deform in the completed assembly. This
is consistent with the understanding that the sheetlike element must retain sufficient flexibility to
be adapted to deform in the completed assembly Engelmaier Tr. 73 1-732; CX-4 (June 26, 1995
Amendment) at TESS0023 14; CPX-82
Similarly, one of ordinary skill i i i the art would understand that the ‘266 patent
prosecution history distinguishes Saito on the grounds that Saito does not disclose a structure in
which the leads would be flexible.in any way in the completed assembly. Again, this is
consistent with the understanding that tlie flexible elements recited in the asserted claims are
flexible before assembly, and must be adapted to deform to accommodate or facilitate movement
after assembly. Engelmaier Tr 732-733, CX-5 (January 1992 Amendment and Remarks) at
8/RX-3b; CPX-78.31 The discussions of the invention in the relevant prosecution histories
confirm that the leads and/or sheetlike element are “adapted to deform to accommodate
movement” in the final assembly, while certain prior art references (e.g., Saito and Hawkins) do
not disclose this feature. Thus, the tile history does not alter the plain meaning of flexible or
adapted to deform to accommodate or facilitate movement.
Sharp’s construction of “flexible” also focuses on extrinsic evidence while ignoring the
* plain claim language. Sharp iniproperly cites argument of counsel and the testimony of Dr.
31 An extensive portion of the January 1992 Remarks is quoted, supra, in connection with the discussion of the claim term “movable.”
51
Khandros to support its position that there must be “complete” flexibility, and that both the leads
and the sheetlike element must be flexible. Yet, one cannot use such extrinsic evidence to “vary
or contradict the claim language.” I ’ i / ro// ics, 90 F.3d at 1584.
a Furthermore, the specification passages on which Sharp relies repeatedly use permissive
and exemplary language, indicating that the specific flexibility advocated by Sharp is not
required by the claims. The passages quoted by Sharp include language such as “may” and “for
example.” See, e.g., Sharp’s Post-Hearing Br. at 18 (quoting RX-1 (‘977 Patent), col. 5 , lines 24-
35 (“The assembly may also include a compliant dielectric encapsulant having a low elastic
modulus . . . .”)). However, “[w]here a specification does not require a limitation, that limitation
should not be read from the specification into the claims.” Specialty Composites, 845 F.2d at 987
(emphasis in original). Therefore, the limitation that Sharp would read into the claims at issue
cannot be accepted.
In summary, the plain language o f the asserted claims, the text of the patent
specifications, and the prosecution histoiy support the conclusion that the term “flexible” refers
to the pre-assembly state of the elements, and fh-ther that the term “flexible” is a relative term
whose ordinary meaning is “bendable” or “pliable.” Furthermore, after assembly, a flexible
element must retain enough flexibility to be “adapted to conform,” to “accommodate” or to
“facilitate” the movement of terminals in the paclcage. Such flexibility may be achieved without
the element being flexible over its entire
32 On May 25, 200 1, in 7i.xa.s I i i , s / r i i m r i / s , Inc. v. Tessera, Inc., No. C-00-2 1 14 (N.D. Cal.), the United States District Judge entered an Order construing the claims of the ‘326 and ‘977 patents. It appears that under the doctrine of issue preclusion, or collateral estoppel, the Commission could apply the claini construction of the District Judge. See Jet, Inc. v. Sewage
(continued.. .)
52
5. Additional Clilinl Elements of the ‘977 Patent
In addition to the “movable” and “flexible” terms discussed above, several claim
elements are construed in order to interpret the asserted claims of the ‘977 patent.
a. “a s em ico n d 11 c t o I’ ass em h I y coin p ris i ng”
To one of ordinary skill in the art, the term “semiconductor assembly” as used in the
claims of the ‘326 and ‘977 patents refers to a chip package that contains the elements recited in
the claim. Engelmaier Tr. 744-745. The transitional phrase “comprising” is a term of art,
meaning that the claim is open-ended. That is, the claimed semiconductor assembly includes at
least the elements listed in the body of the claim, and may include additional components. See
Genentech, Inc. v. C‘hiron (’orp., 112 F 3d 495, 501 (Fed. Cir. 1997).
b. “a semiconductor chip having a plurality of surfaces and having contacts”
This element is an ordinaiy integrated circuit (IC) chip with electrical contacts on at least
one of its surfaces. See Engelrnaier TI-. 753-754
C. “sheetlike el em en t h a v i n g t er in in als thereon”
(...continued) 32
Aeration Sys., 223 F.3d 1360, 1365-66 (Fed. Cir.2000)(Collateral estoppel requires four factors: (1) the issues are identical to those in a prior proceeding, (2) the issues were actually litigated, (3) the determination of the issues was necessary to the resulting judgment, and (4) the party defending against preclusion had a full and fair opportunity to litigate the issues.).
In any event, the claim construction of the District Judge does not differ sufficiently from that of the Administrative Law Judge so as to affect the outcome of this investigation. In particular, the District Judge construed the term “flexible” to mean “pliable.” In addition, the District Judge found that “[tlhe sheetlike element and leads accommodate movement of the terminals with respect to the contacts but need not remain h l l y flexible in the completed assembly.” Furthermore, the District Judge, adopting a Tessera proposal, found “that ‘movable’ means that ‘in the operation of the assembly, the terniinals are capable of being displaced relative to the chip by external loads applied to the terniinals, to the extent that the displacement appreciably relieves mechanical stresses, such as those caused by thermal expansion which would be present in the electrical connections absent such displacement. ”’
53
A sheetlike element is an element that is thin in comparison to its length and breadth. See
Engelmaier Tr. 754. “Terminal” refers to an end point for connection of the package to the
outside. See Engelmaier Tr 745-746, 754-755. One of ordinary skill in the art would understand
that the terminal itself could not be made of solder, because it would melt and lose its shape
during solder reflow, which could break the electrical connection between the contact and the
terminal. Id.
The phrase “terminals thereon” means that the terminals are “on or upon” the sheetlike
element, in the sense that they are carried by the sheetlike element. Typically, terminals are
glued or adhesively laminated to the sheetlike element. See Engelmaier Tr. 753-754.
d.
A person of ordinary skill in the art who has read the patents would understand a “lead”
“leads electrically connecting said terminals to said contacts”
to be an electrically conductive piece of metal, typically thin and elongated (like wire and/or
metallic trace) that connects two or inore discrete points. Engelmaier Tr. 735, 756-757. The
claim is clear that leads connect terminals to contacts. See CX-2RX-1, claim 1.
Examples in the specification are consistent with the conclusion that a lead is typically a
thin, elongated metal conductor See CX-2/RX-l, col. 5, line15-17 (formed integrally with the
terminals on the interposer or separately formed fine wire); col. 7, lines10-13 (fine wire); Figs. 2,
3, 4, 5A and 5B (label 50) and col I O , lines 45-57 (trace lead on substrate); Fig. 9 (label 50’) and
col. 15, lines 40-47 (wire bond lead); Figs 13, 14 (labels 50 and 856) and col. 18, lines 8-15, 33-
41, and col. 20, lines 27-32 (composite leads); Fig. 15 (label 850’) and col. 20, lines 52-54
lines 5-9 and col. 23, lines 13-1 5 (trace leads); Fig. 26 (labels 948 and 974) and col. 30, lines 48-
54
53 (composite leads); Figure 29 (label 7395) and col. 33, lines 7-9 (wire bond leads).
Moreover, one of ordinary skill in the art would understand that the specification of the
‘977 patent distinguishes the tern1 “lead” from a mass of conductive bonding material, such as
solder or a conductive paste. Engelinaier Tr. 735-737; CX-2 (‘977 patent) at Fig. 2, col. 10, lines
44-54; CPX-83. For example, Figure 2 identifies conductors that are “leads” and other
conductors that are “masses” of contJuc,ting material. CX-2, col. 10, lines 45-54; Fig. 2. The
leads (50) in Figure 2 are relatively long and thin, while the masses (52) do not have the long,
thin shape that one of ordinary skill in the art would associate with the term “leads.” See also
CX-2, col. 32, lines 42-48 and col. 32, lines 52-58, Fig. 28 (leads 9248 are long and thin;
conductive masses 9253 are not)
e. “said sheetlike eleinriit and at least some of said terminals overlie one said surface of said chip and said sheetlike element bears upon such surface of said chip”
This limitation states that the chip rests upon or is carried by the sheetlike element, and
that at least some of the terminals on the sheetlike element are within the periphery of the chip.
See Engelmaier Tr. 760.
f. The additional lengii;ige of claim 6 which orients the semiconductor assembly as a “face-up” chip p;ick;ige
The additional language of claim 6 describes a “face-up” configuration for a chip
package. Thus, the semiconductor chip’s electrical contacts are on the front or top surface of the
chip, facing up and away from the sheetlike element. Engelmaier Tr. 760-761
g* The additional language of claim 22 refers to the connection of the chip package to a printed circuit hoard “substrate”
The language of claim 22 requires a PCB substrate with contact pads. It firther requires
5 5
the sheetlike element to be disposed between the chip and the substrate, with each terminal being
connected to one of the contact pads of the substrate. One of ordinary skill in the art would
understand that the terminals of the semiconductor assembly would normally be connected to the
contact pads on the PCB substrate with solder joints. Engelmaier Tr. 761-764.
6. Additional Claim Elements of the ‘326 Patent
In addition to the “movable” and “flexible” terms discussed above, several claim
elements are construed in order to interpret the asserted claims of the ‘326 patent.
a. “a semicon ti rir to r assembly comprising”
As in the ‘977 patent, claim I of the ‘326 patent recites a “semiconductor assembly,”
which is a chip package with the elements recited in the claim. See Engelmaier Tr. 744-745.
b. “a semiconductor chip having oppositely facing front and rear surfaces anti edges extending between the front and rear surfaces, the chip further having contacts on a peripheral region of the front surface”
This limitation refers to an 1C chip with electrical contacts on its front surface. See
Engelmaier Tr. 762.
C. “a backing element having electrically conductive terminals and lead portions thereon, wherein said lead portions are connected to said terminals”
One of ordinary skill in the art would understand that the “backing element” is an element
that is generally sheetlike and ~inderlies the rear surface of the chip. See Engelmaier Tr. 744;
CX-IRX-2, claim 1. Because the claim language does not require it, one of ordinary skill in the
art would not understand that the backing element must be flexible. Id. “Terminals . . . thereon”
56
has the same meaning as in claims 6 and 1 of the ‘977 patent. See Engelmaier Tr. 754, 756.
“Lead portions” refers to the inetallic trace portions on the backing element, which, together with
the bonding wires, form the composite leads of claim 1. See, e.g., CX-1, Fig. 13 (850); Fig. 26
(948).
d. “said backing clement overlying said rear surface of said semiconductor chip such that at least some of said terminals overlie said rear surface o f said chip”
This limitation requires the backing element to overlie the rear surface of the chip, which
orients the assembly “face-up,” with the contact bearing surface facing up and away from the
backing element. Also, at least some of the terminals on the backing element must be underneath
the chip. See Engelmaier Tr. 763
e. “bonding wires roritiected to said contacts on the front surface of said chip, said bonding wires extending downwardly alongside said edges of said chip and heing connected to the lead portions on the backing element”
The “bonding wires” are electrically conductive wires that extend from contacts on top of
the chip down to the backing element, where they connect to “lead portions,” or metallic traces
on the backing element. The lead poi-tions are in turn connected to terminals. Engelmaier
Tr. 737-738. Thus, composite leads, \vliicIi include bonding wires and lead portions, electrically
connect the contacts on the top surface o f the chip to terminals on the backing element. See
Engelmaier Tr. 735, 756-757. The bonding wires lie to the side of the chip, and one of ordinary
skill in the art would understand that through the wire bonding process, the bonding wires may
extend up, and then outward and dowiward to the backing element. Engelmaier Tr. 737-738.
One of skill in the art would understand that the bonding wires may be relatively
57
inflexible. Engelmaier Tr. 742-743. There is nothing in claim 1, the specification, or the file
history of the ‘326 patent that would suggest that the claim language cannot cover “bonding
wires” that have been rendered relatively inflexible by encapsulation in a rigid mold compound
(e.g., ceramic). One of skill in the art would understand that the invention will fbnction with
relatively rigid bonding wires as long as the terminals are movable relative to the chip. See, e.g.,
Id.
f. The additional limitations of claim 9: terminals and lead portions on top of the backing element
Claim 9 requires that the terminals and lead portions (metallic traces) be located on the
top surface of the backing element, closer to the chip. See Engelmaier Tr. 765; CX-l/RX-2,
claim 9.
g* The additional limitations of claim 10: holes through the backing element througli which the terminals are exposed
Claim 10 requires holes through the backing element through which the terminals are
exposed. One of ordinary sltill in the art would understand that the purpose of the holes is to
expose the terminals to allow an electrical connection through the holes. See Engelmaier
Tr. 765; CX-l/RX-2, claim 10.
h. The additional limitations of claim 11: solder attached to the terminals througli the holes
Claim 11 requires that bonding material such as solder or a conductive polymer be
attached to the terminals through the holes i n the backing element. See Engelmaier Tr. 765-766;
C X - 1 M - 2 , claim 10.
58
B. Infringement Determination
Tessera argues that Sharp’s accused CSPs include every limitation of every asserted ‘326
and ‘977 patent claims. See, c g . , Tessera’s Post-Hearing Br. at 25-36; Tessera’s Reply to Sharp
at 11-18; Tessera’s Reply to OUIl at 6-9. Tessera’s position is based on literal infringement,
inasmuch as it has not offered arguments based on the doctrine of equivalents. In particular,
Tessera argues that tests and analyses performed by its expert, Dr. Jianmin Qu, demonstrate that
each of the accused Sharp CSPs includcs terminals that are movable with respect to the contacts
on the chip, and that the terminal inovement is facilitated by the CSPs’ flexible leads and flexible
sheetlike backing element which deform to accommodate the movement. Tessera argues that the
relative movement between the terminals and the chip in Sharp’s CSPs significantly improves
thermal cycling test reliability, which translates into substantially longer product life.
Sharp denies that its accused devices infringe any asserted claim of the ‘326 or ‘977
patent. See, e.g., Sharp’s Post-Hearing 131- at 20-28; Sharp’s Rebuttal Br. at 4-14. Sharp’s
position is based in large part on its proposed interpretations of the claim terms “movable” and
“flexible.” As discussed above, Sharp’s proposed interpretations have not been adopted by the
Administrative Law Judge because the evidence of record, including the patent specifications and
prosecution history, support different meanings for those terms. Sharp’s arguments on the
infringement issue are also based on tests and analyses, which in addition to being presented
against the backdrop of faulty claim interpretation, lack the relevancy and reliability of those
performed by Tessera.
The Commission Icvestigative S ta f argues that none of Sharp’s accused products
infringes the asserted claims of the ‘977 patent. The Staff hrther argues that Sharp’s single-layer
59
CSP products infringe the asserted claims of the ‘326 patent, yet Sharp’s double-layers CSP
products do not infringe. See, e.g , OUll Post-Hearing Br. at 27-34; OUII Reply Br. at 3-8. The
Staff arguments against infringement are based primarily on its view that movement only
between -40°C and +85”C is relevant, and differences between the accused single-layer and
double-layer devices. However, the asserted patent claims do not contain the temperature
limitation proposed by the Staff. This issue is addressed in detail below, as is the question of
differences between the accused single-layer and double-layer devices.
1. Structure of Sharp’s Accused Devices
Sharp’s CSPs have two basic constructions, i.e., a “single-layer” device (as shown in
CPX-97C) and a “double-layer” device (as shown in CPX-98C). See Engelmaier Tr. 810-812.
From a structural standpoint, the difference between the devices is that the single-layer uses a
layer of die bond film, DF-400, to attach the chip to the package substrate, and the double-layer
uses a layer of insulation, SD-500, and above that a layer of die attach paste, EN-4322.
Engelmaier Tr. 814.
Each Sharp CSP includes a chip attached to a polyimide package substrate. Copper traces
and terminals are adhered to the top side of the package substrate, beneath the chip. Bonding
wires connect contacts on top of the chip to the copper traces on the polyimide package substrate.
The copper traces connect the bonding wires and the terminals. Thus, the component leads in
Sharp’s CSPs are made up of the bonding wires and the copper traces. Engelmaier Tr. 779-780,
CX-545C; CX-675C. Based on his analysis, he concluded that similar terminal movement will
occur in all accused Sharp CSPs As detailed below, Dr. Qu7s tests and analyses demonstrate
that Sharp’s accused CSPs have movable terminals, and include flexible leads and a flexible
sheetlike element which are adapted to deform in the completed assembly. See, e.g., Qu Tr. 364-
368, 394-409, 432-440. Dr. Qu’s tests and analyses also demonstrate that Sharp’s accused CSPs
include a compliant layer S c v , c.R., Qu TI- 364-368, 394-407; CPX-145; CPX-146; CX-I 67C;
CX-546. See also FF, Section IT1 B. 1 (The Structure and Pertinent Characteristics of Sharp CSPs
(FF 251-819)).
2. Sharp’s Accused CSPs Infringe Dependent Claim 6 (and Independent Claim I ) of the ‘977 Patent
The record demonstrates by at least a preponderance of the evidence that Sharp’s accused
products contain each element of claim 6 of the ‘977 patent. See, e.g., FF 861-879
a. Sharp’s nccused CSPs include a semiconductor chip with contacts, R sheetlike element and terminals underlying and bearing upon the chip, and leads connecting the contacts to the terminals
35 Dr. Qu is a highly credible witness. He is a highly qualified expert in packaging technology and solder joint reliability. Qu Tr. 317-325, 330-331, 615-616; CX-164. He is also a highly qualified expert in the various measurement and analysis techniques that he used to investigate Sharp’s CSPs, i.e., finite element analysis, moire interferometry and in situ scanning electron microscopy displacement analysis. Qu Tr. 3 17-321, 326-329, 371-373, 417-420, 429; CX-164.
63
Sharp’s accused CSPs are “semiconductor assemblies.” Properly construed, the claim
preamble “semiconductor assemblies” refers to a chip package with the various elements recited
in claim 1. The accused CSPs are chip packages that include a chip, a package substrate, and the
other package components recited in claim 1 , Engelmaier Tr. 849-853; CPX-48C; CPX-100C;
CPX-101c; cx-37 .
The accused CSPs include “a semiconductor chip having a plurality of surfaces and
having contacts on at least one of said surfaces.” This term refers to an ordinary integrated
circuit (IC) chip. The accused CSPs each include a semiconductor chip, with contacts on one
surface. Engelmaier Tr. 849-850; CPX- 1 OOC; CPX-1OlC; CX-37.
The accused CSPs include a “flexible sheetlike element having terminals thereon.”
Engelmaier Tr. 850. As discussed above in the section on claim construction, the term “sheetlike
element,” properly construed, refers to an element that is thin relative to its length and width.
See Engelmaier Tr. 754. Sharp’s CSPs include a polyimide package substrate, which is thin
relative to its length and width Engelmaier Tr. 850; CPX-1OOC; CPX-1OlC; CX-37 (Response
to Request for Admission No. 128) It IS thus a sheetlike element. Id On the package substrate
there are also terminals, sometimes referred to as “lands,” to which solder balls are attached.
Engelmaier Tr. 850-85 1; CPX- I OOC, CPX-1OlC; CX-37 (Response to Request for Admission
No. 134. The polyimide package substrate is flexible prior to assembly, and adapted to deform to
accommodate movement in the completed assembly, as discussed below. See also Engelmaier
Tr. 850; CPX-1OOC; CPX-1OlC; CX-37 (Response to Request for Admission No. 130).
The accused CSPs include “flexible leads electrically connecting [the] terminals to [the]
contacts.” Engelmaier Tr. 85 1, CPX- 1 OOC; CPX-10 1C; CX-37. Each lead consists of a bonding
64
wire combined with a copper trace on the polyimide package substrate. Engelmaier Tr. 8 10-8 1 1 ,
a contact on the top of the chip to a copper trace on the polyimide sheet. Id. The copper trace
then connects the bonding wire to a terminal. Id. Thus, the combination of the copper traces and
the bonding wires are “leads electrically connecting [the] terminals to [the] contacts.” Id. The
leads are flexible prior to assembly, and adapted to deform to accommodate movement in the
completed assembly, as discussed below. Engelmaier Tr. 851, 853; Qu Tr. 439; CPX-1OOC;
CPX-101 c.
The phrase “sheetlike element and at least some terminals overlie [a] surface of the chip,
and [the] sheetlike element bears upon the chip” means that some of the terminals on the
sheetlike element are underneath the chip Engelmaier Tr. 760; CX-2RX-2 (‘977 patent),
claim 1. Sharp’s CSPs each include at least some terminals underneath the chip. Engelmaier Tr.
851-852; CX-37 (Response to Request for Admission No. 139); CPX-IOOC; CPX-1OlC.
The additional language of claim 6 orients the package so the contacts on the chip face up
and away from the flexible sheetlike element, Le., a “face-up” package. Sharp’s CSPs have
contacts that are on top of the chip, facing away from the package substrate, and the package
substrate and at least some terminals are underneath the chip. Engelmaier Tr. 854-855;
CPX- 1 OOC; CPX- 10 I C; CX-3 7 (Response to Request for Admission Nos. 137- 13 9).
65
b. Sharp’s accused CSPs include movable terminals
Sharp’s accused CSPs include terminals which are movable with respect to the chip and
the contacts on the chip. See Engelmaier Tr. 843, 852-853, 865; Qu Tr. 438-439. “Movable,” in
the context of the claims, refers to terminals that move with respect to the chip (and chip
contacts). The terminal movement must substantially compensate for differential thermal
expansion between the chip and the PCB, and thus significantly increase solder joint reliability.
See Section on Claim Construction; Engelmaier Tr. 715-716. During thermal cycling, the
terminals in Sharp’s accused CSPs move with respect to the chip and chip contacts. Engelmaier
816-818, 834-838, 852; Qu Tr. 351-355, 363-370, 394-41 1, 426-443, 534-538; Pitarresi Tr.
1458. The terminal movement substantially compensates for differential thermal expansion, and
thus significantly increases package reliability. Engelmaier Tr. 852-853; Qu Tr. 346-348, 445-
446, 492, 618-619; CPX-48.
1. Finite element models demonstrate that the terminals in Sharp’s CSPs move with respect to the chip and the contacts on the chip
Finite element modeling, which calculates values for internal movement and stress, is a
computer modeling technique that is widely-accepted in the industry for determining movement
internal to a package. Qu Tr. 326, 356-359. Finite element models (FEMs) of several
representative Sharp CSPs demonstrate that the terminals in Sharp’s CSPs move with respect to
the chip and the chip contacts. Qu Tr. 363-368. The FEMs of Sharp’s CSPs used accurate
information about the dimensions and materials in Sharp’s CSPs. Qu Tr. 355, 369-370, 375-379,
524-525. Proper modeling techniques, including performing a convergency study and selecting a
reasonable stress-free temperature, ensured that the FEMs accurately reflect the behavior of
66
Sharp's C S P S . ~ ~ Qu Tr. 373-384, 401-406, 1884-1885. The FEMs determined the internal
package movement in Sharp's CSPs over a temperature range from -40°C to 125"C, and
obtained results at intermediate temperatures of O"C, 25"C, 75°C and 100°C. Qu Tr. 385;
CX-550. Companies in the semiconductor industry, including Sharp, routinely use the
temperature range of -40°C to 125 "C to run thermal cycling tests to determine solder joint
reliability. Qu Tr. 324, 385-394, 1340-1341; Kada Tr. 1287-1289.
Moire interferometry and scanning electronic microscopy (SEM) analysis confirmed the
FEM results. Qu Tr. 409-4 10, 426, 43 1 ; CX-553 at 2. Moire analysis of several Sharp CSPs
confirmed that there is movement in Sharp's CSPs between the terminals and the chip. Qu Tr.
423-426. The moire analysis included careful sample preparation, review of the moire images,
and a repeatability study. See, e.g., Qu Tr. 409-43 1, 606-608, 1878-1880. As a result, the moire
results are accurate and reliable. Qu Tr. 426.
The FEMs, confirmed by the moire and SEM physical tests, demonstrate that the
outermost terminals under the die in Sharp's CSPs - the terminals that have the greatest impact
on package solder joint reliability - move approximately one to two microns when the
36 Sharp did not provide Tessera with temperature-dependent material properties for its solder balls. See Qu Tr. 376 Sharp provided only one value for the modulus of elasticity, 32 GPa, at room temperature. Dr Qu therefore used temperature-dependent information obtained from a TI source document, RX-789C. Compare RX-789C at 1 and CX-548C at 2. TI uses the same solder balls as Sharp, and the TI source document included a modulus of elasticity of 29 GPa at room temperature - about 10% higher than the modulus provide by Sharp. Qu Tr. 376-377, 524-525 Dr Qu testified that using a solder ball modulus that is 10% higher at room temperature than the actual value does not necessarily impact the results, because: (i) the higher room temperature modulus does not mean that the modulus is any higher, even by an insignificant lo%, at any other temperature; and (ii) the higher modulus at room temperature -- the stress free temperature -- does not impact the results at all. There is no evidence that the 10% difference in solder ball modulus at room temperature has any impact on the results of the finite element models. Qu Tr. 5 17-525
67
temperature changes from 25°C to 125°C. Qu Tr. 381-382, 403-407. These terminals
correspond to the solder joints that break first in Sharp's CSPs, the ones under the corners of the
die. Qu Tr. 1852-1 860; Engelmaier Tr. 822-823; CPX-500; CPX-501. These solder joints are
the outermost solder joints underneath the die in a diagonal c ross -~ec t ion .~~ Qu Tr. 381-382,
403-407. Allowing these outermost terminals to move one to two microns has a significant
impact on package reliability. See Qu Tr. 409, 43 1-445; CX-560. The FEMs calculated values
for the effective solder joint strain, which demonstrate that for four representative Sharp CSPs -
the LHl6K27, the LHF80BZE (single-layer version), the LHFSOBZE (double-layer version) and
the LR38714 - the movable terminals reduce strain by 30% to 6O%, when compared to a rigid
CSP structure. Qu Tr. 441-445, 539-540, 577-578, 1893-1894; CPX-48. This 30% to 60%
reduction in strain increases the reliability of these representative Sharp CSPs very significantly,
by a factor of two to three.3x Qu Tr. 346-348, 501, 1862-1863; CX-56OC; CPX-64.
All of Sharp's CSPs allow similar internal package movement to that of the four
representative Sharp CSPs, as confirmed by the FEMs of several additional representative CSPs.
37 Dr. Qu calculated additional displacements, for the outermost terminal in a normal cross section, for several Sharp CSPs. These displacements were calculated at intermediate temperatures as well as at 125°C. See CX-550. The displacements for the outermost solder terminal in a diagonal cross-section are greater than these displacements for a normal cross- section. Qu Tr. 403. These normal cross-section displacements therefore understate the improvement in reliability due to movable terminals.
38 Using Tessera's baseline for comparison, the movement of the terminals in Sharp's double-layer CSPs increases solder joint life significantly, even at 75" C. For example, for the double-layer LHF16K27, the solder joint strain is reduced 39%, which would at least double the solder joint life. For the double-layer LHF80BZE, the solder joint strain is reduced 43%, which also would more than double the solder joint life. Qu Tr. 346-348; CX-56OC; CPX-64. This is a significant increase, and all Sharp's double-layer CSPs have similar increased reliability due to movable terminals. See Engelinaier Tr. 785.
68
Qu Tr. 408-41 1; CX-I 65C. The representative CSPs include all the variations in Sharp’s CSPs,
such as package and chip size, pitch, stacked structures, and both single-layer and double-layer
structures. See Engelmaier Tr. 785; Qu Tr 43 1, 440; CX-484C; CX-2OC. The detailed analysis
of the representative CSPs therefore demonstrates that all accused Sharp CSPs have movable
terminals that increase reliability significantly. Id.; Engelmaier Tr. 785. The terminals also
move relative to the chip contacts, on the order of 2 to 3 microns, over the modeled temperature
range. See Qu Tr. 396-409; CX-550.
As discussed above, the proper construction of movability depends on substantial
compensation for differential thermal expansion, which provides a significant improvement in
reliability. Thus, one of ordinary skill in the art would understand that improved reliability is the
ultimate benefit and goal of movable terminals. Movable terminals allow the CSP to absorb
some of the displacement inside the package, which reduces stress and strain in the solder joints
to improve reliability. However, Sharp and the Commission Investigative Staff take the position
that the claim term “movable” can only apply to movement that occurs over the “normal
operating temperature” of a package; i.e., the limited temperature range which the chip
experience when the package is in use.
The specification passage quoted by Sharp regarding the temperature range for movability
does not support the proposed restriction. The specification states that “thermal cycling [occurs]
as temperatures within the device change during operation.” CX-2RX-1 (‘977 Patent), col. 1,
line 59 - col. 2, line 9. While this is true and knowledge of this fact is important, one skilled in
the art would also be aware that differential thermal expansion occurs, and affects reliability, as a
direct result of temperature change beyond the changes due to “electrical operation.” The normal
69
use and operation of a device includes much greater changes in temperature than those due to
“electrical operation.” For example, environmental temperature changes - such as storage
temperatures - will affect reliability just as much (if not more) than “electrical operation”
temperature cycling.
devices are routinely subjected to 125” C and 255” C during thermal cycling tests and solder
reflow (part of the manufacturing process), respectively. See, e.g., Kada Tr. 1287-1292; CX-
50C. Thus, one of ordinary skill understands that reliability is affected by temperature variations
regardless of whether those variations are due to environmental factors, electrical use, or
manufacturing processes such as solder reflow.
See, e.g., Kada Tr. 1277-1296, 1337-1339; Qu Tr. 587. In addition, such
Limiting the claimed movement to a “normal operating” temperature range would inject
an unacceptably arbitrary element into the claim. For example, the same package could be sold
by two different vendors who have arbitrarily chosen two different electrical “operating”
temperature ranges. In such a case, a package sold by one vendor might infringe because it has
“movement” over the stated “operating” temperature range of -20” to 100” C. However, the same
package sold by a second vendor might not infringe because the second vendor has chosen an
“operating” temperature range of 0” to 50O.”‘
It is undisputed that one of ordinary skill knows that the amount of differential thermal
In this litigation, Sharp relies in part on an article by Mr. Engelmaier in an attempt to 39
explain how its own temperature range for reliability testing is somehow “inappropriate.” The article recommends, not testing only at “maximum service temperature,” as Sharp claims, but accelerated testing at a maximum of 100” C, which is above the “worst use environment” temperatures listed in the article. RX-28 at 10. This is merely accelerated TCT at 100” C instead of 125” C. The reason Mr. Engelmaier recommended limiting thermal cycling tests to 100” C in the 1990 time frame was based on the Tg of PCB materials at that time. Engelmaier Tr. 807, 1021-1024. However, modern PCB materials have a higher Tg. Therefore, as Mr. Engelmaier testified, reliability testing up to 125” C is entirely appropriate. See Engelmaier Tr. 807.
70
expansion depends on the amount of temperature change. See Kada Tr. 1277-1280. Thus, it is
also true that the reliability of a CSP depends upon the amount of temperature change it
experiences over its life. Kada Tr. 1291; Qu Tr. 324, 386-391. In determining whether a CSP
practices the invention by gaining the benefit of movable terminals to improve reliability, one
should perform movability measurements over the industry-standard temperature range for
reliability testing. The overwhelming evidence indicates that this range is -40" to 125" C. See,
e.g., Kada Tr. 1286-1292, 1340-1341; Qu Tr. 385-394; Pitarresi Tr. 1480-1482; CX-477.
Without successfid TCT testing from -40" to 125" C, manufacturers would not be able to sell
their CSPs. Qu Tr. 385-388, 392-394; Kada Tr. 1285-1286; CX-49. Thus, movability that
increases reliability should be measured according to this standard.
Sharp itself performs TCT testing from -40" to 125" C. See, e.g., Kada Tr. 1283-1292,
1340-1341. Indeed, Sharp provides its customers with an upper "storage temperature" rating of
either 125" C or 150" C for essentially all of its CSP products. Sharp does not inform its
customers that this high storage temperature should not be used for the storage of CSPs that are
already mounted to a PCB. Thus, CSPs can be stored at these temperatures during their normal
life and operation. They will undergo differential thermal cycling as the assemblies heat and cool
during storage, and this will obviously affect their reliability. See Pitarresi Tr. 1463-1465; Kada
Tr. 1280, 1295-1296, 1337-1338; Kada Tr. 1286-1292, 1340-1341. Another aspect ofthe normal
life and operation is exposure to solder reflow temperatures. For example, if multiple Sharp
CSPs are mounted to opposite sides of the same PCB, some of the CSPs will undergo solder
reflow temperatures of up to 255" C after they have been mounted to a PCB. Kada Tr.
1289-1291; CX-5OC at 17. This temperature exposure and cycling during the normal life and
71
operation of the CSPs will clearly affect their reliability.
At the hearing, the testimony of one of Sharp's key witnesses, Mr. Kada's, was
inconsistent regarding the maximum "normal operating" temperature for consumer electronics
products that use Sharp CSPs. On direct examination, he testified that this temperature was 60"
C for cell phones. Kada Tr. 1230-123 1. However, it appears that Sharp chose that value because
it is below the 67" C glass transition temperature of DF-400, the insulator/die attach film for
Sharp's single-layer CSPs. CX-548C, at 1 (Tg for single-layer die attach film). On cross-
examination Mr. Kada admitted that he testified at his deposition that cell phones could be rated
for use up to 70" or 80" C. Kada Tr. 1299-1300, 1301-1302. In addition, Sharp's own data
sheets show that the absolute maximum temperature rating for Sharp CSPs is 85" C, Mr. Kada
admitted on cross-examination by the Staff that the 85" C is the ambient temperature, not the
actual temperature of the CSP. The temperature at the surface of the CSP itself would actually
be 5" to 10" C degrees higher. See RX-35C. Thus, the real "absolute maximum temperature" for
the CSP itself is actually 95" C - which is very close to the 100" C level for which Tessera
obtained data on the accused Sharp CSPs. Pitarresi Tr. 1476-1477; Kada Tr. 1338-1339; CX-
422; CX-550, CX-552.
Finally, Mr. Kada testified that it was common industry practice to do reliability testing
for CSPs at temperatures above their highest rated temperatures as an "acceleration" factor.
Kada Tr. 1291. Mr. Kada admitted that Sharp tests the CSPs for cell phones from -40" to 125" C.
Thus, it makes sense for Sharp to do board level reliability TCT testing of its CSPs up to 125" C.
It is also undisputed that Sharp tests to 125" C. See Kada Tr. 1291; CX-5OC at 17.
For the foregoing reasons, "normal operating" temperature should not be a limitation of
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“movable.” Furthermore, it is entirely appropriate to measure the movement for an infringement
analysis over the industry-standard temperature range for reliability testing, i.e., -40” to 125” C.
See, e.g., FF 48, 55-76, 253-368, 440-462.
.. 11. Tessera’s comparison with the “flip-chip” is more
relevant than a comparison to Sharp’s hypothetical rigid package; Sharp’s FEMs are not accurate.
Sharp argues that the improvement due to movability in its devices is insignificant, and
that Tessera should not have compared the accused CSPs to a “flip-chip.” Tessera calculated the
reduction in solder joint strain based on an ideally-rigid CSP. This is not an “impossible”
baseline, as Sharp claims. Although Dr. Qu testified that a CSP package (including a layer of die
attach paste and a package substrate) cannot be ideally rigid, he also testified that his ideally-rigid
CSP is equivalent to a prior art “flip-~hip.”~”
Flip-chip prior art is specifically mentioned in the patents-in-suit. It is clear that a
primary objective of the patents was to approach the compact size of the flip-chip assembly,
while overcoming its solder joint reliability problems. See C X - I N - 2 (‘326 Patent), col. 3,
lines 22-24; col. 4, lines 6-1 1; col. 3 1-35. The strains in flip-chip solder joints are therefore a
particularly appropriate basis for comparison. Compared to this baseline, the movable terminals
in Sharp’s CSPs reduce solder joint strains by 35% to 60%, increasing solder joint fatigue life by
There is very little difference in solder joint strains between a realizable rigid CSP and a 40
flip-chip. See Qu Tr. 1887-1888, 1907-1908. Dr. Qu testified that these strains would be “very close.” Thus, the impact of “incidental” movement on the solder joint strain - the movement in a very rigid, realizable CSP - is very limited and can be disregarded. Qu Tr. 1887-1888, 1907- 1909; Engelmaier Tr. 1074-1 075; CX-56OC.
73
a factor of two to four.” Qu Tr. 346-348, 446, 501,1862-1863; CX-56OC; CPX-64
In contrast, Sharp used a hypothetical “rigid” baseline package with a flexible substrate,
which grossly understates the improvement in Sharp’s CSPs resulting from use of movable
terminals.42 Dr. Pitarresi essentially modeled a Sharp CSP with what he termed “OMPAC-type
die attach” from the 1996 OMPAC article. Pitarresi Tr. 1460-1461, 1495-1499; RX-833;
CX-438. Dr. Pitarresi compared the solder joint stress from a Sharp CSP model to the stress
from this “rigid” package to show that terminal movement in Sharp’s CSPs does not improve
reliability significantly. This comparison between Sharp’s CSP and the fictional “rigid” package
would significantly understate the reliability improvement in Sharp’s CSPs. Dr. Pitarresi
admitted that he used a polyimide substrate, identical to Sharp’s, in his “rigid” baseline package.
This polyimide substrate has a modulus ‘/4 the modulus of the BT glass substrate disclosed in the
1996 OMPAC article, about which the “OMPAC-type” rigid package was supposedly based.
Pitarresi Tr. 1459-1461, 1494-1503; CX-212; CX-438; CX-439; RX-833. In other words, the
modulus of elasticity of BT glass is 400% higher than the modulus of p ~ l y i m i d e . ~ ~ See Pitarresi
Tr. 1459-1460, 1494, 1500-1501; CX-212. This is a much greater difference than the minor 10%
41 Sharp also suggested that Tessera could have compared internal displacements in an unmounted CSP to displacements in a CSP mounted on a PCB to determine the amount of “incidental” movement in Sharp’s CSPs. See Sharp’s Post-Hearing Br. at 41 n.34. As Dr. Qu testified on cross-examination, such a comparison is meaningless, and would not determine the amount of “incidental” movement in Sharp CSPs. See Qu Tr. 485-486.
42 Sharp also claims that it is practicing the prior art - even though Dr. Pitarresi admitted that the “rigid” package was a fiction, built using information from an article published years after the patents were filed (the “1 996 OMPAC article”). See Pitarresi Tr. 1495-1499.
An article, relied on in Dr. Pitarresi’s expert report to describe an “OMPAC,” states that for 43
a given substrate thickness, polyimide “tends to produce the lowest solder stresses” and that BT glass “tends to generate the highest solder stresses.” CX-439; Pitarresi Tr. 1502-1503.
74
difference in room temperature solder joint modulus in Dr. Qu’s models, which Sharp claims
will “grossly over calculate the improvement” in Sharp’s packages. See Sharp’s Post-Hearing
Br. at 43. Yet, Dr. Pitarresi chose to use Sharp’s flexible polyimide substrate in his “rigid”
model, which according to the 1996 OMPAC article, generates “the lowest solder stresses.”
Pitarresi Tr. 1494-1 503; CX-439; RX-833.
It is clear that Sharp’s supposedly rigid baseline package does, in fact, grossly
underestimate the improvement in reliability for Sharp CSPs. See, e.g., Pitarresi Tr. 1502- 1504;
Qu Tr. 432-440. Compared to Tessera’s flip-chiphigid CSP baseline, the movable’ terminals in
Sharp CSPs reduce strain and increase reliability by a factor of 2 to 4. Qu Tr. 346-348, 444-446,
492, 577-578, 618-619, 1862-1863, 1893-1894; CX-56OC; CPX-64; CPX-48. Dr. Pitarresi’s
calculations in RX-833, on the other hand, actually show that Sharp single-layer and double-layer
CSPs have higher solder joint stress, and the single-layer has higher solder joint strain, than Dr.
Pitarresi’s supposedly “rigid” baseline package. See Pitarresi Tr. 1404; RX-833. As a result, Dr.
Pitarresi’s calculations indicate that the Sharp single-layer CSP is actually less reliable than the
supposedly “rigid” baseline package. See RX-833. Dr. Pitarresi’s deliberate use of Sharp’s
flexible package substrate instead of the “concrete-like” BT glass disclosed in the 1996 OMPAC
article clearly made his “rigid” baseline less than rigid, and essentially invalid as a proper
comparison. See Pitarresi 1459-1460, 1501 ; CX-212. It is therefore not surprising that, as Sharp
notes, the results for Dr. Pitarresi’s “rigid” baseline are within a few percent of his results for
Sharp’s C S P S . ~ ~
Also, Sharp’s attempts to compare its CSPs to Tessera products are improper. 44
“Infringement . . . is determined by comparing an accused product not with a preferred (continued., .)
75
Even if Dr. Pitarresi had used an appropriate “rigid” baseline package his comparisons
between the “rigid” baseline and Sharp CSPs would be accorded no weight because the FEMs
relied on by Sharp are inaccurate and unreliable. One of the primary faults in Dr. Pitarresi’s
analysis is that he failed to perform a necessary convergency study to ensure the proper number
ofelements in his FEM. See Qu Tr. 1882-1886, 1900-1904; CX-546 at Fig. 7.2.7; RX-830C at
2. In fact, he used too few elements - far fewer than Dr. Qu - and his model is extremely coarse.
Qu Tr. 1882-1886, 1904. As Dr. Qu testified, when a model is not converged, “the result simply
is not representative of what the physics is.” Qu Tr. 1903. In addition, Dr. Pitarresi used
elements of the wrong shape, hrther degrading model performance. Qu Tr. 1882- 1883; compare
RX-830C at 2 wifh CX-546 at Fig. 7.2.7. The results from Dr. Pitarresi’s FEMs are therefore
inaccurate and include random errors.45 See Qu Tr. 1900-1903; Kada Tr. 1292-1295; CX-49 at
TESS272785; CX-538C.
Sharp suggests that Dr. Pitarresi’s models are accurate, despite his failure to perform a
convergency study, because they are “validated” by his moire results. His moire results,
however, are unreliable because he did not conduct a repeatability study. Dr. Pitarresi’s attempt
at validation, by comparing a single moire result with a single finite element result, is
44 (...continued) embodiment described in the specification, or with a commercialized embodiment of the patentee, but with the (Fed. Cir. 1985); see also Radplug Co. v. Illinois Tool Works, Inc., 11 F.3d 1036, 1044 n.7 (Fed. Cir. 1993).
claims.” SRI Inf ’ I v. Matsushita Elec. Coip., 775 F.2d 1107, 1121
45 The problem of the prior art OMPAC chip was solder joint failure due to high stress. Nonsensically, Dr. Pitarresi’s models show that Sharp’s single-layer and double-layer CSPs have higher solder joint stress than his supposedly “rigid” baseline. See Pitarresi Tr. 1404; RX-833. His rigid baseline is grosslv inaccurate.
76
meaningless, and indicates nothing about the reliability of the models. Qu Tr. 417-4 19,
1899- 1900. These inaccurate results do not present any meaningfbl information, because the
random errors do not cancel out. They compound the unreliability of the information. See Qu
Tr. 1902-1903; RX-26; see also FF 820-860.
iii. Differences in the thickness of the attach paste in the two-layer model did not significantly affect the results
Sharp claims that Tessera’s models overstate the movement in Sharp’s CSPs by using die
attach paste that is too thick. It appears to be undisputed that Tessera modeled the correct
thickness of die bond film for Sharp’s single-layer packages. For the double-layer packages,
Sharp’s own interrogatory responses state that Sharp’s double-layer CSPs include a layer of EN-
4322 die attach paste that is between 10 and 25 microns thick. Qu Tr. 375-379, 548; CX-2OC,
Attachment 9. It is entirely reasonable, therefore, to model Sharp’s CSPs with a 25 micron layer
of EN-4322. Indeed, there is no evidence that any of Sharp’s CSPs use EN-4322 that is thinner
than 25 microns.
Most of the double-layer CSP models built by Dr. Qu and Pacific Consultants used a 25
micron thick layer of EN-4322. However, Pacific Consultants ran one case with a 10 micron
thick layer of EN4322. Sharp improperly relies on these test results, which Sharp had since
before Dr. Qu’s deposition to support its assertion that thickness of the die attach paste overstates
the amount of movement in Sharp’s CSPs. Dr. Qu testified that he reviewed these test results,
and that, in his opinion, the displacements did not differ significantly. Qu Tr. 378-379. He
specifically testified that the difference in die attach thickness “may change some numbers, but
77
will not change the overal! conclusion.” Thus, Dr. Qu concluded that the manufacturing tolerance
in the thickness of the die paste in Sharp’s CSPs does not impact the movability of the
terminals.46 Qu Tr. 379.
iv. Tessera’s moirC measurements are accurate and validate its FEM results
Sharp claims that Tessera’s moire results are invalid because: Tessera’s experts lack
experience, and have never done “room temperature to high temperature” tests before; Tessera
allegedly used an inappropriate epoxy; and out of the dozens of moire measurements presented, a
handhl appeared to be “physically impossible.” These arguments are without merit.
As an initial matter, Tessera’s expert, Dr. Qu, is a highly-qualified and experienced expert
in moire analysis. See, e.g., CX-164C. Indeed, he owns one of the first moire interferometers
available for commercial use. Qu Tr. 327-328, 41 8 . Dr. Qu routinely reviews moire analyses
performed by his students and by authors of articles submitted to international journals. Qu Tr.
3 17-320, 372-429. Dr, Klopp of Exponent Failure Analysis Associates (“Exponent”) in Menlo
Park, California obtained moire images of Sharp products, and Dr. Qu is more than capable of
determining whether those images resulted from correct sample preparation - including grating
application - and correct operation of the moire equipment. After reviewing Dr. Klopp’s work,
Dr. Qu was confident that the moire images were obtained CX-555C (Klopp Dep.)
The difference between 10 and 25 microns represents only the range of Sharp’s 46
manufacturing tolerance in the application of die attach paste. Thus, the thickness of the Sharp die attach paste will vary in this range. Qu Tr. 546-548
Dr. Klopp is highly qualified, and obtained moire images on other CSPs prior to 41
(continued.. .)
78
at 12-14, 34, 60-65; Qu Tr. 419-420.
Although Sliarp has raised questions about the grating application used in Tessera’s moire
sample preparation, there is no evidence that the epoxy used to attach the gratings affected the
moire measurements. Qu Tr. 414-415, 606-608, 1878-1880; Pitarresi Tr. 1426. The case in
which the grating detached at 135” C merely confirms that testing up to 125” C does not pose
problems for the grating, and demonstrates that any actual problems caused by the epoxy are
readily detected. Qu Tr. 1878-1879. Dr. Pitarresi’s conclusory statement that the Tg of the
epoxy causes unspecified “problems” does not support Sharp’s claims that degradation occurs
prior to detachment of the grating. See Pitarresi Tr. 1427. There is no evidence of any such
“degradation.” In fact, Dr. Qu’s moire images are sharper than Dr. Pitarresi’s. Compare
RX-831C, page 4, with CX-554C, figure 8.5.1.
Finally, the fact that a handfbl of moire measurements out of nearly fifty listed in CX-552
were “physically impossible” demonstrates only that experimental measurements are not always
100% accurate. However, as Dr. Qu testified, it is for precisely this reason that “you want to do
multiple samples” and a repeatability study. Qu Tr. 417-418, 602-603. Indeed, it is for this
reason that Dr. Pitarresi’s own moire measurement from a single image (the only one he reported
out of the mere six that he made) is meaningless. See Qu Tr. 417-418, 1899-1900; Pitarresi Tr.
1479.
C. Sharp’s accused CSPs include a flexible sheetlike element and flexible leads that are adapted to deform to accommodate
(. . .continued) obtaining images of Sharp’s CSPs. Qu Tr. 418-420, 61 I ; CX-55% at 7-14, 3 1 ,49.
79
movement in the completed assembly
As previously discussed, the flexible elements must be flexible prior to assembly, and
must retain sufficient flexibility in the completed assembly to be adapted to deform to
accommodate movement of the terminals. See Engelmaier Tr. 727-728. Deformation of the
flexible sheetlike element (i.e., the polyimide package substrate) and flexible leads facilitates the
movement between the package terminals and the chip in Sharp’s CSP packages. See Qu Tr.
364-368, 394-407, 432-439; CX-167C; CX-546; Engelmaier Tr. 852-853; CPX-144C; CPX-
145C; CPX-146C. These elements are flexible prior to assembly. See Engelmaier Tr. 850-851;
CX-37 (Response to Request for Admission No. 130); CPX-IOOC; CPX-IOIC. They retain
sufficient flexibility to be adapted to deform in the completed assembly to accommodate
movement of the terminals relative to the chip and the chip contacts. See Engelmaier Tr. 852-
853; Qu Tr. 363-365,438; CPX-145C; CPX-146.
CPX-I46C, an animation of the LRS I33 1 FEM, shows the flexing of the polyimide
package substrate as temperature increases from 25°C to 125°C. As the polyimide flexes, the
terminal moves to accommodate differential thermal expansion. Other FEMs, for example CX-
145C, for the single-layer LHFSOBZE, show similar flexing of the polyimide package substrate,
facilitating terminal movement. Qu Tr. 364-368, 432. Deformation of the polyimide package
substrate is also demonstrated by contour plots of the polyimide layer. These contour plots were
extracted from 3D FEMs of the LHFl6K27 and the single-layer LHF80BZE. The irregularity of
these contour plots shows that the deformation of the polyimide package substrate is due to
retained flexibility. If the deformation were due to thermal expansion alone, the displacement
would be uniform. Qu Tr. 432-438; CX-546. Thus, the sheetlike element in Sharp’s accused
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CSPs is flexible prior to assembly, and adapted to deform to accommodate movement of the
terminals in the completed assembly.
Sharp's accused CSPs include copper traces, adhered to the polyimide substrate, which
form part of the leads. The copper traces are flexible prior to assembly, and retain sufficient
flexibility in the completed assembly to be adapted to deform to accommodate movement
between the terminals and the chip contacts. The copper traces are thin and flexible, and deform
along with the package substrate to which they are adhered. The flexible bonding wire, which is
connected to the copper trace and forms the rest of the lead, also deforms in the completed
assembly. Qu Tr. 364-368, 432, 438-439; Engelmaier Tr. 851; CPX-1OOC; CPX-1OlC.
The Commission Investigative Staff argues that the flexible lead and flexible sheetlike
elements in Sharp's products have been shown to deform only at 125" C. Because the Staffs
position is that the relevant temperature range ends at 85" C, the Staff finds that the element
"adapted to deform to accommodate movement" does not read on Sharp's products. However, in
addition to the fact that testing may occur up to 125" C, the evidence demonstrates that the
flexible leads and flexible sheetlike element deform at 75" C and at 100" C, as well as at 125" C.
This is shown by the raw frame-by-frame FEM output, CX-167C7 contained in a CD-ROM
attached to Dr. Qu's expert report and entered into evidence as part of Dr. Qu's FEA data. CX-
167C. It is a set of animations from the finite element models, made up of frame-by-frame plots
showing the deformation of the CSP as the temperature changes. Qu Tr. 363; CPX-146. Exhibit
CPX-146, the subject of the cited testimony, was a copy of the frame-by-frame raw data,
LRS133-1, from the CD-ROM marked CPX-167, with a title added, and time-adjusted for better
viewing,
81
The frame-by-frame finite element outputs for the LRS133 1, as Dr. Qu testified, run from
25" C to 125" C. As CPX-167 at LRS133-1 shows, there are a total of 20 frames over this 100"
C range, so each increment or frame is 5" C. Therefore, frame 10 is 25" C plus 5" C times ten, or
75" C. At frame 10, the polyimide package substrate in the LRS 133 1 (medium blue) is
deformed, allowing terminal movement. Qu Tr. 363-364 (colors in the finite element output);
CX-167, LRS133-1. The copper traces on the polyimide (light blue) are also deformed. Qu Tr.
363-364 (colors in the finite element output); CX-167, LRS133-1. At frame 15, which will be
25" C higher (or 100" C), there is additional deformation of the polyimide package substrate and
the copper traces.
Similar results are provided in CX-167 for the LHF80BZE (single layer) and the
LHFl6K27. Qu Tr. 363-364, 432. Furthermore, Sharp's other single-layer and double-layer
CSPs will have similar flexing and deformation at 75" C and 100" C. See Engelmaier Tr. 785;
Qu Tr. 434,440.
Thus, there is ample evidence that each of Sharp's CSPs, both single-layer and double-
layer, has a sheetlike element and leads that deform at 75" C and 100" C to accommodate
movement of the terminals. Even under the Commission Investigative Staffs proposed
temperature limitations, each of Sharp's CSPs may be shown to contains this element of the '977
patent claims.
3. Sharp's Accused Devices Infringe Claim 22 of the '977 Patent
Claim 22 depends from claim 1, and adds the requirement that the terminals of the
semiconductor assembly be connected to the contact pads of a PCB substrate.
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a. Sharp directly infringes claim 22
Sharp infringes claim 22 directly, by attaching its CSPs to a PCB substrate for use in
Sharp camcorder products that include the accused CSPs. Engelmaier Tr. 858-859; CX-484C,
Furthermore, Sharp actively and knowingly aids and abets infringement by its customers. Sharp
intends for its customers to mount its CSPs on a PCB, and provides its customers with
instructions on how to do so. For example, Sharp distributes a mounting guide to its customers,
instructing its customers on mounting Sharp’s CSPs onto a printed circuit board for use in the
customers’ products. Engelmaier Tr. 859-860; CX-5OC (Sharp CSP Mounting Technology
Guidelines). Moreover, Sharp has been aware of Tessera’s ‘977 patent since at least November
of 1997, and therefore knows that its customers infringe claim 22 of the ‘977 patent. See Smith
Tr. 243; RX-722. Consequently, Sharp induces infringement of claim 22 by its customers. See
FF 880-889.
4. Sharp’s Accused Devices Infringe Claim 1 of the ‘326 Patent
The record demonstrates by at least a preponderance of the evidence that the accused
84
Sharp products contain all elements of claim 1 of the ‘326 patent. See, e.g., FF 890-905.
a. Sharp’s accused CSPs include a semiconductor chip with contacts, a backing element with terminals and lead portions, and bonding wires extending downwardly alongside the edges of the chip
Sharp’s accused CSPs are “semiconductor assemblies.” See Engelmaier Tr. 849-853,
Sharp’s CSPs also include “a semiconductor chip having oppositely facing front and rear
surfaces and edges extending between said front and rear surfaces, said chip hrther having
contacts on a peripheral region of said front surface.” This term refers to an ordinary IC chip
with contacts around the periphery of the top surface. Sharp’s CSPs each include a
semiconductor chip, with contacts around the periphery of the top surface. Engelmaier Tr.
841-842; CPX-IOOC; CX-37 (Response to Request for Admission Nos. 125-127, 137-138,
142-143); CPX-IOlC.
The accused CSPs include “a backing element having electrically conductive terminals
and lead portions thereon, wherein said lead portions are connected to said terminals.” As
discussed above, this term refers to a sheetlike element under the chip’s rear surface. Sharp’s
CSPs include a backing element, the package substrate, under the chip’s rear surface.
Engelmaier Tr. 842; Pitarresi Tr. 1458-1459; CX-37 (Response to Request for Admission Nos.
128, 134, 135, 144, 145); CPX-1OOC; CPX-1OlC. In addition, at least some of the terminals on
the backing element overlie the rear surface of the chip. As discussed above, this limitation
simply means that some of the terminals must be underneath the chip. Sharp’s CSPs have
terminals underneath the chip. Engelmaier Tr. 842; CPX-1 OOC; CPX- 10 1 C; CX-37 (Response
to Request for Admission No. 139).
85
The accused CSPs include bonding wires “connected to [the] contacts on [the] front
surface of [the] chip, [the] bonding wires extending downwardly alongside [the] edges of [the]
chip and being connected to the lead portions on the backing element.” Sharp’s CSPs include
bonding wires, as shown, for example, in CPX- 1 OOC and CPX- 10 1 C. Engelmaier Tr. 842;
CX-37 (Response to Request for Admission No. 147). In Sharp’s CSPs, each bonding wire
extends from a chip contact downwardly alongside the edges of the chip to the polyimide
package substrate, where it forms a connection with a copper trace. Engelmaier Tr. 842; Pitarresi
Tr. 1458-1459; CX-37 (Response to Request for Admission Nos. 128, 132, 134, 135, 139, 147,
148); CPX- 1 OOC; CPX-I 0 1 C.
b. Sharp’s CSPs include terminals that are movable with respect to the chip
As discussed above, Sharp’s accused CSPs include terminals that are “movable with
respect to [the] chip,” as recited in claim 1 of the ‘326 patent. The terminals in Sharp’s CSPs
move with respect to the chip. See Engelmaier Tr. 843, 852-853, 865; Qu Tr. 438-439. This
movement accommodates differential thermal expansion and significantly improves package
reliability. See Engelmaier Tr. 852-853; Qu Tr. 346-348, 445-446, 492, 618-619; CPX-48.
c. The backing element in Sharp’s CSPs is flexible and deforms to facilitate movement between the chip and the terminals
As discussed above, claim 1 of the ‘326 patent does not require the backing element to be
flexible. However, the polyimide package substrate - the backing element - in Sharp’s accused
CSPs is flexible prior to assembly. See, e . g , CX-37 (Response to Request for Admission Nos.
86
149, 128, 130). The backing element retains sufficient flexibility to deform to facilitate
movement in the completed assembly. See Engelmaier Tr. 845-846; CPX-145; CPX-146.
d. The bonding wires in Sharp’s CSPs are flexible and deform in the assembled package
As discussed above, the bonding wires need not be flexible in the completed assembly
However, the bonding wires in Sharp’s CSPs are flexible prior to assembly, and are adapted to
deform to accommodate movement after assembly. Engelmaier Tr. 851-853; Qu Tr. 438;
CPX- 10 1 c.
5. Sharp’s Accused Devices Infringe Claim 3 of the ‘326 Patent
This claim adds the limitation that the backing element is “flexible to facilitate movement
of the terminals with respect to the chip.” That is, the backing element must be flexible prior to
assembly, and deform in the completed assembly to facilitate movement.
The polyimide package substrate - the backing element - in Sharp’s accused CSPs is
flexible prior to assembly. See CX-37 (Response to Request for Admission Nos. 149, 128, 130).
Because Sharp uses a compliant die attach layer, the polyimide package substrate retains
sufficient flexibility to deform to facilitate movement between the terminals and the chip in the
completed assembly. Engelmaier Tr. 845-846; CPX-145; CPX-146. Sharp’s CSPs therefore
infringe claim 3 of the ‘326 patent. See also FF 902-905.
87
6 . Sharp’s Accused Devices Infringe Claim 11 of the ‘326 Patent
As discussed above, this claim adds the limitation that “bonding material,” such as solder
balls, are attached to package terminals located on top of the backing element, through holes in
the backing element. Sharp’s accused CSPs include vias, or holes, from the top surface to the
bottom surface of the polyimide package substrate. The terminals on top of the backing element
are exposed through the holes. Solder balls - the “bonding material” - are attached to the
terminals through the holes. Engelmaier Tr. 848-849; CX-37 (Response to Request for
therefore infringe claim 11 of the ‘326 patent. See also FF 906-91 1.
7. Conclusion Regarding Patent Infringement
For the reasons stated above, the Administrative Law Judge finds by at least a
preponderance of the evidence that Sharp’s accused devices literally infringe all asserted claims
of the ‘326 and ‘977 patents.
IV. VALIDlTY
A.
Sharp argues that Tessera’s proposed interpretation of “movable” - which Sharp
characterizes as “significantly improving reliability” - renders the asserted claims indefinite. It is
argued that a person of ordinary skill in the art cannot determine whether an assembly
“significantly” improves reliability, and hrther that Tessera’s proposed interpretation does not
clearly delineate the claimed movement from the prior art. See, e.g., Sharp’s Post-Hearing Br. at
Alleged Indefiniteness Under 35 U.S.C. Section 112, Paragraph 2
88
3 1-32. Tessera argues that its proposed construction of “movable” is definite, and rejects Sharp’s
arguments. The Commission Investigative Staff agues that the claims are not indefinite.
The proper interpretation of “movable” is not simply movement that significantly
improves reliability The term “movable,” as used in the asserted claims, refers to terminals that
provide substantial compensation for differential thermal expansion. However, as discussed
above, substantial compensation for thermal expansion is understood by one of ordinary skill in
the art to be within the framework of improved solder joint reliability, which is taught by the
patents-in-suit.
A claim term is definite “[ilf the claims read in light of the specification reasonably
apprise those skilled in the art of the scope of the invention.. , . The degree of precision
necessary for adequate claims is a function of the nature of the subject matter.” Miles Lahs., Inc.
v. Shandon, fnc., 977 F.2d 870, 874-875 (Fed. Cir 1993).
Terms such as significant and substantial are “ubiquitous in patent claims” and routinely
are upheld by the courts See Andrew C‘orp. v. Gahriel Electronics, Inc., 847 F 2d 8 19, 821 (Fed
Cir. 1988) (the term “closely approximate” is definite); see also Charvat v. Coniniissioner qf
Patents, 503 F.3d 138, 148 (Fed. Cir. 1978) (courts frequently validate terms such as
“substantial”) (citing Eihel Process Co. v. Minnesota di Ontario Paper Co. 261 U S 45, 65-66
(1 923). Definiteness does not require quantification of terms such as “movable,” because
“patentable inventions cannot always be described in terms of exact measurements.”
Georgia-Pacific Corp. v. (Jnited States Pijnvood Corp., 258 F.2d 124, 136 (2d Cir. 1958).
Sharp is incorrect that Tessera’s construction renders “movable’’ indefinite because
“significant” improvement is a “word of degree.” In Seattle Box Co., Inc. v. Industrial Crating Cfi
89
Packzng, Znc., 731 F.2d 818, 826 (Fed. Cir. 1984), which Sharp cites for this proposition, the
Federal Circuit, despite its general observations about difficulties which may arise as a result of
such phrases in patent claims, upheld the definiteness of the claims at issue in that case. The
Federal Circuit held in Seattle Box, that “substantially equal” is a term of degree, and that its
acceptability depends on whether one of ordinary skill in the art would understand what is
claimed ... in light of the specification,” even if experimentation may be needed. See Andrew
Corp., 847 F.2d at 821 (discussing Seattle Box, 73 1 F.2d at 826). Indeed, qualitative terms, such
as “substantial” or “closely spaced” - or movable - may be “necessitated by variations in the
practice of the patent.” 258 F.2d at 138. The amount of movement needed in the claims at issue
is “necessitated by variations in the practice of the patent,” which in this case may include the die
size, and solder ball height. The reliability required will vary for different package designs and
applications. See, e.g., Engelmaier Tr. 694-698; Qu Tr. 342-34. Thus, quantification is not
necessary. The patent need only “reasonably apprise those of skill in the art” of the scope and
utilization of the in~ent ion.~’ 258 F.2d at 138.
In this case, one of ordinary skill in the art can readily calculate - for a given application
- the amount of internal movement of the package terminals (as taught by the patents) that would
significantly relieve solder fatigue caused by differential thermal expansion. Qu Tr. 324-325,
48 Citing Baiisch & Lomb, 769 F.2d at 450, discussed supra in the section on claim construction, Tessera and the Commission Investigative Staff argue that a claim construction requiring “substantial” compensation for differential thermal expansion and “significant” improvement in reliability properly defines the claim term “movable” so as to serve the inventor’s purpose. In this case, the principles set forth in Bausch & Lomb, 769 F.2d at 450, appear to be appropriate because the term “movable,” in view of the teachings of the patents-in- suit and the level of ordinary skill in the art, reasonably apprises one of the scope of the invention.
90
346-351; Charles Tr. 1797-1799; Pitarresi Tr. 1477; RX-873. Thus, one of ordinary skill in the
art easily could apply the principles taught in the patents to design an improved package with the
desired reliability. See Pitarresi Tr. 1485-1488; Qu Tr. 349-351, 357-359; Kada Tr. 13 13. The
evidence shows that one of ordinary skill can determine the amount of movement needed for an
application to achieve the desired improvement in reliability.
Sharp has not demonstrated by any measure, and decidedly not by clear and convincing
evidence, that any asserted claim is invalid for indefiniteness.
B.
Sharp argues that the asserted claims of the ‘977 and ‘326 patents at issue in this
The Art Asserted Against the Patents-in-Suit
investigation are invalid in view of several patents and a device (referred to as an OMPAC
device), especially as that device is described in an article.49 In its Post-Hearing Brief, Sharp
argues that under 35 U.S.C. 4 102, all of the asserted art anticipates “the patents” at issue. See
Sharp’s Post-Hearing Br. at ii, 35. However, in one instance respondents argue obviousness
under 35 U.S.C. 5 103.5” See Id. at 35 n.30. Tessera denies that any of the art relied on by Sharp
invalidates any asserted claim of the ‘977 patent or ‘326 patent. The Commission Investigative
Staff argues that Sharp has not offered evidence sufficient to find that the asserted patent claims
49 See Section I (discussion of respondents’ motion to reopen the record to receive an alleged
5” It appeared at the hearing that Sharp may have intended to set forth additional obviousness OMPAC device and related testimony).
arguments. Such arguments did not, however, appear in Sharp’s Post-Hearing Brief. See, e.g., Sharp’s Post-Hearing Br. at 37-38. While certain Findings of Fact contained in this Initial Determination may be relevant to, and disprove, allegations of obviousness that Sharp might have made against the asserted claims, only the obviousness allegation actually made by Sharp in its briefing is addressed in this opinion.
91
are invalid. Each patent or article (and the device) relied on by respondents is discussed
separately below.
1. U.S. Patent No. 5,216,278 to Lin
Sharp argues that the ‘278 patent to Lin is prior art to both the ‘977 and ‘326 patents
under 35 U.S.C. 5 102(e) and 3 102(g), and that the Lin patent anticipates both patents. See, e.g.,
Sharp’s Post Hearing at 35-37. Sharp fbrther argues that in view of the Lin patent, claim 11 of
the ‘326 is invalid under section 103 for obviousness. See Sharp’s Post-Hearing Br. at 35 n.30.
The evidence in this investigation shows that Sharp has failed to carry its burden of proof by
clear and convincing evidence, and that the Lin patent and its claimed invention does not
anticipate the ‘977 and ‘326 patents, does not render them obvious, and hrther that the Lin
patent is not prior art to the patents-in-suit.
a. If the Lin patent were prior art, it nevertheless could not anticipate any asserted claim
It is undisputed that the Lin patent fails expressly to disclose the “movable” limitation of
the asserted claims. See Sharp’s Post-Hearing Br. at 35-36 (relying on alleged inherent
disclosure of “movable” element). Thus, even if the Lin patent were prior art, it cannot anticipate
any asserted claim, unless it inherently discloses the claimed “m~vabi l i ty .”~~ See Finnigun Corp.
51 If a prior art reference does not expressly set forth a particular claim element, the reference may be anticipatory only if the element is inherent in the reference’s disclosure. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). To be inherent, the feature must necessarily be present in the prior art. See Finnigun Co7p., 180 F.3d at 1365-1366 (reversing a finding of anticipation based on inherency because one skilled in the art would not necessarily recognize the claimed feature in
In its only discussion of solder joint fatigue, the Lin patent provides a solution that is very
different from the patents-in-suit. The Lin patent teaches a package substrate of a material that
has a CTE similar to that of the PCB, and the use of compliant solder balls. See RX-6 (Lin
Patent), col. 3, lines 9-17. This is consistent with the fact that no claim in the Lin patent recites
movability of the terminals relative to the chip.52 See, e.g., RX-6, col. 7, line 46 - col. 12, line 52.
Notwithstanding Sharp’s argument to the contrary, Dr. Charles provided no testimony
that “movable” terminals, as claimed by Tessera, are inherently disclosed in Lin. Dr. Charles
merely opined that Lin discloses movement that occurs due to the difference in CTEs of the
package substrate and chip. Nor did Dr. Charles testifL that the Lin patent discloses movement
that provides substantial compensation for differential thermal expansion or movement that
significantly reduces solder strain.53 See Charles Tr. 1 706- 1707, 17 19- 1720, 1 8 1 0- 1 8 1 1 .
Furthermore, it is error for Sharp to argue that “the selection of die attach in Lin’s
package is controlled by Lin’s teaching of low internal package stress.” See Sharp’s
Post-Hearing Br. at 36. As demonstrated at the hearing, Lin does not teach that the die attach has
5 1 (...continued) the prior art). Inherency may not be established by probabilities or possibilities. See C’ontinental Can Co. v. Moiisanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991).
52 Only one independent claim (out of seven) recites “compliant solder balls” and only two independent claims recite CTE matching between the package substrate and the PCB. The Abstract - while mentioning other claimed features of the Lin patent such as displaced vias (discussed below) - fails to discuss matching the CTEs of the package substrate and the PCB. See RX-6. Thus, the problem of solder joint fatigue was not a central focus of the Lin patent, and the only solution disclosed in Lin is the use of compliant solder balls and matching the CTEs of the package substrate and the PCB.
53 Moreover, Dr. Charles did not opine that the Lin patent inherently discloses “movable” terminals, as that term is construed pursuant to Sharp’s or the Staffs claim construction. See Sharp’s Post-Hearing Br. at 3 5; Charles Tr 1 700- 1728, 17 19-1 720, 1790-1 8 12, 1828- 1829.
93
any effect on internal package stress.54 See Charles Tr. 1703-171 1. In fact, the Lin patent
expressly refers to “related material” that uses a high modulus material to achieve low internal
package stress. Charles Tr. 1796; RX-6, col 1, lines 9-1 1; RX-72. Thus, if there is any teaching
in Lin regarding internal package stress, it is to use a rigid, not a compliant,
Inasmuch as Dr. Charles admitted that it is possible to build a Lin package with a rigid
material between the package substrate and chip, it is possible that terminal movement in a chip
covered by the Lin patent will be significantly constrained. See Charles Tr. 1786- 179 1.
Dr. Charles fkrther admitted that the thinner or more rigid the die attach material, the more the
CTE of the chip will constrain the movement of the top surface of the package substrate and the
more the top surface of package substrate will track the expansion of the chip. When there is a
thin, rigid die attach, the package substrate will be constrained such that it will expand or
contract in close relation to the chip. Charles Tr. 1786-1787. Therefore, it is possible to build a
Lin package that has a rigid die attach, a thin die attach, or even a thin, rigid die attach so that the
chip will significantly constrain the movement of the terminals. Such constraint of movement
5 4 The Lin patent says nothing about the material or modulus of the die attach, other than that the chip is “conventionally bonded to die attach surface 14 by a die bond 20” and that the thickness of the die attach “is of sufficient thickness to support electronic component 18 above the plane of first wiring layer 30.” See Charles Tr. 1790-181 1; RX-6, col. 2, lines 49-53, col. 5, lines 26-33. [
] Mr. Lin did not say that the purpose of the die attach was to reduce solder joint fatigue. Lin Tr. 1552. In fact, no claim in Lin recites a die attach, let alone its material, thickness or modulus. RX-6, col. 7, line 46 - col. 12, line 52.
5 5 A PTO rejection in a subsequently-filed and currently pending application should not be given any weight. The Office Action does not constitute an action by Tessera affecting the scope of a pending claim. Furthermore, the Examiner did not find that Lin inherently disclosed movement that significantly improves solder joint reliability. Moreover, the Examiner’s statement is preliminary, may be based on a misreading of Lin, and is not final. See RX-473 at TES S 500027-42.
94
would preclude a finding that the displacement of terminals in Lin provides significant
compensation for differential thermal expansion. See Charles Tr. 1786- 179 1; RX-6.
Accordingly, Sharp has failed to prove that the claimed movability is inherently disclosed
by the Lin patent. See FF, Section IV B (FF 1017-1 127).
b. The Lin patent could not render any asserted claim obvious
1. The Lin patent teaches away from an embodiment having electrically active solder balls and terminals directly underneath vias
Sharp essentially admits that Lin does not anticipate claim 11 of the ‘326 patent.56
Sharp’s Post-Hearing Br. at 35 n.30. Sharp attempts to argue in a footnote that Lin’s reference to
a “single layer carrier substrate” means that it would have been obvious to modi@ Lin’s package
substrate so that it reads on claim 1 1. Id. Lin expressly teaches away from a design having: (i)
terminals located on the top surface; and (ii) through-hole vias in direct alignment with the
terminals. See, e.g., RX-6, col. 5, lines 7-9 (“It should be noted that solder pads 34 and solder
balls 26 are, in all cases, displaced away from vias 32 on package mounting surface 16.”). Thus,
there can be no finding that claim 11 would be rendered obvious by Lin.
Dr. Charles opined that it would have been obvious to combine Figures 4 and 6 of the Lin
patent to make an embodiment with terminals on the top surface of the package substrate that are
directly aligned with through-hole
56 Indeed, the Lin patent fails
vias (as required ‘326 patent, claim 11). Charles Tr. 1734.
to anticipate claim 11 of the ‘326 patent. In addition to the deficiencies discussed in connection with independent claim 1, the Lin patent fails to disclose, and in fact teaches away from, the limitations of claim 1 1. See Charles Tr. 1807-1 809; RX-6, col. 5, line 7- col. 12, line 5 2 , Figs. 1 , 3-6.
95
Dr, Charles’ apparent justification for this is his belief that the Lin patent discloses single-layer
package substrates. Charles Tr. 1720-1721. What Dr. Charles meant by single-layer was a
package substrate with a single metallization layer. Id. However, Lin fails to disclose such a
package substrate. See RX-6, col. 5, line 58 - col. 6, line 10, Figs. 1, 4, 5, 6. Rather, the
single-layer package substrate disclosed in the Lin patent is one with a single insulating layer and
two metallization layers. Id. In fact, claim 35 of the Lin patent specifically recites a structure
having a single-layer package substrate and terminals displaced away from the vias. See RX-6,
col. 12, lines 14-39.
Sharp has failed to establish a motivation for creating a new embodiment having
electrically active solder balls and terminals directly underneath vias. The Lin patent not only
fails to disclose such an embodiment, it expressly teaches away from it by emphasizing that in all
cases, the terminals on the package substrate bottom surface should be displaced away from
through-hole vias. See FF, Section IV B (FF 1128-1 186).
.. 11. Secondary considerations provide strong evidence of
novelty in this case
Secondary considerations “may often be the most probative and cogent evidence of
nonobviousness in the record.” Stratoflex, Inc. v. Aeroyuip Corp., 713 F.2d 1530, 1538 (Fed.
Cir. 1983). Important secondary considerations, or objective indicia, factors may include:
(i) general industry acquiescence; (ii) commercial success of Sharp’s infringing products; and
(iii) long-felt, but unresolved need. See WMS Gnniing Inc. v. Int’I Ganze Tech., 184 F.3d 1339,
1359 (Fed. Cir. 1999). Tessera’s evidence of secondary considerations rebuts any argument of
obviousness.
96
Tessera has weighty evidence that the chip packaging industry has embraced its
technology covered by the patents-in-suit. The Commission has already determined that
Tessera’s licensing activities are sufficiently extensive to constitute a domestic industry in the
patents-in-suit. See Notice of Commission Determination Not to Review an Initial
Determination Granting a Motion for Summary Determination That the Domestic Industry
Requirement of Section 337 Is Satisfied (Feb. 26, 2001). Indeed, more than 30 different
companies have agreed to pay Tessera for the use of its patented chip packaging technology.
McWilliams Tr. 35-37; CX-536, CX-323C. These license agreements either expressly include
the ‘977 and ‘326 patents, or, if they were entered into before these patents issued, expressly
include the earlier patents to which the ‘977 and ‘326 are related. Thus, nearly all of Tessera’s
licensees have licensed Tessera’s face-up packaging technology. McWilliams Tr. 3 7; see, e.g. ,
Smith Tr. 234-237; CX-241C [
Tessera’s licensees have paid an up-front license fee. See, e.g., CX-241C at TESS006332-33;
CX-259C at TESS005598; CX-309C at TESS005908; CX-297C at TESS005806; CX-3 11C at
TESS005928; CX-3 14C at TESS005988-89. In addition, many of Tessera’s licensees pay
royalties. McWilliams Tr. 94; CX-323C. These royalties are directly tied to the manufacture
and/or sale of products that utilize Tessera’ s patented technology, including the patents-in-suit.
See, e.g. , McWilliams Tr. 36-39, 85-86; Smith Tr. 251-259; Order No. 13 (initial determination)
Tessera has already received royalty payments in excess of [
1; c x - 2 5 9 c [ 1. The majority of
1. See CX-323C.
Sharp has also been successfd in selling CSPs which use Tessera’s face-up technology.
1,
1. CX-579 (RX-878); CX-576C, Sharp’s
From 1996 to March 2001, Sharp’s worldwide sales of CSPs have exceeded [
with revenues of more than [
97
Response to Interrogatory No. 206, Attachment 3; CX-582C, Sharp’s Response to Interrogatory
No. 206, Attachment 3. Sharp’s CSP sales in the United States alone have exceeded 16.3 million
units, with revenues of more than [ 1. CX-14C; CX-32C; CX-44C; CX-576C;
CX-582C. Moreover, contrary to Sharp’s assertion that there is no “nexus” between its
commercially successfbl CSP sales and Tessera’s patents, the evidence clearly demonstrates that
the vast majority of the CSPs that Sharp currently sells in the United States are [
1, which infringe the asserted claims. See Infringement
Ganznia-Metrics, Inc. v. Scantech Ltd., 52 U.S.P.Q.2d 1579, 1584 (S.D. Cal. 1998)
During questioning by counsel for respondents and for the Commission Investigative
Staff, Dr. DiStefano gave detailed testimony that he and Dr. Khandros conceived a face-up chip
package with terminals under the chip on a flexible interposer, with wire bonds that connected
Tessera also introduced evidence of diligence following the June conception up until 57
constructive reduction to practice in March 1991. Bottoms Tr. 107-1 08, 127- 130, 13 5- 136, 146- 149; CX-329C (DiStefano Dep.) Tr. 427-43 1, 437-438, 452; CX-1OOC.
99
the chip contacts to traces on the interposer. His testimony as to the time of conception was
based on his own recollection (as recorded in a previously filed affidavit) and the notebooks of
co-inventor, Igor Khandros. See CX-329C (DiStefano Dep.) Tr. 404-4 17, 43 1-43 8; CX-
The Khandros notebooks demonstrate that work on the claimed inventions began well
before June 10, 1990, and that the inventions were complete no later than that date. See CX-
328C (Khandros Dep.) Tr. 55-62; CX-12C at TESS070649-57. The notebooks provide
documentation of conception of the claimed inventions. For example, in the June 1, 1990 entry,
Dr. Khandros wrote: “The problem with FLIP-CHIP joining is that solder balldjoints must
accommodate the thermal stresses due to TCE mismatch between silicon chip and the substrate.”
Later in that entry he recorded a design in which “the direction of the wirebond is towards the
chip centers, so that the thermal stress buckles the wires, instead of tensile force being applied.
* * * The chip is decoupled from the substrate, and the thermal stresses simply buckle the wires
of a wirebond, without danger of failure ofjoints.” CX-12C at TESS07065 1-53 (emphasis in
original).
The testimony of Drs. DiStefano and Khandros was confirmed at the hearing by that of
Dr. Wilmer bottom^.'^ Dr. Bottoms testified that he advised Drs. Khandros and DiStefano to
5 8 Dr. Wilmer Bottoms was an original member of the Board of Directors of IST Associates, Inc. (“IST”), which later changed its name to Tessera, and a general partner of the venture capital firm that provided the initial investment in IST. Bottoms Tr. 97-98, 11 1-1 12. Dr. Bottoms received a bachelor’s degree in physics from Huntington College and a Ph.D. in physics from Tulane University. After graduating from Tulane, Dr. Bottoms was a member of the faculty of Princeton University for seven years. While at Princeton, Dr. Bottoms worked in the area of surface physics associated with insulators and semiconductors. Bottoms Tr. 96-97, 100-1 01.
Beginning in about April 1990, Dr. Bottoms made at least monthly visits to IST’s facility in (continued.. .)
100
document their engineering ideas carefully in a notebook, and that each entry should be dated,
and reviewed and witnessed by another person who regularly reviewed the notebooks. Bottoms
Tr. 107-127, 157-158. In his testimony, Dr. Bottoms was able to answer questions about the
progress of the work by Drs. DiStefano and Khandros, and his understanding of the Khandros
notebook entries. See, e.g., Bottoms Tr. 106-135, 149-153, 160-162.
Sharp argues that the Khandros notebook first disclosed a face-up chip package on
January 6, 1991. See Sharp’s Post-Hearing Br. at 36-37. However, Sharp’s position is based on
the erroneously assertion that Dr. Khandros testified that the June 10, 1990 notebook entry, on
which Tessera relies in part, was not directed to the claimed inventions. See Sharp’s Post-
Hearing Br. at 37. The exhibit discussed in the portion of the Khandros deposition relied on by
Sharp is actually an abortive attempt at a patent dated June 9, 1990. See CX-332C (Khandros
Dep.) at 148-153; see RX-63 (Khandros Dep. Ex. 26) at 1. Sharp has not established that the
June 9, 1990 document is a draft of the application that led to the patents-in-suit. Similar
argument is found in Sharp’s proposed findings 1104 and 1105. However, as pointed out by
Tessera in its objections to those proposed Sharp findings, Sharp has failed to establish that the
draft application referred to by Sharp during the Khandros deposition led to the patents-in-suit.
58 (. . .continued) New York where he met personally with Drs. DiStefano and Khandros. In addition, Dr. Bottoms spoke with Drs. DiStefano and Khandros on the telephone more than once a week. Bottoms Tr. 109-1 10. Dr. Bottoms was present during many of the inventors’ meetings in April and May of 1990, in which they discussed the problems they intended to solve, as well as the technologies that might address those problems. Bottoms Tr. 106-107. During his meetings with the inventors, Dr. Bottoms regularly read the engineering notebooks of both Drs. Khandros and DiStefano, and confirmed that the notebooks had been witnessed. Dr. Bottoms personally witnessed and signed several pages of at least one of the Khandros engineering notebooks. Bottoms Tr. 110-1 11, 117-1 18; CX-12C at TESS70688, TESS70691, TESS70693.
101
According to Tessera, the draft may be, at best, a communication regarding an application that
was filed in September, 1990. See Tessera’s Objection’s to Sharp’s PFF.59’ ‘()
Based on the arguments of the parties and the evidence of record, June 10, 1990 is found
to be the invention date for Tessera’s asserted patent claims.
Perhaps realizing that it cannot prove that Lin’s filing date predates Tessera’s invention,
Sharp argues that Lin is prior art under 35 U.S.C. 5 102(g). In particular, Sharp argues that the
Lin invention was conceived in February 1989, diligently reduced to practice in 1989-90, and
ready to be shipped for sale in August 1990. Sharp’s Post-Hearing Br. at 37.
[
] Lin Tr. 1588-1589. An inventor’s testimony, standing alone, is
insufficient to prove conception. Corroboration is necessary. See Price v. Symsek, 988 F.2d
1187, 1194 (Fed. Cir. 1993). A “rule of reason” analysis is applied to determine the
corroboration of the inventor’s prior conception testimony. Id. at 1195. The allegedly
corroborating evidence is a set of drawings that fail to disclose [
1. Furthermore, the
drawings fail to discuss solder joint fatigue or the allegedly inventive solution of coefficient of
thermal expansion (CTE) matching. See RX-607C (Motorola Production Nos. 003 8 1-0037).
The testimony of Sharp’s Dr. Charles on this point is also based on an erroneous interpretation of the Khandros deposition. Charles Tr. 1685-1 688.
Far from providing testimony that his June 10, 1990 notebook entry was outside the claimed inventions, when Dr. Khandros was directly asked whether the June 10 entry discloses a face-up chip carrier with the chip being glued down to a package substrate, he testified that the drawing in the June 10 entry “could be” a face-up design. See CX-328C (Khandros Dep.) Tr. 208.
59
60
102
Thus, the February 6, 1989 drawings fail to corroborate Mr. Lin’s testimony regarding
conception.
Moreover, any alleged diligence in 1989 and 1990 has not been established. No
documents from that time discuss solder joint fatigue or CTE matching. See RX-5 12C; RX-
607C. Sharp’s statement that Motorola products with OMPACs passed tests and were ready for
shipment by August 1990 is not supported by any credible evidence. Sharp has failed to prove
what components were in the particular OMPAC parts that passed the tests, such as the material,
thickness and modulus of the die attach and package substrate. In addition, Sharp has failed to
prove that such parts had Lin’s feature of CTE matching to reduce solder joint fatigue. The cited
document also says nothing about the components of the tested OMPACs. See RX-5 12-C at
MOT 00036. Finally, there is no support in the cited testimony that the OMPACs were ready to
be shipped for sale, as argued by Sharp. Based on Mr. Lin’s testimony one can establish that
testing is necessary for shipment. However, testing alone does not confirm that shipment took
place. See Lin Tr. 158 1. There is no clear and convincing evidence that the Lin invention was
actually reduced to practice by August 1 990.6’
In summary, Sharp has failed to prove that the Lin patent was conceived in February
1989, or conceived and reduced to practice by any date prior to June 10, 1990 (which is the
conception date of the claimed inventions). Sharp therefore has failed to prove by clear and
convincing evidence that Lin is prior art under Section 102(e) or 102(g).
‘’ Indeed, for purposes of argument only, the earliest possible date for conception of Lin is August 3, 1990, the date of an entry from Mr. Lin’s notebook that describes [
Motorola Production No. 00575. The notebook entry fiu-ther states that these are the ideas of the three inventors of the Lin patent. See id.
1. RX-409 at
103
2. The OMPAC Article
a. The 1991 OMPAC article is not prior art
The 1991 OMPAC article relied on by Sharp (RX-99) was published in May 1991.
Charles Tr. 1737-1738; RX-99 at 176; RX-372. See FF 1189. That publication date is eleven
months after the invention date established in this investigation for Tessera’s patents, and two
months after Tessera’s constructive reduction to practice. Thus, the 199 1 OMPAC article cannot
be considered prior art to the claimed inventions.
b. The 1991 OMPAC article does not anticipate claims 6 and 22 of the ‘977 patent or claims 1 and 3 of the ‘326 patent
Even if the 199 1 OMPAC article were prior art, it could not anticipate any asserted claim.
Like the Lin patent, the 1991 OMPAC article does not expressly disclose the “movable”
limitation of the asserted claims. This does not appear to be in dispute. See Charles Tr. 18 13;
RX-99. Furthermore, the 1991 OMPAC article also does not inherently disclose the claimed
movability, for a number of reasons. The package described in the article has a BT resin package
substrate. RX-99 at 177. Dr. Charles did not - and cannot - point to any express disclosure in
the article stating that the package substrate is flexible. Moreover, the article fails to disclose
anything about the die attach, other than it is a “conventional epoxy die attach.” Charles Tr
1813; RX-99 at 177. The 1991 OMPAC article thus does not exclude the possibility that a
package built according to its teachings would have a thin or rigid die bond
Furthermore, the 1991 OMPAC article discusses tests that analyzed the adhesion strength
a. The Mu patent does not anticipate any asserted claim
1. The claimed movability is not expressly or inherently disclosed
The Mu patent does not expressly disclose the claimed movability or discuss the
problems of CTE mismatch or solder joint fatigue. Charles Tr. 1822-1830:2 (Charles); RX-90
(Mu Patent). Sharp argues that although the Mu patent discloses a pin grid array package, the
external pins are very short and very large in diameter such that they would experience the same
fatigue problems as solder joints of ball grid array packages. See Charles Tr. 1749-1 75 1.
Sharp’s expert, however, failed to point to any text in the Mu patent that supports this position.
See Charles Tr. 1753-1755. Indeed, such text could not be found in the Mu reference because
there is no such disclosure. See Engelmaier Tr. 1910-191 1; RX-90, col. 3 , line 11- col. 4, line 2.
The Mu patent does not disclose the use of very short pins that are very large in diameter to one
of ordinary skill in the art at the time of the Mu patent. Id. If a pin were made shorter, it would
106
extend only halfway through the board. Id. One skilled in the art would recognize that this
presents a reliability problem because the plated through-hole of the printed circuit board would
crack due to the stress concentration. Id. If the pins were larger in diameter, then the
corresponding holes in the printed circuit board would have to be larger, thereby giving up
desired “real estate” on the board Id. The drive in the industry at the time was to make the holes
in the PCB smaller to gain more real estate. Id. Accordingly, the Mu patent does not disclose
short external pins that are very large in diameter. Rather, the Mu patent discloses that the length
of the traces on the package substrate should be reduced so that the electrical signal delay
between different channels is equalized. RX-90, col. 1, line 24 - col. 2, line 7, col. 4, lines 16-23,
col. 5 , lines 34-48. Thus, Sharp’s basis for arguing that the Mu patent somehow addresses the
problem of solder joint fatigue is unsupported.
In addition, the Mu patent fails to disclose inherently the claimed movability. The only
information the patent provides regarding the die attach is that it could be “any type of adhesive
material such as adhesive glue.” RX-90, col. 4, lines 33-36. Therefore, the Mu patent does not
exclude the possibility that a package built according its teachings would have a thin or rigid die
attach, which would constrain movement to prevent substantial compensation for differential
thermal expansion. See Charles Tr. 1786-1789, 1822-1823, 1829. The Mu patent thus does not
necessarily disclose terminals that move relative to the chip to provide substantial compensation
for differential thermal expansion. There is no inherent disclosure of the claimed movability.
Dr. Charles opined that Mu discloses “movable” terminals because the CTE of the package
substrate would be different from that of the chip. See Charles Tr. 1749-1764, 1821-1823, 1829-
1830. This testimony does not support a finding of invalidity.
107
ii. The Mu patent does not expressly or inherently disclose a flexible package substrate
The Mu patent discloses that the package substrate is a printed circuit board material, but
fails to disclose its modulus or thickness, or state that it is flexible. Engelmaier Tr. 191 1-1912;
RX-90, col. 3, lines 50-52, Fig. 1. One of ordinary skill in the art would understand that such a
substrate is rigid because a large number of pins must be inserted into corresponding holes of a
PCB. Engelmaier Tr. 19 1 1 - 19 12. The Mu patent, in fact, contemplates a pin grid array package
having up to 410 pins. Inserting 410 pins would not be possible if the package was flexible
because the pins would bend out of alignment given the large number of holes in the PCB.
Engelmaier Tr. 191 1-1 9 12; RX-90, col. 3, lines 20-23. Accordingly, the Mu patent does not
expressly or inherently disclose a flexible sheetlike element. See FF, Section IV D.
4. US. Patent No. 4,549,247 to Hoppe
The Hoppe patent (RX-92) discloses embodiments used in smart cards or similar devices.
Engelmaier Tr. 19 12- 19 14; RX-92 (Hoppe Patent), col. 1 , lines 40-42. Smart cards are placed in
automatic dispensing machines, so that the terminals on the smart card make sliding contact with
pins in the machine. Engelmaier Tr. 1912-1 914; RX-92, col. 1, lines 46-54, Fig. 1 , The Hoppe
patent provides no disclosure or teaching of the terminals soldered to a PCB. Engelmaier Tr.
19 12-1 9 15, 1926- 1927; RX-92. Thus, it is not surprising that Hoppe lacks a discussion of solder
joint fatigue or differential thermal expansion. See Charles Tr. 1819, 1830; RX-92. Based on the
false premise that Hoppe embodiments are soldered to PCBs, Dr. Charles opined that the chip
will expand and contract according to its CTE; because the carrier film substrate (with its higher
108
CTE) will expand more than the chip, the contacts will move relative to the terminals. Charles
Tr. 1767-1768. Dr. Charles provided no testimony or evidence to support a finding that Hoppe
discloses movable terminals relative to the chip to provide substantial compensation for
differential thermal expansion, to reduce the strain in the solder joints, or to substantially
improve solder joint reliability. See Charles Tr. 1786-1 789, 18 19, 1830; RX-92. Sharp thus has
failed to establish by clear and convincing evidence that the Hoppe patent discloses the claimed
“movable” limitation. See FF, Section IV E.
5. U.S. Patent No. 5,086,558 to Grube and Khandros
The Grube patent (RX-95) is not prior art because its filing date is after Tessera’s
invention date. Also, it does not anticipate claim 22 of the ‘977 patent because it does not
expressly or inherently disclose “terminals [that] are movable with respect to said chip and said
contacts.” It also fails to disclose “leads.”
The Grube patent discloses a low temperature method of directly attaching a chip
(face-down) to a PCB or module substrate. RX-95 (Grube Patent), col. 2, lines 3-30. An
interposer, which may be made of glass-filled or ceramic-filled elastomer, has holes which
conform to the chip contacts. RX-95, col. 4, lines 3 3 - 5 3 , Fig. 2. The holes of the interposer are
filled with a composite paste, which joins the chip to a PCB or module substrate. RX-95, col. 5,
lines 14-18, Fig. 2. The composite joining material is “preferably formed of a composite of a
thermoplastic polymer such as a copolymer of polyimide and siloxane and a fine metal such as
gold powder.” RX-95, col. 1, lines 11-18, col. 4, line 61 - col. 5, line 1, col. 5, lines 59-66. The
Grube patent does not di$close the modulus of the composite joining material. RX-95, col 1,
109
lines1 1-18, col. 4, line 61 - col. 5, line 13, col. 5, lines 59-66. Adopting arguendo Dr. Charles’
apparent interpretation of “terminal” (i.e., the bottom of a conductive column), the Grube patent
does not expressly disclose terminals that are movable relative to the chip. See Charles Tr. 1824;
RX-95. Nor is such a feature inherently disclosed. This is because it is possible to build an
arrangement according to the teachings of the Grube patent with a glass-filled or ceramic-filled
interposer and rigid conductive joining material. Charles Tr. 732, 830-831, 1826; RX-95, col. 4,
lines 33-40, col. 4, line 64 - col. 5, line 13. Accordingly, the Grube patent does not necessarily
disclose terminals that move relative to the chip to provide substantial compensation for
differential thermal expansion. See Charles Tr. 1786-1787, 1789; RX-95, col. 4, lines 33-40, col.
4, line 64 - col. 5, line 13.
Dr. Charles opined that the “movable” claim limitation is inherently disclosed because
the bottom surface of the interposer expands with the PCB, while the top surface of the
interposer is tied to the chip and will thus expand less because the chip expands less. As with Dr.
Charles’ opinions regarding other prior art references, his opinion as to the Grube patent does not
support a finding of invalidity. His testimony failed to establish that the Grube patent discloses
the claimed movability. Charles Tr. 1775-1 780, 1824-1 827. Accordingly, Sharp has failed to
prove anticipation by clear and convincing evidence.
The Grube patent also fails to disclose “leads.” The Grube patent refers to the composite
joining material as “contact joints” or “joints,” never as “leads.” See RX-95, col. 2, lines 15-18,
col. 4, lines 18-26, col. 4, lines 29-33, col. 5, lines 29-33. Dr. Charles failed to explain why one
skilled in the art would consider such conductive columns to be “leads.” See Charles Tr. 1825,
Sharp therefore has failed to establish by clear and convincing evidence that the Grube patent
110
discloses “flexible leads electrically connecting said terminals to said contacts.” See FF, Section
IV F.
V. ENFORCEABILITY
Sharp alleges that the ‘326 patent and the ‘977 patent are unenforceable because the
applicants or attorney for the ‘326 and 977 patents committed inequitable conduct when they
failed to bring the ‘558 patent to Grube and Khandros to the attention of the examiner during the
prosecution of the applications that resulted in the issuance of the patents-in-suit.62 See Sharp’s
Post-Hearing Br. at 49-50; Sharp’s Rebuttal Br. at 24. Tessera denies Sharp’s allegations, and
presents facts and arguments in opposition. The Commission Investigative Staff also argues that
Sharp has failed to present clear and convincing evidence that inequitable conduct occurred in
connection with the Grube patent.
In order to prevail on its defense of inequitable conduct, Sharp must demonstrate, by clear
and convincing evidence, that the applicants misrepresented information or failed to disclose
information that would have been material to the examination of the application, and that the
applicants had the specific intent to mislead or deceive the PTO. Molins PLC v. Textyon, Inc., 48
F.3d 1172, 1181, 33 U.S.P.Q.2d 1823 (Fed. Cir. 1995). In the case of nondisclosure of
information, the evidence must show that “the applicant made a deliberate decision to withhold a
known material reference.” Molins, 48 F.3d at 1 18 1.
62 “When a court has finally determined that inequitable conduct occurred in relation to one or more claims during prosecution of the patent application, the entire patent is rendered unenforceable.” Kingsdo~vn Medical C‘onmlfanfs, Ltd. v. Hollister, Inc., 863 F.2d 867, 874 (Fed. Cir. 1988) (in baric a s to porlion tiled), cert. denied, 490 U. S . 1067 (1 989).
111
First, Sharp has failed to prove by clear and convincing evidence that Grube is material.
Sharp apparently claims Grube was material because it anticipates claim 1 of the ‘266 patent and
claims 1 and 22 of the ‘977 patent. Sharp’s Post-Hearing Br. at 49. As discussed above, the
Grube patent is markedly different from the inventions of the patents-in-suit. The Grube patent
lacks several elements from claim 1 of the ‘266 patent and claims 1 and 22 of the ‘977 patentb3
Second, Sharp has failed to establish by clear and convincing evidence that Dr. Khandros
or Mr. Millet knew of any alleged materiality of the Grube patent. As an initial matter, there is
no evidence that Dr. Khandros even knew that the Grube patent issued. He testified at his
deposition that he could not recall if he had ever become aware of its issuance. RX 332-C
(Khandros Dep.), Tr. 206-207. Sharp also failed to establish by clear and convincing evidence
that Mr. Millet knew that Grube was material to the examination of the ‘977 patent application.
Mr. Millet’s citation of Grube in two unrelated Tessera patent applications does not prove such
knowledge of materiality
The two Tessera patents in which Grube was cited - U.S. Patent No. 5,808,874 issued to
Smith (“Smith”) (RX 445) and U.S. Patent No. 6,020,220 issued to Gilleo et al. (“Gilleo”) (RX
448) - are very different from the ‘977 patent. Smith discloses a face-down arrangement that
uses liquid, flowable conductive masses to connect a chip to its package substrate. See RX-445
having conductive polymer disposed within apertures of an interposer layer. RX-448 (Gilleo
63 Dr. Charles failed to make any comparison between Grube and claim 1 of the ‘266 patent. This omission is significant because claim 1 of the ‘266 patent recites, among other things, “a plurality of terminals disposed in a pattern on said second surface of said interposer.” That limitation that clearly cannot be met because the Grube interposer does not have a metallization layer on it from which a pattern of terminals would be formed.
112
Patent), col. 5, lines 32-37. Like Grube, both Smith and Gilleo disclose the use of conductive
material in a face-down arrangement. By contrast, the ‘977 patent recites leads - not conductive
polymer paste - to connect chip contacts to terminals on a package substrate. See RX-445, Fig.
491, The impact of movable terminals on reliability should be determined by considering the
movement of the solder terminal furthest from the neutral point, but still under the die,
since the solder joint connected to this terminal will fail first. Tr. 381:23-382:14 (Qu); Tr.
205
492.
493,
494.
495.
496
1859:6-15; CX-134C (Sharp letter).
The solder joint fixthest from the neutral point, but still under the die, will be included in a
diagonal cross-section. Tr. 381:23-382:14 (Qu).
The displacement for the outermost terminal in a diagonal cross-section is generally
greater than the displacement for the outermost terminal in a norinal cross-section. Tr.
403 14-1 8 (Qu).
Dr. Qu obtained the displacement of the outermost solder terminal under the die, using a
diagonal cross-section of the single-layer version of the LHF80BZE extracted from the
three-dimensional model of the LHF80BZE. Tr. 401 : 19-402:25 (Qu); CX-55 1 .
When the temperature changes from 25°C to 125OC, the outermost terminal under the die
in a diagonal cross-section of the single-layer LHF8OBZE moves relative to the chip 2.25
microns in the horizontal direction, and - .58 microns in the vertical direction, for a total of
2.32 microns. Tr. 403:4-22 (Qu); CX-550, Table 7.9.7.
The following table, from CX-550, suminarizes the movement between the terminals and
the chip for a diagonal cross-section of the double-layer LHF80BZE:
Table 7.9.7 Displacements between points A and B and points A and C on the outermost solder joint at various temperatures for the single layer LHF8OBZE.
Temp. Disp. Between A and U (pm) Disp. Between A and C (pm)
5 15. Dr. Qu obtained the displacement of the outermost solder terminal under the die, using a
diagonal cross-section of the LHFl6K27 extracted from the three-dimensional model of
the LHF16K27. Tr. 405:17-406:6 (Qu); CX-546 at 39 (Figure 7.9.2. - array of solder
balls extracted from 3D model of the LHF16K27).
210
516.
517.
When the temperature changes from 25 "C to 125 "C, the outermost terminal under the die
in a diagonal cross-section of the LHF16K27 moves relative to the chip 85 microns in the
horizontal direction, and -.94 microns in the vertical direction, for a total of 1.27 microns.
Tr. 406:2-12 (Qu); CX-550, Table 7.9.6.
The following table, from CX-550, summarizes the movement between the terminals and
the chip for a diagonal cross-section of the LHF 1 6K27:
Table 7.9.6 Displacements between points A and R and points A and c' on the outermost solder joint at various temperatures for LHFl6K27.
518.
519.
520
Temp. Disp. Between A and B (pm) Disp. Between A and C (pm)
U I' total U I' total -40 -0.14 0.39 0.41 -0.06 2.03 2.03 25 0.00 0.00 0.00 0.00 0.00 0.00 125 0.85 -0.94 1.27 0.89 -4.2 4.32
("C)
The finite element analysis of Sharp's LR38714 CSP shows that the terminals move with
respect to the die. Tr. 406:13-407:2 (Qu); CPX- 546 at 35 (Figure 7.8.6 - close-up of
LR38714 at 125°C)
When the temperature changes from 25 "C to 75"C, the outermost terminal under the die
in a normal cross-section of the LR38714 moves relative to the chip .18 microns in the
horizontal direction, and -.04 microns in the vertical direction, for a total o f , 18 microns
Tr. 407:3-11 (Qu); CX-550, Table 7.9.2.
When the temperature changes from 25°C to lOO"C, the outermost terminal under the die
in a normal cross-section of the LR387 14 moves relative to the chip .28 microns in the
horizontal direction, and -.64 microns in the vertical direction, for a total of .70 microns
21 1
Tr. 407:3-11 (Qu); CX-550, Table 7.9.2.
When the temperature changes from 25°C to 125"C, the outermost terminal under the die
in a normal cross-section of the LR38714 moves relative to the chip .63 microns in the
horizontal direction, and -.62 microns in the vertical direction, for a total of .88 microns.
Tr. 407:3-11 (Qu); CX-550, Table 7.9.2.
The finite element analysis of the LR38714 shows that the terminals move with respect to
the contacts on the die. Tr. 407:3-11 (Qu); CX-550, Table 7.9.2.
When the temperature changes from 25 "C to 75 O C, the outermost terminal under the die
(point A) in a normal cross-section of the LR38714 moves relative to the nearest contact
on the chip (point C) .35 microns in the horizontal direction, and -.08 microns in the
vertical direction, for a total of .36 microns. Tr. 407:3-11 (Qu); CX-550, Table 7.9.2.
When the temperature changes from 25°C to lOO"C, the outermost terminal under the die
in a normal cross-section of the LR38714 moves relative to the nearest contact on the chip
.81 microns in the horizontal direction, and -1.25 microns in the vertical direction, for a
total of 1.49 microns. Tr. 407:3-11 (Qu); CX-550, Table 7.9.2.
When the temperature changes from 25°C to 125"C, the outermost terminal under the die
in a normal cross-section of the LR38714 moves relative to the nearest contact on the chip
1.33 microns in the horizontal direction, and -1.40 microns in the vertical direction, for a
total of 1.93 microns. Tr. 407:3-11 (Qu); CX-550, Table 7.9.2.
The following table, from CX-550, summarizes the movement between the terminals and
the chip, and the movement between the terminals and the contacts on the chip, for a
normal cross-section of the LR3 87 14:
521.
522.
523,
524.
525.
526.
212
Table 7.9.2 Displacements between points A and B and points A and C at various temperatures for LR38714.
Temp.
("C)
-40 0
25 75 100 125
527.
528.
529.
530.
Disp. Between A and B (pm) Disp. Between A and C (pm)
U v total U v total -0. I4 0.25 0.29 -0.76 0.93 1.20 -0.07 0.10 0.12 -0.30 0.36 0.47 0.00 0.00 0.00 0.00 0.00 0.00 0.18 -0.04 0.18 0.35 -0.08 0.36 0.28 -0.64 0.70 0.8 1 -1.25 1.49 0.63 -0.62 0.88 1.33 -1.40 1.93
Dr. Qu and Pacific Consultants built a two-dimensional diagonal cross-section model of
the LR38714. Tr. 407:22-408:13 (Qu); Tr. 408:14-18.
When the temperature changes from 25 "C to 75 "C, the outermost terminal under the die
in a diagonal cross-section of the LR38714 moves relative to the chip .23 microns in the
horizontal direction, and -.43 microns in the vertical direction, for a total of .49 microns.
Tr. 408:7-13 (Qu); CX-550, Table 7.9.5.
When the temperature changes from 25°C to lOO"C, the outermost terminal under the die
in a diagonal cross-section of the LR38714 moves relative to the chip .36 microns in the
horizontal direction, and -.85 microns in the vertical direction, for a total of .92 microns.
Tr. 408:7-13 (Qu); CX-550, Table 7.9.5.
When the temperature changes from 25 "C to 125 "C, the outermost terminal under the die
in a diagonal cross-section of the LR38714 moves relative to the chip .73 microns in the
horizontal direction, and -.80 microns in the vertical direction, for a total of 1.08 microns.
Tr. 408:7-13 (Qu); CX-550 Table 7.9.5.
213
53 1. The following table, from CX-550, summarizes the movement between the terminals and
the chip for a diagonal cross-section of the LR387 14:
Table 7.9.5 Displacements between points A and B and points A and C at various temperatures for LR3 87 14 from a diagonal cross-section model (outermost solder joint)
Temp. Disp. Between A and B (,urn) Disp. Between A and C (,urn)
1405. Another strategy for reducing strain might be to limit the temperature range to which the
mounted package will be subjected. Tr. 693 :9-694:6 (Engelmaier); CPX-74.
1406. One could also attempt to reduce solder joint strain by increasing the height of the solder
joints, such as through the use of solder columns Tr. 693:9-694:6 (Engelmaier); CPX-54,
CPX-74.
1407. The invention of the ‘977 and ‘326 patents differed dramatically from the prior art in that
the inventors brought the solution of moveable terminals inside the package. Tr. 695.21 -
698: 12 (Engelmaier).
1408. In an e-mail dated September 1997, [
] In another e-mail dated September
1997, [
] Although Mr. Kada attempted to take the position that the e-mail
did not discuss [ 1, he admitted that [
] CX-82C; CX-8OC; Tr. 1317:23-1319:14 (Kada).
1409. In addition, Mr. Kada understood in September 1997 that he needed to show [
Sharp could solve the problem with its CSPs. Tr. 1320: 12-22 (Kada); CX-82C.
1410. During his direct examination, Mr. Kada testified that Sharp did improve its package for
] that
3 47
[ ] by increasing: [ I .
Specifically, Mr. Kada did not mention in his direct examination any improvements to the
1. Tr. 1321:3-13 (Kada).
141 1. However, two documents dated April 1998 indicate that [
3. Tr.
1321 : 14-1324:3 (Kada); CX-74C, CX-75C.
1412. Also, in April 1998 with test results for an improved Sharp CSP structure compared to
Sharp’s former CSP structure. The document emphasizes that [
The document says nothing about any structural change based on [
3. CX-75; Tr. 1324:4-1325:lO
(Kada).
14 13. Sharp has known about Tessera’s packaging technology - including the use of a compliant
die attach layer to improve solder joint reliability - since well before Sharp started
shipping its CSPs in August 1996. Indeed, Tessera first visited Sharp in Japan in March
1995. Sharp evaluated samples of Tessera licensed pBGA packages in June 1995. Sharp
also met with Tessera in July 1995 and April 1996. Mr. Kada also testified in deposition
that he was well aware of Tessera’s compliant die attach technology. RDX-19; CX-33 1 C
(Kada Dep.) Tr. 321:15-322:13, 438:14-439:lS.
1414. From the beginning of the development of its CSPs to the present, Sharp has continually
improved the TCT board level reliability of its CSPs by altering the die attach materials.
348
Tr. 1325:15-1326:2 (Kada); CX-54C, CPX-1OOC.
1415. Thus, Sharp's actions have demonstrated a longtime awareness of, and a conscious effort
toward, the improvement of the reliability of its CSPs by continually improving the die
attach structure to make it more compliant. Tr. 1327: 1-1328:4 (Kada); CX-49, CX-74C,
CX-75C, CX-87; CX-378C.
V. ENFORCEABILITY
1416. The Notice of Allowability in the '266 patent application was mailed January 28, 1992.
c x - 5 .
1417. The claims pending in the '266 patent application were allowed before the Grube patent
issued. CX-5; RX-95.
1418. The Grube patent does not disclose the following limitation of claim 1 of the '266 patent:
"a plurality of terminals disposed in a pattern on said second surface of said interposer."
Tr. 745:4-746:4, 754: 19-755:24 (Engelmaier); RX-95 at 5:26-33, Figures 3-4.
141 9. The Grube patent does not disclose the following limitation of claim 1 of the '266 patent:
"a flexible conductive lead extending between each said terminal and the associated one of
said contacts." Tr. 735:20-737: 13 (Engelmaier).
1420. The Grube patent does not disclose the following limitation of claim 1 of the '266 patent:
"said terminals being moveable relative to the contact ends of said leads so as to
compensate for thermal expansion of said chip." Tr. 1824: 18-21 (Charles); RX-95 at
4133-40, 4:64-5:13.
1421. The Grube patent does not disclose the following limitation of original claim 1 of the '266
349
patent application: "a plurality of terminals disposed in a pattern on said second surface of
said interposer." Tr. 745:4-746:4, 754: 19-755:24 (Engelmaier); RX-95 at 5:26-33, Figures
3-4.
1422. The Grube patent does not disclose the following limitation of original claim 1 of the '266
patent application "a flexible conductive lead extending between each said terminal and
the associated one of said contacts." See Tr. 735:20-737: 13 (Engelmaier).
1423. The Grube patent does not disclose the following limitation of original claim 1 of the '266
patent application "said terminals being moveable relative to the contact ends of said
leads." See Tr. 1824:18-21 (Charles); RX-95 at 4:33-40, 4:64:-5: 13.
1424. The Grube patent does not disclose the following limitation of claims 1 and 22 of the '977
patent "flexible sheetlike element having terminals thereon." See RX-95 at 5:26-33,
Figures 3-4; Tr. 745:4-746:4, 754: 19-755:24 (Engelmaier).
1425. The Grube patent does not disclose the following limitation of claims 1 and 22 of the '977
patent "flexible leads electrically connecting said terminals to said contacts." See Tr.
735:20-737: 13 (Engelmaier).
1426. The Grube patent does not disclose the following limitation of claims 1 and 22 of the '977
patent "said terminals are movable with respect to said chip and said contacts." See Tr.
1824:18-21 (Charles); RX-95 at 4:33-40, 4:64-5:13.
1427. The Grube patent does not disclose the following limitation of claims 1 and 22 of the '977
patent "said flexible leads and said flexible sheetlike element being adapted to deform to
accommodate movement of said terminals with respect to said contacts." See Tr. 1824: 18-
21 (Charles); RX-95 at 4:33-40, 4:64-5:13.
350
1428. The Grube patent does not disclose the following limitation of originally filed claim 1 of
the '977 patent application "a flexible sheetlike element having terminals thereon
electrically connected to said contacts." See RX-95 at 5:26-33, Figures 3-4; Tr. 745:4-
746:4, 754: 19-755:24 (Engelmaier).
1429. The Grube patent does not disclose the following limitation of originally filed claim 1 of
the '977 patent application "said terminals are movable with respect to said chip." See Tr.
1824: 18-21 (Charles); RX-95 at 4:33-40, 4:64-5: 13.
1430. The Grube patent does not disclose the following limitation of originally filed claim 1 of
the '977 patent application "the assembly includes resilient means for permitting
movement of said terminals toward said chip." See Tr. 1824: 18-21 (Charles); RX-95 at
4:33-40, 4:64-5:13.
143 1 . The Grube patent does not disclose the following limitation of originally filed claim 7 of
the '977 patent application "assembling a flexible, sheetlike element having terminals
thereon to a semiconductor chip." See RX-95 at 5:26-33, Figures 3-4; Tr. 745:4-746:4,
754: 19-755:24 (Engelmaier).
1432. The Grube patent does not disclose the following limitation of originally filed claim 7 of
the '977 patent application "connecting terminals on said sheetlike element to contacts on
said chip." See RX-95 at 5:26-33, Figures 3-4; Tr. 745:4-746:4, 754: 19-755:24
(Engelmaier).
1433. The Grube patent does not disclose the following limitation of originally filed claim 7 of
the '977 patent application "the assembly includes resilient means for permitting
movement of said terminals towards said surface of said chip." See Tr. 1824:18-21
351
(Charles); RX-95 at 4:33-40, 4:64-5: 13.
1434. Figure 4 of the invention disclosure form for the '558 patent identifies the conductive
column as "polyimide/siloxane-gold composite joint. 'I It does not identify the connection
as a "lead." RX-777C at 11.
1435. Figure 8 of the invention disclosure form for the '558 patent depicts an actual cross-
section of a direct chip attach (DCA) joint between a solder bumped chip and a substrate.
RX-777C at 15.
1436. The invention disclosure form for the '558 patent consistently refers to the connection
between the chip and the substrate as a "joint." The disclosure never refers to such a
connection as a "lead." See RX-777C at 1 of 15 (problem solved by invention is
"[flluxless low temperature direct chip attach scheme compatible with chip burn-in and
resulting in joint encapsulation"), 4 of 15 ("Due to the need to apply pressure, it is difficult
to control the height of a joint, which in turn can result in an increase of effective thermal
stresses. The joint height can be readily controlled by introducing an interposer, as shown
if Figure 2."), 5 of 15 ("If the properties of the interposer material match those of the
PISI/Au joint (or any other joining material used in conjunction with the interposer
scheme), the interposer ends up performing the fbnction of an encapsulant. As such, it
distributes the stresses along the entire chip/substrate area, effectively lowering stresses on
the joints themselves."), 6 of 15 ("Reduction of the invention to practice is demonstrated
in Figure 8, depicting a [cross-section] of the actual Chiphnterposer to substrate joint. ").
1437. The IBM invention disclosure form does not disclose the following limitation of claim 1
of the '266 patent "a plurality of terminals disposed in a pattern on said second surface of
352
said interposer." See RX-777C; Tr. 745:4-746:4, 754: 19-755:24 (Engelmaier).
1438. The IBM invention disclosure form does not disclose the following limitation of claim 1
of the '266 patent "a flexible conductive lead extending between each said terminal and
the associated one of said contacts." See RX-777C; Tr. 735:20-737: 13 (Engelmaier).
1439. The IBM invention disclosure form does not disclose the following limitation of claim 1
of the '266 patent "said terminals being moveable relative to the contact ends of said leads
so as to compensate for thermal expansion of said chip." See RX-777C; Tr. 1824: 18-21
(Charles).
1440. Dr. Khandros testified that he did not recall becoming aware of the Grube patent when it
issued. RX 332C (Khandros Dep.) Tr. 206:24-207: 10.
1441. Sharp failed to prove that Dr. Khandros was aware of the Grube patent when it issued. See
RX 332C (Khandros Dep.) Tr. 206:24-207: 10.
1442. Sharp failed to prove that Dr. Khandros was aware of the Grube patent during the
pendency of the '266 patent application. See RX 332C (Khandros Dep.) Tr. 206:24-
207: 10.
1443. Sharp failed to prove that Dr. Khandros was aware of the Grube patent during the
pendency of the '977 patent application. See RX 332C (Khandros Dep.) Tr. 206:24-
207: 10.
1444. Sharp failed to prove that Dr. Khandros was aware of the materiality of the Grube patent
during the pendency of the '266 patent application. See RX 332C (Khandros Dep.) Tr.
206:24-207: 10.
1445. Sharp failed to prove that Dr. Khandros was aware of the materiality of the Grube patent
3 53
during the pendency of the '977 patent application. See RX 332C (Khandros Dep.) Tr.
206124-207: 10.
1446. Dr. Khandros testified that he did not recall talking to Mr. Millet about the Grube patent
application RX 332C (Khandros Dep.) Tr. 120:3-12.
1447. Sharp failed to prove that Mr. Millet was aware of the Grube patent during the pendency
of the '266 patent application. See RX 332C (Khandros Dep.) Tr. 120:3-12.
1448. Sharp failed to prove that Mr. Millet was aware of the materiality of the Grube patent
during the pendency of the '266 patent application. See RX 332C (Khandros Dep.) Tr.
120: 3 - 1 2.
1449. Sharp failed to prove that Mr. Millet was aware of the materiality of the Grube patent
during the pendency of the '977 patent application. See RX-95; RX-445; RX-448.
1450. Mr. Millet cited the Grube patent in two different Tessera patents that are unrelated to the
patents-in-suit. These two Tessera patents are U.S. Patent No. 5,808,874 issued to Smith
("Smith") (RX-445) and U.S Patent No. 6,020,220 issued to Gilleo et al. ("Gilleo") (RX-
448).
145 1 . Smith discloses a face-down arrangement that uses liquid, flowable conductive masses to
connect a chip to a printed circuit board substrate. RX-445 at Fig. 4, 2: 12-42.
1452. Gilleo discloses a face-down arrangement that has conductive polymer disposed within the
apertures of an interposer layer. RX-448 at 5:32-37.
1453. Like Grube, both Smith and Gilleo disclose the use of conductive material in a face-down
arrangement. In contrast, the claimed inventions use leads - not conductive polymer paste
- to connect chip contacts to terminals on a package substrate. See RX-445 at Fig. 4,
3 54
2:12-42; RX-448 at 5:32-37; RX-95 at 1:11-18, 4:61-5:1, 5:59-66.
1454. In a February 21, 1991 memorandum prepared by Roger Borovoy, Mr. Borovoy
memorialized a conversation he had with Igor Khandros. CX-352C at 2-4.
1455. In the Borovoy memorandum, Mr. Borovoy wrote that Dr. Khandros said that IST had
absolutely no plans for using IBM’s proprietary joining material technology. Instead, IST
planned to employ surface mount technology using commercially available solder pastes
CX-352C at 2.
1456. In the Borovoy memorandum, Mr. Borovoy wrote that Dr. Khandros said that applications
of IST’s chip attach techniques do not require any joining materials that are not
commercially available. CX-3 52C at 2-3.
VT. DOMESTIC INDUSTRY
1457. On January 24, 200 1 , the Administrative Law Judge issued Order 13 : INITIAL
DETERMINATION Granting Complainant Tessera’s Motion for Summary Determination
of Domestic Industry, in which he found that Tessera established a domestic industry
protected by the patents-in-suit as required by 19 U.S.C. 5 1337. Order No. 13 (Jan. 24,
2001).
1458. On February 26, 200 1, the U. S. International Trade Commission determined not to review
the initial determination of the Administrative Law Judge granting summary determination
that the domestic industry requirement of section 337 of the Tariff Act of 1930 is satisfied.
Notice of Commission Determination Not to Review Initial Determination (Feb. 26,
200 1).
355
CONCLUSIONS OF LAW
1. The Commission has personal jurisdiction over the parties and subject matter
jurisdiction over this investigation. See Op. at 2-3
2. Sharp has imported accused products, and has sold accused products after importation
See Op. Section 11; FF, Sections I1 and IV G.
3. The accused Sharp products directly infringe the asserted claims of the ‘977 patent
See Op. at 63-83, 88.
4. Sharp contributorily infringes, and induces infringement of, claim 22 of the ‘977
patent. See Op. at 83-84.
5 . The accused Sharp products directly infringe the asserted claims of the ‘326 patent.
See Op. at 84-88.
6. It has not been established by clear and convincing evidence that the asserted claims
are invalid for indefiniteness under 35 U.S.C. 8 112, r[ 2. See Op. 91.
7. It has not been established by clear and convincing evidence that either the ‘977 patent
or ‘326 patent is invalid due to the prior art. See, e.g., Op. at 92 (the Lin patent), 104-106 (the
OMPAC article), 106-108 (the Mu patent), 108-109 (the Hoppe patent), 109-1 11 (the Grube
patent). s
8. It has not been established that either the ‘977 patent or the ‘326 patent is
unenforceable due to inequitable conduct. See, e.g., Op. 11 1-1 13
9. A domestic industry exists, as required by section 337. See Op. at 113-1 14
356
INITIAL DETERMINATION AND ORDER
Based on the foregoing opinion, findings of fact, conclusions of law, the evidence, and the
record as a whole, and having considered all pleadings and arguments, including the proposed
findings of fact and conclusions of law, it is the Administrative Law Judge's INITIAL
DETERMlNATION ("ID") that a violation of section 337 of the Tariff Act of 1930, as amended,
exists in the importation into the United States, sale for importation, or the sale within the United
States after importation of certain semiconductor chips with minimized package size and products
containing same by reason of infringement of claims 6 and 22 of U. S. Letters Patent 5,679,977
and claims 1 , 3 and 11 of U.S. Letters Patent 5,852,326.
The Administrative Law Judge hereby CERTIFIES to the Commission this ID, together
with the record of the hearing in this investigation consisting of the following:
1, The transcript of the hearing, with appropriate corrections as may hereafter be
ordered by the Administrative Law Judge; and further,
2. The exhibits accepted into evidence in this investigation as listed in the attached
exhibit lists.
In accordance with 19 C.F.R. $ 210.39(c), all material found to be confidential by the
Administrative Law Judge under 19 C.F.R. tj 210.5 is to be given in cnniera treatment.
The Secretary shall serve a public version of this ID upon all parties of record and the
confidential version upon counsel who are signatories to the Protective Order (Order No. I ) issued
by the Administrative Law Judge in this investigation, and upon the Commission investigative
357
attorney. To expedite service of the public version, counsel are hereby ORDERED to serve on the
Administrative Law Judge by no later than October 5, 2001, a copy of this ID with those sections
considered by the party to be confidential bracketed in red, accompanied by a list indicating each
page on which such a bracket is found. . Pursuant to 19 C.F.R. 5 210.42(h), this ID shall become the determination of the
Commission unless a party files a petition for review pursuant to 4 210.43(a) or the Commission,
pursuant to 9; 210.44, orders on its own motion a review of the ID or certain issues herein.
Sidney Harrif Administrative Law Judge
Issued: September 25, 2001
f
358
CERTAIN SEMICONDUCTOR CHIPS WITH MINIMIZED CHIP PACKAGE SIZE AND PRODUCTS CONTAINING SAME
INV. NO. 337-TA-432
CERTlFICATE OF SERVICE
I, Donna R. Koehnke, hereby certifj that the attached Initial Determination was served upon Benjamin D. M. Wood, Esq. and upon the following parties via first class mail, and air mail where necessary, on November 5 ,2001.
Donna R. Koehnke, Secrefary U. S. lnternational Trade Commission 500 E Street, S W. Washington, D.C. 20436
FOR COMPLAINANT TESSERA, INC.:
Michael A. Ladra, Esq. James C. Otteson, Esq. Lisa G. McFall, Esq. Jonathan G. Chance, Esq. Wilson Sonsini Goodrich & Rosati 650 Page Mill Road Palo Alto, California 94304- 1050
Thomas L. Jarvis, Esq. Stephen L. Peterson, Esq. Smith R. Brittingham, Esq. Finnegan, Henderson, Farabow,
Michael A. O’Shea, Esq. Frank C. Cimino, Jr., Esq. George Kleinfeld, Esq. Clifford Chance Rogers & Wells LLP 2001 K Street, N.W. Washington, D.C. 20006-1 001
John E. Kidd, Esq. Clifford Chance Rogers & Wells LLP 200 Park Avenue New York, New York 10 166-0 153
PUBLIC MAILING LIST
Donna Wirt
1 150 18th Street, NW Suite 600 Washington, D.C. 20036
LEXIS - NEXIS
Ronnita Green West Group 901 Fifteenth Street, NW Suite 230 Washington, D.C. 20005
OFFICE OF THE SECRETARY
UNITED STATES INTERNATIONAL TRADE COMMISSION
November 5, 2001
Joanne St um p , Chief Intellectual Property Rights Branch United States Customs Service Ronald Reagan Building, 3rd Floor 1300 Pennsylvania Avenue, N.W. Washington, D.C. 20229
Dear Ms. Stump:
A Commission administrative law judge has issued an initial determination ( ID") in Inv. No. 33 7-TA-43 2, Certain Semiconductors Chips with Minimized Chip Package Size and Products Containing Same.
A copy of the ID will be provided to you upon request, and written comments may be filed thereon. If you would like to have a copy of the ID, please contact Marilyn R. Abbott, Deputy Secretary at (202) 205-1 802.
If you have questions about the investigation, please telephone the Commission advisory attorney Michael Diehl, Esq., at (202) 205-3095.
Donna R. Koehnke Secretary
OFFICE OF THE SECRETARY
~
UNITED STATES INTERNATIONAL TRADE COMMISSION
Ch rl
November 5, 2001
s S. Stark, Esq. U. S. Department of Justice Antitrust Division Pennsylvania Avenue & 10th Street, N.W. Washington, D.C. 20530
Dear Mr. Stark:
A Commission administrative law judge has issued an initial deter m i nation ( I' I D I' ) i n I nv . N 0.3 3 7 -T A- 43 2, C e rt a i n S em icon d u c t o rs Chips with Minimized Chip Package Size and Products Containing Same.
A copy of the ID will be provided to you upon request, and written comments may be filed thereon. If you would like to have a copy of the ID, please contact Marilyn Abbott, Deputy Secretary, a t (202) 205-1 802.
If you have questions about the investigation, please telephone the Commission advisory attorney Michael Diehl, Esq., at (202) 205-3095.
Donna R. Koehnke Secretary
OFFICE OF THE SECRETARY
UNITED STATES INTERNATIONAL TRADE COMMISSION
WASHINGTON. D.C. 20436
November 5, 2001
Randy Tritell, Esq. Director for Int'l Antitrust Federal Trade Commission Room 380 Pennsylvania Avenue & 6th Street, N.W. Washington, D.C. 20580
Dear Mr. Triteil:
A Commission administrative law judge has issued an initial determination ("ID") in Inv. No.337-TA-432, Certain Semiconductors Chips with Minimized Chip Package Size and Products Containing Same.
A copy of the ID will be provided to you upon request, and written comments may be filed thereon. If you would like to have a copy of the ID, please contact Marilyn R. Abbott, Deputy Secretary, at (202) 205-1 802.
If you have questions about the investigation, please telephone the Commission advisory attorney Michael Diehl, Esq., at (202) 205-3095.
Donna R. Koehnke Secretary
OFFICE OF THE SECRETARY
~ ~
UNITED STATES INTERNATIONAL TRADE COMMISSION
LVASHINGTO” D.C. 20436
November 5, 2001
Richard Lambert, Esq. Department of Health & Human Services Office of General Counsel National Institute of Health Building 31, Room 2850 9000 Rockville Pike Bethesda, Maryland 20892-21 11
Dear Mr. Lambert:
A Commission administrative law judge has issued an initial determination (“ID”) in Inv. No.337-TA-432, Certain Semiconductors Chips with Minimized Chip Package Size and Products Containing Same.
A copy of the ID will be provided to you upon request, and written comments may be filed thereon. If you would like to have a copy of the ID, please contact Marilyn R. Abbott, Deputy Secretary, at (202) 205-1 802.
If you have questions about the investigation, please telephone the Commission advisory attorney Michael Diehl, Esq., a t (202) 205-3095.
