Paper Entered: October 11, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

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1 Paper Entered: October 11, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD AMKOR TECHNOLOGY, INC. Petitioner v. TESSERA, INC. Patent Owner Case IPR Patent 6,046,076 Before KEVIN F. TURNER, JUSTIN T. ARBES, and CARL M. DeFRANCO, Administrative Patent Judges. TURNER, Administrative Patent Judge. DECISION Institution of Inter Partes Review 37 C.F.R

2 I. INTRODUCTION Amkor Technology, Inc. ( Amkor ) filed a Petition ( Pet., Paper 1) requesting inter partes review of claims 1-8, 10-13, 17-19, and of U.S. ( the '076 Patent ). Patent Owner Tessera, Inc. ( Tessera ) filed a Preliminary Response thereto ( Prelim. Resp., Paper 8). We have jurisdiction under 35 U.S.C In addition, we note that the parties were given leave (Paper 10) to file a Reply ( Reply, Paper 11) and Sur-Reply ( Sur-Reply, Paper 18) on the issue of Amkor s standing to file a petition seeking inter partes review. We also note that we ruled previously on Amkor s Motion to Correct a Clerical Mistake in the Petition (Paper 12) in our Decision (Paper 32) mailed August 29, The standard for instituting an inter partes review is set forth in 35 U.S.C. 314(a), which provides: THRESHOLD The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition. We are persuaded that the information presented in the Petition demonstrates that there is a reasonable likelihood that Amkor will prevail in challenging claims 1-8, 10-13, 18, 19, 24, and 25 as unpatentable under 35 U.S.C. 102 and 103. Pursuant to 35 U.S.C. 314, we hereby authorize an inter partes review to be instituted as to claims 1-8, 10-13, 18, 19, 24, and 25 of the '076 Patent. 2

3 A. Related Matters Amkor indicates, Pet. 1, that a complaint alleging infringement of the '076 Patent was filed July 6, 2012, stylized Tessera, Inc. v. Amkor Technology, Inc., Civil Action No. 1:12-cv SLR, in the U.S. District Court for the District of Delaware. See Ex Tessera discloses, Prelim. Resp. 2-5, that the parties entered into a license agreement relating to certain patents of Tessera in A dispute arose between the parties as to that agreement, resulting in a first arbitration ( Amkor I ). That arbitration did not involve the '076 Patent. Prelim. Resp. 5. Amkor indicates, Pet. 2, that the '076 Patent was later the subject of a second arbitration proceeding, Amkor Technologies, Inc. v. Tessera, Inc., International Chamber of Commerce (ICC) International Court of Arbitration, Case No /VRO ( Amkor II ). We note that the '076 Patent stems from U.S. Patent Application No. 08/975,590, filed November 20, 1997, and claims priority as a continuationin-part of U.S. Patent Application No. 08/842,313, filed April 24, 1997, where that latter application was a divisional application of U.S. Patent Application No. 08/365,699, filed December 29, 1994, now U.S. Patent No. 5,659,952. The '076 Patent also claims the benefit of U.S. Provisional Application No. 60/046,932, filed May 16, Based on Amkor s analysis, Pet. 5-7, the earliest effective filing date of the '076 Patent is May 16, 1997, which Tessera does not dispute in its preliminary response. See Prelim. Resp , 50-53,

4 B. The Invention of the '076 Patent (Ex. 1007) The invention of the '076 Patent relates to the encapsulation of a semiconductor chip and a mounting substrate under a subatmospheric pressure to minimize gas entrapment in the encapsulant. Ex. 1007, Abs. Prior to curing, a higher pressure is applied causing the collapse of any voids in the encapsulant. Id. Figure 1 of the '076 Patent illustrates an apparatus, according to one embodiment, which may be used in the methods claimed in the '076 Patent. The apparatus depicted in Figure 1 is reproduced below with numerical features labeled: 110 film 120 frame 130 stand-offs 140 chip 150 leads 160 chip contacts 170 terminals 200 encapsulant 210 dispensing needle 219 vacuum pump 220 vacuum chamber 223 passages 225 base 227 vacuum source Fig. 1 illustrates an encapsulating apparatus The Specification of the '076 Patent discloses that a film (110) may be disposed on a frame (120), with chips (140) attached thereto through the use of stand-offs (130). Ex. 1007, 5:3-14. Thereafter, electrically conductive 4

5 leads (150) are bonded to respective chip contacts (160) to create connections to the terminals (170). Id. at 5: The assembly is placed in a vacuum chamber (220), having vacuum applied through a vacuum pump (219), where encapsulant (200) is applied through a dispensing needle (210) around the periphery of the chip (140). Id. at 5: Additionally, to ensure that the parts remain properly aligned, a vacuum also can be applied to the substrate through passages (223) to a vacuum source (227) in the base (225) of the vacuum chamber (220). Id. at 5: C. Challenged Claims Amkor challenges independent claims 1, 22, and 24, as well as dependent claims 2-8, 10-13, 17-19, 23, and 25, in its Petition. Claim 1 is reproduced below: 1. A method of encapsulating a microelectronic assembly comprising the steps of applying a flowable encapsulant to the assembly while maintaining the assembly under a subatmospheric pressure, then bringing the assembly to a higher pressure above said subatmospheric pressure after completion of said encapsulant-applying step and holding the assembly at said higher pressure, and curing said encapsulant after bringing the assembly to said higher pressure. 5

6 D. Prior Art Relied Upon Amkor relies upon the following prior art references: Oldham US 4,681,718 Jul. 21, 1987 EX 1003 Nakano JP S Oct. 7, 1988 EX 1001 Kaburagi JP H Aug. 21, 1992 EX 1002 Kovac WO 96/09746 Mar. 28, 1996 EX 1004 Osada UK A Aug. 19, 1992 EX 1005 Hwang EP A2 Jan. 10, 1996 EX 1006 E. Alleged Grounds of Unpatentability Amkor seeks to have canceled claims 1-8, 10-13, 17-19, and of the '076 Patent based on the following alleged grounds of unpatentability: 2 Reference(s) Basis Claims challenged Nakano , 6, 7, 10-13, and 19 Nakano and Oldham and 5 Nakano and Kovac 103 8, 10, and 18 1 We refer to Nakano and Kaburagi as the English translations of the original references. Amkor provided affidavits attesting to the accuracy of the translations. See Exs. 1001, 1002; 37 C.F.R (b). 2 Amkor asserts in many of its alleged grounds of unpatentability that particular claims are unpatentable under 35 U.S.C. 102 or, in the alternative under 35 U.S.C. 103, Pet. 9, 33, 45, 57, but does not provide any of the necessary analysis for obviousness for those grounds recited in the alternative, save conclusory statements, such as the asserted claims would have been obvious in light of the base reference and the knowledge of one skilled in the art, Pet. 50. See also Pet As such, we interpret the grounds indicated as being proffered alternatively under 102 and 103 as being asserted under 35 U.S.C. 102 only. 6

7 Reference(s) Basis Claims challenged Nakano and Hwang and Nakano and Osada , 6, 7, 10-13, and 19 3 Nakano, Osada, and Oldham and 5 Nakano, Osada, and Kovac 103 8, 10, and 18 Nakano, Osada, and Hwang and Kaburagi Kaburagi and Oldham and 5 Kaburagi and Kovac , 10-13, and 18 Kaburagi, Kovac, and Hwang Kaburagi and Nakano Oldham Oldham and Kovac , 10-13, and 18 Oldham, Kovac, and Hwang Oldham and Nakano Amkor in its Petition also asserts that claim 17 is unpatentable over Nakano and Osada, but provides no substantive analysis as to the asserted ground for claim 17. See Pet. 32. Therefore, we take the ground to be asserted against claims 1-3, 6, 7, 10-13, and 19 only. See 37 C.F.R (b)(4) (a petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon ). 4 Amkor in its Petition asserts that claims are anticipated by Oldham, Pet. 45, but provides no substantive analysis as to the asserted ground for claims Therefore, we take the ground to be asserted against claims 1-5 only. See 37 C.F.R (b)(4). 7

8 Reference(s) Basis Claims challenged Hwang II. ANALYSIS A. Threshold Standing Issues i) One-Year Bar Under 35 U.S.C. 315(b) The relevant portion of 35 U.S.C. 315(b) 5 provides: PATENT OWNER S ACTION An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner... is served with a complaint alleging infringement of the patent. (Emphasis added.) Tessera argues that Amkor was served with a complaint alleging infringement of the '076 Patent on November 2, 2009, Prelim. Resp. 5, and, therefore, is barred statutorily from seeking inter partes review, Prelim. Resp. 10. According to Tessera, a complaint, as specified in 35 U.S.C. 315(b), need not be part of a civil action but can be based on an arbitration. Prelim. Resp Tessera also argues that a complaint can be a counterclaim. Prelim. Resp Amkor argues that the November 2, 2009 document (Ex. 2012), relied upon by Tessera, was a counterclaim in 5 The Leahy-Smith America Invents Act ( AIA ) was enacted into law (Pub. L , 125 Stat. 284 (2011)) on September 16, The legislative history of 35 U.S.C. 315(b) shows that the primary concern related to the one-year time period was to provide defendants sufficient time to analyze fully the patent claims, but not to create an open-ended process. See 157 Cong. Rec. S5429 (daily ed. Sept. 8, 2011). 8

9 a breach of contract arbitration, not a complaint that begins the one-year time period recited in 315(b), whereas Tessera counters that a complaint need not be one initiating an action. See Reply 1-5; Sur-Reply 4. We determine that Tessera has failed to provide sufficient evidence that Amkor was served with a complaint alleging infringement of the '076 Patent more than one year before Amkor filed its Petition in this proceeding, per 315(b). The Amkor II arbitration began with a request for arbitration by Amkor in which Amkor sought a declaratory judgment that it was in compliance with the parties license agreement. See Ex The November 2, 2009 document (Ex. 2012), relied upon by Tessera as an alleged complaint, was filed in response to Amkor s request and is titled Respondent Tessera, Inc. s Answer to Claimant Amkor Technology, Inc. s Request for Arbitration and Counterclaims. Among other things, Tessera answered Amkor s allegations and accused Amkor of breaching the license agreement and continuing to infringe Tessera s Patents. Id. at On the instant record, we conclude that Tessera has not provided sufficient evidence that the November 2, 2009 document was served on Amkor per 315(b). 6 6 Because Tessera has not shown that the document was served, we need not, and do not, decide the question of whether Tessera s arbitral counterclaim in the November 2, 2009 document is a complaint per 315(b). Nor do we decide the question of whether Tessera s arbitral counterclaim alleg[es] infringement of the [ 076] patent, as required by 315(b). 9

10 Tessera argues that Tessera responded with a complaint and cites the November 2, 2009 document (Ex. 2012) itself, Prelim. Resp. 5, but does not point to evidence in the record showing that the document was served. While Amkor certainly responded to the November 2, 2009 document, Ex at 2; Prelim. Resp. 28 n.6, the mere existence of a response does not prove that service of the original document was accomplished. See Motorola Mobility LLC v. Michael Arnouse (IPR Paper 20 at 3) ( We do not adopt [patent owner] Arnouse s statutory construction that a mere receipt of a complaint initiates the one-year time period. ). Further, Tessera alleges that the ICC Rules set procedures for the service of pleadings and time limits on responses to pleadings that are analogous to the Federal Rules of Civil Procedure, Prelim. Resp. 23, and that Tessera followed the ICC arbitration service rules, Sur-Reply 2. However, Tessera has not pointed to evidence in the record proving that the document in question was served under those procedures. See, e.g., Ex. 2005, Article 5 (ICC Rules pertaining to Answer to the Request and Counterclaims ). Under the circumstances, and even assuming (without deciding) that Tessera is correct that a complaint can be in an arbitration proceeding rather than just a federal district court civil action, we conclude that Tessera has not provided sufficient evidence that the November 2, 2009 document was served under 315. Thus, we are not persuaded that Amkor s Petition is barred under 315(b). 10

11 ii) Preclusion and Foreclosure by Amkor II Tessera makes related arguments, alleging that the issues decided by the Tribunal in Amkor II are preclusive under the Patent Act, Prelim. Resp , and alleging that Amkor is foreclosed from seeking inter partes review pursuant to 35 U.S.C We address these arguments in turn below. Tessera argues that the allegations of infringement and validity adjudicated in the breach of contract action, the Amkor II arbitration, have preclusive effect for purposes of this proceeding. Prelim. Resp. 19. Tessera cites MGA, Inc. v. General Motors Corp., 827 F.2d 729 (Fed. Cir. 1987), cert. denied, 484 U.S (1988), for the proposition that a state court judgment, including a patent infringement determination in consideration of a license agreement dispute, precluded relitigation of the issue of whether the accused machines infringed the claims of the patent. Prelim. Resp In invoking MGA, Tessera argues that the Tribunal in Amkor II considered infringement and validity allegations, which were adjudicated in a final and binding manner, and that the Board is precluded from considering them separately in this proceeding. We do not agree with Tessera s argument. First, we note that an inter partes review is concerned with unpatentability of claims, see 35 U.S.C. 316(e), not with validity of claims. Second, the statute acknowledges that inter partes review proceedings can occur before, or after, or concurrent with other proceedings or actions, depending on the specific circumstances. See 35 U.S.C

12 Third, the collateral estoppel that may be applied to subsequent suits in federal courts between the parties does not apply necessarily to the U.S. Patent and Trademark Office ( PTO ). The Federal Circuit, our reviewing court in inter partes review proceedings, has stated that a court s decision upholding a patent s validity is not ordinarily binding on another challenge to the patent s validity, in either the courts or the PTO. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1429 n.3 (Fed. Cir. 1988) (internal citations omitted). Additionally, [t]he doctrine of collateral estoppel does not prevent the PTO from completing the reexamination, as the [c]ourts do not find patents valid, only that the patent challenger did not carry the burden of establishing invalidity in the particular case before the court. Id. As such, we conclude that the instant inter partes review is not precluded by the Tribunal s decision in Amkor II, which found the '076 Patent not invalid. See Ex Tessera also argues that 35 U.S.C. 294(c) provides that the arbitration decision is final or binding and can be altered by a collateral action in another forum only if the parties expressly agree. Prelim. Resp U.S.C. 294(c) provides: An award by an arbitrator shall be final and binding between the parties to the arbitration but shall have no force or effect on any other person. The parties to an arbitration may agree that in the event a patent which is the subject matter of an award is subsequently determined to be invalid or unenforceable in a judgment rendered by a court of competent jurisdiction from which no appeal can or has been taken, such award may be modified by any court of competent jurisdiction upon application by any party to the arbitration. Any such 12

13 modification shall govern the rights and obligations between such parties from the date of such modification. According to Tessera, [a]s between Amkor and Tessera, there can only be one trial on the question of the validity of the 076 patent, and that trial has occurred. Prelim. Resp. 32. Tessera also argues that the inter partes review processes did not novate Section 294 or the overwhelming body of case law holding that a contract to arbitrate forecloses recourse to other adjudicatory bodies to resolve a dispute addressed in the arbitration. Prelim. Resp. 31. Amkor responds that both of the parties arbitrations involved a breach of contract allegation (i.e., breach of the parties license agreement) and did not finally adjudicate issues of infringement and validity. Reply 5. Amkor quotes the Tribunal in Amkor II as providing that the Tribunal s consideration of infringement does not turn a cause of action for breach of contract into a cause of action for patent infringement. Reply 6; Ex Tessera responds that all arbitrations under 294 occur pursuant to a written contract, Sur-Reply 4, and that the Tribunal did rule on Amkor s assertion of invalidity as to the '076 Patent, Sur-Reply 5. The relevant portion of 35 U.S.C. 294(c) provides that [a]n award by an arbitrator shall be final and binding between the parties to the arbitration. Tessera argues that Amkor waived its right to any alternative recourse for issues adjudicated by the Tribunal. Prelim. Resp. 29. However, we agree with Amkor that any such binding effect would occur with respect to a challenge in the actual awards of the Tribunal. We are persuaded that 13

14 the dispute addressed by the arbitrations was a breach of contract. In other words, if Amkor sought to reverse the Tribunal s awards with respect to the breach of contract (Ex. 2029, 2014), it would be bound by those awards. We do not conclude, however, that all issues involved would likewise limit Amkor from seeking redress. In addition, the Notice of Arbitration Award (Ex. 2029), referred to by Tessera, Sur-Reply 5, addresses whether Amkor s accused products infringe claims of the '076 Patent, 325, 326, but not invalidity of the claims of the '076 Patent. Further, while the Partial Award No. 3 (Ex. 2014) does provide that Amkor has not carried its burden to prove the '076 invalid, 229, as discussed above, such a finding is not that the '076 Patent is valid, but that Amkor did not carry its burden. We are not persuaded that the Amkor II arbitration resulted in a final and binding judgment of validity that would foreclose Amkor from requesting inter partes review of the '076 Patent. B. Claim Construction As a first step in our analysis for determining whether to institute a trial, we determine the meaning of the claims. In an inter partes review, claim terms in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R (b). Under the broadest reasonable construction standard, claims are to be given their broadest reasonable interpretation consistent with the specification, and the claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art. 14

15 In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). This means that the words of the claim will be given their plain meaning unless the plain meaning is inconsistent with the specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). In this regard, an inventor is entitled to be his or her own lexicographer of patent claim terms by providing a definition of the term in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Amkor argues that all claims should be interpreted according to their plain and ordinary meanings, with the exception of three specific claim terms: a porous layer (claim 7), an equilibrium state (claim 11), and applying said encapsulant along a plurality of edges seriatim (claim 12). Pet Tessera argues that the constructions proposed are improper and not reasonable in light of the totality of the written description. Prelim. Resp. 35. We consider each disputed term in turn below. i) a porous layer Amkor proposes that a porous layer be defined as the gap between the chip 140 and the film 110, made porous by the presence of compliant stand-offs 130, solder balls within the space in the gap, or a combination of the two. Pet. 7. Tessera argues that such a definition conflicts with claim 7, which provides that the porous layer is disposed in said gap, and which requires that a porous layer and the gap be separate elements. Prelim. Resp. 36. We agree with Tessera. We also agree, id., that compliant standoffs and solder balls are optional, and should not be included in the broadest, 15

16 reasonable definition of the claim term. However, we find Tessera s proposed definition, Prelim. Resp. 37, to be too narrow. Looking to the Specification of the '076 Patent, we find the disclosure that [t]he assembly may include a porous layer disposed in the gap. In this case, the encapsulant flows into the porous layer while the assembly is under the subatmospheric pressure. Ex at 3:9-12. Claim 7 includes virtually identical language. Given the Specification s disclosure and the plain language of the claim, we construe a porous layer to mean a layer capable of receiving encapsulant. ii) an equilibrium state Amkor proposes that an equilibrium state be defined as when the encapsulant has stopped flowing. Pet. 7. Tessera disputes this proposed interpretation, arguing that the Specification describes the flow of the encapsulant substantially ceas[ing], Prelim. Resp. 37, and that the language of claim 11 does not require encapsulant flow to be stopped. Id. We agree with Tessera and conclude that the proper construction of an equilibrium state should be interpreted as when a steady state has occurred, per the disclosure of the Specification. Ex at 6:7-8, 9:23-24; Prelim. Resp. 38. iii) applying said encapsulant along a plurality of edges seriatim Amkor proposes that the step of claim 12, namely applying said encapsulant along a plurality of edges seriatim, should be interpreted as applying encapsulant to two edges seriatim (in series). Pet. 8. Tessera argues that the interpretation is incorrect as the term plurality refers to two 16

17 or more items, Prelim. Resp. 38, and that Amkor s definition limits the claim to applying encapsulant to only two edges. Id. We generally agree. We adopt a construction of applying the encapsulant along at least two edges one after another. We adopt at least two edges, instead of two or more edges, Prelim. Resp. 38, to emphasize that only two edges need to have encapsulant applied, seriatim, to meet the requirements of claim 12. iv) microelectronic assembly While the parties do not apply explicitly a meaning to the claim term microelectronic assembly, there is a dispute about its scope and meaning. See Pet. 46; Prelim. Resp. 54. Amkor indicates that component parts of a microelectronic assembly, such as capacitors, diode arrays, resistor networks, etc., are themselves microelectronic assemblies. Pet Tessera argues that Amkor has failed to provide substantiated evidence to support that one of ordinary skill in the art would have regarded such components as microelectronic assemblies. Prelim. Resp. 54. As such, we construe microelectronic assembly to resolve this apparent dispute. The '076 Patent provides that [t]he microelectronic assembly may include a microelectronic element such as a semiconductor chip overlying a substrate but spaced from the substrate so that the microelectronic element and substrate define a gap therebetween. Ex at 3:1-4. That recitation makes clear that a semiconductor chip may be a microelectronic element, but that the term microelectronic element has a broader scope than just a semiconductor chip. A dictionary definition of microelectronics is [t]he 17

18 branch of electronics that deals with miniature components. 7 Thus, we construe microelectronic assembly as a grouping of miniature electronic components. v) encapsulant While the parties do not apply explicitly a meaning to the claim term encapsulant, as discussed below, we find it necessary to define the term as a part of claim construction. The '076 Patent provides that [e]xamples of such encapsulants can be found in the aforementioned U.S. Patent No. 5,659,952. Ex at 1: That patent discloses, in part, that [t]he compliant filler 170 may be comprised of an elastomer, a gel or a compliant thixotropic material so long as the elastomer, gel or material retains its compliancy. One example of such a filler is Dow Corning elastomer Q Ex at 6: The '076 Patent also distinguishes between encapsulant and materials other than encapsulants such as a die attach adhesive or solders. Ex at 13: As such, these materials other than encapsulants cannot be covered by the claim term encapsulants, even if they are formed of a same or similar material, such as, for example, an elastomer, used in a different function. Thus, we construe claim 17, reciting directing infrared radiation through said microelectronic element into said encapsulant in the gap, as requiring radiation to be directed at an encapsulant therein, and not 7 See American Heritage Dictionary of the English Language, 5 th Ed. (2011), at (Ex. 3001). 18

19 to a die attach adhesive therebetween, although the die attach adhesive may be cured by the radiation applied. C. Grounds of Unpatentability Relying on Oldham i) Claims 1-5 Amkor asserts that claims 1-5 of the '076 Patent are anticipated by Oldham under 35 U.S.C. 102(b). Oldham is directed to the fabrication of encapsulated articles. Amkor contends, with respect to claim 1, that Oldham encapsulates assemblies of components with synthetic resin materials, where the resin may be introduced under vacuum. Pet Amkor asserts that components in Oldham constitute parts of a microelectronic assembly and are themselves microelectronic assemblies. Pet. 46. Thereafter, Oldham increases the pressure in the mold to burst any remaining bubbles and cause the filler to compact and the resin to encapsulate the filler. Ex at 8:23-25; Pet Under the increased pressure, the mold temperature is maintained at the temperature at which the thermosetting resin is curable... until the resin/filler mixture has sufficiently cured. Ex at 8:41-47; Pet. 47. With respect to claims 2 and 3, Amkor contends that Oldham teaches increasing pressure in the mold to burst any remaining bubbles, Ex at 8:23; Pet , and that the higher pressure can be atmospheric pressure ( The vacuum is then released to allow for collapse of any bubbles. ). Ex at 8:15-16; Pet. 48. With respect to claims 4 and 5, Amkor contends that Oldham provides for a superatmospheric pressure to be applied, Pet. 19

20 48-49, and that Oldham teaches that the release of the vacuum brings the assembly to atmospheric pressure before the curing is complete. Pet. 49. We note that page 49 of the Petition initially quoted the wrong language for claim 5, which has been corrected, see Paper 32, but Amkor s citations to Oldham are sufficient to meet the limitations of claim 5. Tessera argues that two elements of claims 1, 2, and 4 are not taught by Oldham. Prelim. Resp First, Tessera argues that Amkor has failed to provide substantiated evidence to support that one of ordinary skill in the art would have regarded components recited in Oldham, namely magnetic coils, capacitors, diode arrays, transformers, stator generators, and resistor networks, Ex at 2:1-5, as microelectronic assemblies. Prelim. Resp. 54. We note that Oldham addresses components within the assembly, Ex at 1:68-2:2:1, so the nature of the components dictates whether they would fall within the scope of a microelectronic assembly, as recited in claim 1. Further to our claim construction discussed above, we are persuaded that the components listed namely capacitors, diode arrays, resistor networks, etc. would fall within the scope of miniature components, according to one of ordinary skill in the art. As such, we are not persuaded that Oldham fails to teach all of the elements of claims 1, 2, and 4 on such a basis. Second, Tessera argues that Oldham fails to disclose the step of applying a flowable encapsulant to the assembly while maintaining the assembly under a subatmospheric pressure. Prelim. Resp. 54. Tessera acknowledges that the resin may be introduced under vacuum, but insists 20

21 that Oldham does not disclose that the electrical component inside the mold cavity is maintained under a subatmospheric pressure. Prelim. Resp Tessera points to Figure 1 and supporting parts of Oldham s specification as teaching that vacuum is applied after and not while the resin is applied. We are not persuaded by Tessera s argument. Oldham discloses that [t]he resin may be introduced under vacuum, such as less than about one millimeter of mercury, at atmospheric pressure, or under superatmospheric pressure. Ex at 8:1-4. Logic dictates that if the resin was introduced at superatmospheric pressure, the mold would not have vacuum applied during application, as the superatmospheric pressure would defeat the purpose of the vacuum. The general teaching of applying vacuum to the mold, Ex at Fig. 1, would be presented for all types of resin introductions. On this record, we are not persuaded that such a teaching negates the express disclosure of Oldham that the resin may be introduced under vacuum. Id. If there were a way of introducing the resin under vacuum without having the area of application be under some type of vacuum, Tessera has not provided such a counter-formulation. As such, we are not persuaded that Oldham fails to teach all of the elements of claims 1, 2, and 4 on such a basis. With respect to claim 3, Tessera argues that Oldham teaches that the vacuum is released, but that a passive vacuum stage is created, which is not atmospheric pressure, as provided for in claim 3. Prelim. Resp. 55. Here, we do not see how Oldham can disclose that [i]f a vacuum bag is used, the bag is vented to release the vacuum, Ex at 8:16-17, but not 21

22 be vented to atmospheric pressure as Tessera suggests. Oldham makes clear that [t]he resin may be introduced under vacuum,... at atmospheric pressure, or under superatmospheric pressure. Ex at 8:1-4. If the venting occurs to some other pressure, with atmospheric pressure being the default, Tessera has not pointed to anything in Oldham that suggests such an operation. Further, we take the term passive vacuum stage to be a contrast with the next step, wherein a superatmospheric pressure is applied, Ex at 8: As such, on this record, we are not persuaded that Oldham fails to teach all of the elements of claim 3. With respect to claim 5, Tessera argues that Amkor s Petition analyzed mistakenly the limitations of claim 2 in the discussion of claim 5, and that Amkor cannot have shown a reasonable likelihood of prevailing. Further to our discussion above, we are persuaded that the discussion provided in that section of the Petition, Pet , is sufficient to make a threshold showing as to claim 5. As such, we are persuaded that Amkor has shown a reasonable likelihood that it will prevail in challenging claims 1-5 as anticipated under 35 U.S.C. 102 by Oldham. ii) Claims 6-8, 10-13, and 18 Amkor asserts that claims 6-8, 10-13, and 18 of the '076 Patent are unpatentable over Oldham and Kovac under 35 U.S.C Amkor argues that both Oldham and Kovac teach methods of encapsulating devices and it would have been obvious to have used Oldham s methods of encapsulating 22

23 different semiconductor assemblies susceptible to the formation of voids. Pet An annotated version of Figure 2 of Kovac, including indicia from Fig. 1, is reproduced below: Annotated Figure 2 of Kovac illustrates a compliant semiconductor chip interface having compliant pads and filled with a curable liquid. Kovac is directed to a method and apparatus for providing a planar and compliant interface between a semiconductor chip (120) and a flexible film chip carrier (100). Ex at Abs. Kovac discloses that the semiconductor chip has contacts (130), which are attached to the terminals (140) on the film through flexible leads (150), Ex at p. 11, ll , and the apparatus employs dielectric compliant pads (110) to form the compliant interface, having channels formed between the pads, Ex at p. 10, l. 4 p. 11, l. 17. The assembly is compressed between first and second platens (107, 127), Ex at p. 10, ll. 9-14, and an injection nozzle 23

24 (160) is used to apply low viscosity compliant filler (170) between the chip and the dielectric film into the channels formed by the compliant pads, Ex at p. 11, l. 30 p. 12, l. 6. Amkor asserts that Kovac discloses a gap between the chip and chip carrier created by the interface and that encapsulant is applied to flow into the gap, where Oldham discloses that the encapsulant can be applied under subatmospheric pressure, per claim 6. Pet Amkor further asserts, per claim 7, that the compliant pads and the formed channels in Kovac constitute a porous layer. Pet. 52. Amkor further asserts, per claim 8, that the flexible film chip carrier is disclosed in Kovac to be formed from a flexible, but substantially inextensible dielectric film, preferably formed from a polymeric material. Pet ; Ex at p. 7, ll Amkor also asserts that Kovac provides for the support structure to be rigid, per claim 10. Pet. 53. With respect to claim 11, Amkor asserts that Oldham proscribes the epoxy resin applied into the mold cavity in a quantity sufficient to fill the mold, such that the resin will have reached an equilibrium state and the flow thereof will have substantially ceased. Pet. 53. Amkor also asserts that filling the mold includes inherently encapsulating at least two edges seriatim, per claim 12, depending on Amkor s proposed construction. Per our discussion above, we construe the limitations in claim 12 to require the application of the encapsulant along at least two edges one after another. While we do not agree that filling the mold constitutes the same action as applying along at least two edges one after another, we are persuaded, based 24

25 on the current record, that applying encapsulant along two edges, seriatim, would have been an obvious methodology for filling the mold, per the teachings of Kovac. We further determine, under similar analysis, Pet. 54, that filling the mold also would render obvious the application of encapsulant along all of the edges of the microelectronic element, per claim 13. With respect to claim 18, that claim requires that the encapsulant form a compliant material in the curing step. Kovac details that the introduced liquid is cured, which results in a planar, compliant interface between the chip and the film. Pet. 54, Ex at p. 12, ll We determine from this that the cured liquid, in Kovac, must be a compliant material in order to facilitate a compliant interface. Tessera argues that Kovac provides no indication that voiding was a concern and, thus, no evidence has been presented by Amkor of a motivation to combine Oldham and Kovac. Prelim. Resp. 56. To the extent that Tessera seeks an explicit suggestion or motivation in the references themselves, this is no longer the law in view of the Supreme Court s holding in KSR Int l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The actual inquiry is whether one of ordinary skill in the art would have had a concern about the creation of voids in the encapsulation process and whether such artisans would have sought Oldham and its disclosed processes to address those concerns for devices encapsulated in Kovac. Oldham discloses the concerns about void formation, Pet. 50, Ex at 7:66-8:28, which provides evidence that such concerns were known. Even assuming that 25

26 Kovac does not address the specific concern, this does not imply that the general concern (void formation) could not also apply to the specific assemblies encapsulated in Kovac. Thus, even without evidence of a specific concern about void formation in flip-chip products, Pet. 50, the general concern could have motivated one of ordinary skill in the art to employ the processes of Oldham to achieve the results detailed therein. We are persuaded that Amkor, Pet , has proffered a sufficient reason for a person of ordinary skill in the art to combine Oldham and Kovac. With respect to claims 6, 7, and 11, Tessera argues that, while Amkor has analyzed whether the encapsulant was applied while the assembly was under a vacuum, it has not analyzed whether the assembly was maintained under a vacuum while the steps of claims 6, 7, and 11 were performed, i.e., while the encapsulant flows as required. Prelim. Resp However, Tessera s position would require the introduction under the vacuum, but following quickly with the discontinuation of that vacuum. Tessera has not pointed to sufficient disclosure in Oldham or Kovac that would suggest such an action. We are persuaded, based on the current record, that it would have been obvious to maintain the vacuum applied at the introduction of the encapsulant until the flow of the encapsulant has reached the stated goal of fill[ing] the mold. Ex at 7:68 8:1. As such, we are not persuaded that Oldham and Kovac fail to teach or suggest all of the elements of claims 6, 7, and 11. With respect to claims 8 and 10, Tessera argues that Amkor has not explained why a person of ordinary skill in the art would have been 26

27 motivated to incorporate a flexible dielectric film or a rigid substrate in Oldham s electrical components. Prelim. Resp. 57. As discussed above, we find Amkor s arguments persuasive that one of ordinary skill in the art would have employed the methods of Oldham to the devices of Kovac. Similarly, we also find persuasive that devices having the elements recited in claims 8 and 10, and disclosed in Kovac, also would have been employed. As such, we are not persuaded that Oldham and Kovac fail to teach or suggest all of the elements of claims 8 and 10. With respect to claims 12 and 13, Tessera argues that the mold may be filled by applying encapsulant along one edge, which Tessera alleges is taught by Kovac. Prelim. Resp. 57. Even assuming that Kovac discloses the application along a single edge, with which we do not agree, we are persuaded that it would have been an obvious variation to apply along multiple or all sides, for the sake of efficiency. As such, we are not persuaded that Oldham and Kovac fail to teach or suggest all of the elements of claims 12 and 13. With respect to claim 18, Tessera argues that Amkor has not explained why a person of ordinary skill in the art would have been motivated to substitute Oldham s resin materials, disclosed as having a high modulus, with Kovac s low modulus materials. Prelim. Resp. 57. However, we determine based on the record presented that the choice of high or low modulus materials would be a matter of design choice, specific to the assemblies being encapsulated, or the post-encapsulated use of the 27

28 assemblies. As such, we are not persuaded that Oldham and Kovac fail to teach or suggest all of the elements of claim 18. We are persuaded that Amkor has demonstrated that it has a reasonable likelihood of prevailing in showing that claims 6-8, 10-13, and 18 of the '076 Patent are unpatentable over Oldham and Kovac under 35 U.S.C iii) Claim 17 Amkor asserts that claim 17 of the '076 Patent is unpatentable over Oldham, Kovac, and Hwang under 35 U.S.C Amkor argues that both Oldham and Hwang disclose methods of curing encapsulant, and also argues that one of ordinary skill in the art would have been motivated to apply the infrared radiation disclosed in Hwang with the encapsulation methods disclosed in Oldham to speed the curing process. Pet. 55. Hwang discloses processes for curing die-attach materials and molding compound through the use of an optical heat source that reduces cycle time. Ex at Abstract. We note that while Amkor points to sections of Hwang that discuss curing of die attach materials, Pet. 55, Hwang also discloses optical rapid cure methods for molding compounds. Ex at 8:26-9:33. However, as Tessera argues, Prelim. Resp. 58, the radiation directed through the chip in Hwang is directed to the die attach adhesive. Ex at 5: Further to our claim construction, we conclude that die attach adhesive is distinguishable from encapsulant. Claim 17 recites, in part, directing infrared radiation through said microelectronic element into said 28

29 encapsulant in the gap (emphasis added). We are not persuaded that Hwang discloses the direction of infrared radiation to encapsulant in the gap. Further, while Hwang discloses the curing of molding compounds, such compounds are not indicated as being in the gap created between the die and the lead frame. Amkor has not provided sufficient and credible evidence showing that the molding material, cured in Hwang, would be present in such a gap, or that Oldham or Kovac would motivate one of ordinary skill in the art to cure encapsulant so situated by the different methods of Hwang. As such, we conclude that Amkor has not shown a reasonable likelihood that it will prevail in challenging claim 17 as unpatentable over Oldham, Kovac, and Hwang under 35 U.S.C iv) Claim 19 Amkor asserts that claim 19 of the '076 Patent is unpatentable over Oldham and Nakano under 35 U.S.C Amkor argues that because Oldham and Nakano are both concerned with encapsulating assemblies under vacuum, Pet , it would have been obvious to combine their teachings. Amkor points out that Nakano discloses that specific vacuum levels for encapsulation of a silicon chip are preferred, specifically Torr, or more preferably 10 millitorr or below. Pet. 57; Ex at p. 359, col. 1, ll Amkor argues that it would have been obvious to combine Oldham and Nakano to utilize the vacuum levels of Nakano. Tessera argues that Oldham teaches the advantages of a vacuum level at or above 1000 millitorr and that Amkor has failed to explain why one of 29

30 ordinary skill in the art would have modified Oldham to achieve a pressure below 200 millitorr, per claim 19. Prelim. Resp We do not agree, as Amkor has pointed out the distinctions that can be made for the types of assemblies that are encapsulated. Pet Thus, it would have been obvious to have employed vacuum under 10 millitorr in Oldham for device assemblies including silicon chips. As such, we are persuaded that Amkor has shown a reasonable likelihood that it will prevail in challenging claim 19 as unpatentable over Oldham and Nakano under 35 U.S.C D. Grounds of Unpatentability Relying on Hwang i) Claims 17, 22, and 23 Amkor asserts that claims 22 and 23 of the '076 Patent are anticipated by Hwang under 35 U.S.C. 102(b). Pet Amkor also asserts that claims 17, 22, and 23 are obvious under 35 U.S.C. 103 over Nakano and Hwang, or Nakano, Osada, and Hwang, with Hwang supplying the same elements as discussed in the anticipation ground of unpatentability above. See Pet , 32. Amkor also asserts that claim 17 is obvious under 35 U.S.C. 103 over Kaburagi, Kovac, and Hwang, with Hwang supplying the same elements as discussed in the anticipation ground of unpatentability above. See Pet For similar reasons as those discussed above, we conclude that Amkor has not shown a reasonable likelihood of prevailing in showing claims 17, 22, and 23 are anticipated or obvious over Hwang, alone or in combination with other references. 30

31 As Tessera argues, Prelim. Resp. 58, the radiation directed through the chip in Hwang is directed to the die attach adhesive. Ex at 5: Further to our claim construction, we conclude that die attach adhesive is distinguishable from encapsulant. Claim 17 recites, in part, directing infrared radiation through said microelectronic element into said encapsulant in the gap (emphasis added). Claim 22 recites that said infrared radiation impinges on the encapsulant, where the encapsulant is disposed between said semiconductor element and said substrate. We are not persuaded that Hwang discloses the direction of infrared radiation to encapsulant in the gap, or between the element and the substrate. With respect to the obviousness grounds also applying Hwang, while Hwang discloses the curing of molding compounds, such compounds are not indicated as being in between the die and the lead frame. Amkor has not provided sufficient and credible evidence showing that the molding material, cured in Hwang, would be present in such a gap, or that Nakano, Osada, Kaburagi, or Kovac would motivate one of ordinary skill in the art to cure an encapsulant so situated by the different methods of Hwang. As such, we conclude that Amkor has not shown a reasonable likelihood that it will prevail in challenging claims 22 and 23 as anticipated under 35 U.S.C. 102 by Hwang, or claims 17, 22, and 23 as obvious under 35 U.S.C. 103 over other references in view of Hwang. 31

32 ii) Claims 24 and 25 In contrast to claims 22 and 23, claims 24 and 25 do not recite that the encapsulant, which is irradiated, is between the semiconductor element and the substrate. Rather, claim 24 recites a semiconductor assembly including a semiconductor element having first and second surfaces and a material at said second surface of the semiconductor element, with infrared light being directed so that it impinges on the material and affects the material (emphasis added). The material in claim 24 need not be an encapsulant, and the die attach materials in Hwang, Ex at 4:22-56, are at the second surface of the die facing the lead frame. Id. Hwang discloses that the die attach material is cured through the application of heat through the optical heat source. Id. Tessera argues that Amkor does not explain how heating of the die attach 22 by radiation affects the material, as required by the claim. Prelim. Resp. 58. However, given that Hwang details that the die attach material is cured, Ex at 4:22-56, we are persuaded that the curing of the material must affect the material. As such, we are persuaded that Amkor has shown a reasonable likelihood that it will prevail in challenging claims 24 and 25 as unpatentable over Hwang under 35 U.S.C E. Remaining Grounds of Unpatentability Amkor contends that claims 1-8, 10-13, 18, 19, 24, and 25 also are unpatentable under 35 U.S.C. 102 or 103 based on Nakano alone and with Osada, Oldham, Kovac, and Hwang, Pet (identified as Grounds 32

33 A-I ), and unpatentable under 35 U.S.C. 102 or 103 based on Kaburagi alone and with Nakano, Oldham, and Kovac, Pet (identified as Grounds J-N ). Those grounds of unpatentability are cumulative to the grounds of unpatentability on which we initiate an inter parties review. We acknowledge that Amkor has alleged that [t]he specific grounds for unpatentability are non-cumulative because each illustrates slightly different methods of encapsulating a device, and each teaches the limitations of various claims. Pet. 8. However, absent some explanation as to why differences between a set of prior art references are relevant (e.g., why reference A is a stronger reference with respect to claim element X than reference B), the fact that references disclose slightly different things does not demonstrate that asserted grounds are not cumulative to each other. Moreover, even if each reference cited is distinctive, instituting a trial on each ground proffered would not result in a just, speedy and inexpensive resolution of every proceeding, 37 C.F.R. 42.1(b), with a final determination being made generally no later than one year after institution. 35 U.S.C. 316(a)(11). In addition, we have been persuaded by the distinctive teachings, each... relevant in important ways, Pet. 8-9, of the cited references through the grounds on which the Petition is granted, although we exercise our discretion not to go forward with all of the grounds proffered. Accordingly, we do not authorize an inter partes review on the remaining grounds of unpatentability asserted by Amkor against claims 1-8, 10-13, 18, 19, 24, and 25 of the '076 Patent. See 37 C.F.R (a). 33

34 III. CONCLUSION For the forgoing reasons, we determine that the information presented in Amkor s Petition shows that there is a reasonable likelihood that Amkor would prevail with respect to claims 1-8, 10-13, 18, 19, 24, and 25 of the '076 Patent. Accordingly, the Petition is granted. IV. ORDER It is ORDERED that pursuant to 35 U.S.C. 314(a), an inter partes review is hereby instituted as to claims 1-8, 10-13, 18, 19, 24, and 25 of the '076 Patent for the following grounds of unpatentability: Claims 1-5 as anticipated under 35 U.S.C. 102(b) by Oldham; Claims 6-8, 10-13, and 18 as unpatentable under 35 U.S.C. 103 over Oldham and Kovac; Claim 19 as unpatentable under 35 U.S.C. 103 over Oldham and Nakano; and Claims 24 and 25 as anticipated under 35 U.S.C. 102(b) by Hwang. It is FURTHER ORDERED that an inter partes review is not instituted with respect to any of the other alleged grounds of unpatentability proffered in the Petition. It is FURTHER ORDERED that pursuant to 35 U.S.C. 314(c) and 37 C.F.R. 42.4, notice is hereby given of the institution of a trial. The trial will commence on the entry date of this decision. 34