Amkor Technology, Inc.v.Tessera, Inc.

Patent Trial and Appeal Board

Oct 10, 2014

08975590 (P.T.A.B. Oct. 10, 2014)

Trials@uspto.gov Paper 132
571-272-7822 Entered: October 10, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

AMKOR TECHNOLOGY, INC.,
Petitioner,

v.
TESSERA, INC.,
Patent Owner.
____________

Case IPR2013-00242
Patent 6,046,076
____________

Before KEVIN F. TURNER, JUSTIN T. ARBES, and
CARL M. DeFRANCO, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge TURNER, in
which ARBES, Administrative Patent Judge, joins, and DeFRANCO,
Administrative Patent Judge, joins-in-part

DeFRANCO, Administrative Patent Judge, joining-in-part and dissenting-
in-part.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
Amkor Technology, Inc. (“Amkor”) filed a Petition (“Pet.,” Paper 1)
1

requesting inter partes review of claims 1–8, 10–13, 17–19, and 22–25 of
U.S. Patent No. 6,046,076 (“the ’076 Patent”). Patent Owner Tessera, Inc.
(“Tessera”) filed a Preliminary Response thereto (“Prelim. Resp.,” Paper 8).
Taking into account the Patent Owner Preliminary Response, we determined
that the information presented in the Petition demonstrated that there was a
reasonable likelihood that Amkor would prevail with respect to its challenge
of claims 1–8, 10–13, 18, 19, 24, and 25. Pursuant to 35 U.S.C. § 314, the
Board instituted this trial on October 11, 2013, as to claims 1–8, 10–13, 18,
19, 24, and 25 of the ’076 Patent. Paper 37 (“Dec.”).
After institution, Tessera filed a Patent Owner Response (Paper 76
(“PO Resp.”)), and Amkor filed a Reply to the Patent Owner Response
(Paper 102 (“Reply”)). Oral hearing was held on June 12, 2014.
2

We have jurisdiction under 35 U.S.C. § 6(c). This final written
decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
We determine that Amkor has not proven by a preponderance of the
evidence that claims 1–8, 10–13, 18, and 19 of the ’076 Patent are
unpatentable. We do, however, determine that Amkor has proven by a

1
Page 49 of the Petition was corrected in a subsequent filing. See Paper 32,
6.
2
A transcript (“Tr.”) of the oral hearing is included in the record. Paper
131.
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preponderance of the evidence that claims 24 and 25 of the ’076 Patent are
unpatentable.

A. Related Proceedings
Amkor indicates 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-00852-SLR, in the U.S. District Court for the
District of Delaware. Pet. 1; see Ex. 1027. Tessera discloses that the parties
entered into a license agreement relating to certain patents of Tessera in
1996. Prelim. Resp. 2–5. Amkor indicates that the ’076 Patent was later the
subject of an arbitration proceeding, pertaining to that agreement, Amkor
Technologies, Inc. v. Tessera, Inc., International Chamber of Commerce
(ICC) International Court of Arbitration, Case No. 16531/VRO. Pet. 2.

B. The ’076 Patent
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:
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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. Although not illustrated in Fig. 1, the
Specification of the ’076 Patent discloses “a semiconductor chip package
assembly 100,” which is encapsulated. Id. at 5:4–5. Thereafter, electrically
conductive leads (150) are bonded to respective chip contacts (160) to create
connections to the terminals (170). Id. at 5:14–23. 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 5:29–39. 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 5:48–55.
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C. Challenged Claims
Independent claims 1 and 24, along with dependent claims 2–8, 10–
13, 18, 19, and 25, are challenged by Amkor in this inter partes review.
Claim 1 is illustrative and 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.
Ex. 1007, 14:29–41 (emphasis added).
D. Prior Art Relied Upon
Amkor relies upon the following prior art references with respect to
the instituted grounds:
Oldham US 4,681,718 July 21, 1987 Ex. 1003
Nakano JP S63-241955
3
Oct. 7, 1988 Ex. 1001
Kovac WO 96/09746 Mar. 28, 1996 Ex. 1004
Hwang EP 0 691 679 A2 Jan. 10, 1996 Ex. 1006

3
We refer to the English translation of the original reference as “Nakano.”
Amkor provided an affidavit attesting to the accuracy of the translation. See
Ex. 1001; 37 C.F.R. § 42.63(b).
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E. Grounds of Unpatentability
We instituted the instant trial based on the following grounds of
unpatentability:
Claim(s) Basis Reference(s)
1–5 § 102(b) Oldham
6-8, 10-13, and 18 § 103 Oldham and Kovac
19 § 103 Oldham and Nakano
24 and 25 § 102(b) Hwang
Dec. 34.
II. ANALYSIS
A. Claim Construction
We begin our analysis by determining 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. § 42.100(b). Under the broadest reasonable
construction standard, claim terms are given their ordinary and customary
meaning as would be understood by one of ordinary skill in the art in the
context of the entire disclosure. In re Translogic Tech. Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007).
4

4
The claim construction standard for this proceeding was determined in our
Order of May 22, 2014. Paper 129. This order addressed a terminal
disclaimer filed by Tessera with respect to the ’076 Patent.
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In the Decision on Institution, we construed several claim terms,
including “a porous layer,” “an equilibrium state,” “applying said
encapsulant along a plurality of edges seriatim,” “microelectronic
assembly,” and “encapsulant.” Dec. 14–19. We discern no reason to
deviate from those claim constructions for the purposes of this decision.

B. Principles of Law
To prevail in its challenges to the patentability of claims, Amkor must
establish facts supporting its challenges by a preponderance of the evidence.
35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is anticipated, and, thus,
unpatentable, if a single prior art reference discloses each and every element
of the claimed invention. See Schering Corp. v. Geneva Pharms., 339 F.3d
1373, 1377 (Fed. Cir. 2003).
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of ordinary skill in the art; and (4) objective evidence of
nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
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We analyze the instituted grounds of unpatentability in accordance
with the above-stated principles.

C. Claims 1–5 – Anticipation by Oldham
Amkor asserts that claims 1–5 are unpatentable under 35 U.S.C.
§ 102(b) as anticipated by Oldham. Pet. 45–50. As support, Amkor relies
on the declaration of Dr. Alexander D. Glew (Ex. 1008). Amkor contends
that Oldham encapsulates assemblies of components with synthetic resin
materials, where the resin may be introduced under vacuum, and 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. 1003, 8:23–25); under the increased pressure, the mold temperature is
maintained at a specific temperature until the resin/filler mixture has
sufficiently cured. Pet. 45–47.
Tessera counters that Oldham does not disclose applying a flowable
encapsulant to the assembly while maintaining the assembly under a
subatmospheric pressure, per claim 1. PO Resp. 43–50. Tessera argues that
our decision to initiate review is based on an incorrect factual assumption,
that “[r]esin may be introduced under vacuum” in Oldham refers to the state
of the resin, and that adding resin to the mold is not the same as applying
resin to the assembly. Id. In support of its argument, Tessera proffers
Dr. Martin Goosey’s declaration (Ex. 2055).
Upon review of the parties’ arguments and supporting evidence, we
determine that Amkor has not demonstrated by a preponderance of the
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evidence that claims 1–5 are unpatentable under 35 U.S.C. § 102(b) as being
anticipated by Oldham.
In our Decision, we opined that “[i]f 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.”
Dec. 21. We find Dr. Goosey’s testimony to be responsive to the point we
raised in the Decision on Institution and at least partially dispositive.
Dr. Goosey presents a number of encapsulation designs that fall
within the scope of the apparatus described in Oldham, in which the resin is
introduced under vacuum, i.e., “[t]he resin may be introduced under
vacuum,” (Ex. 1003, 8:1), but the article within the mold is not maintained
under vacuum. See Ex. 2055 ¶¶ 173–217. Dr. Goosey testifies that
“Oldham provides little detail on the construction of its compression
molding and transfer molding equipment or the details of the processing
steps. All of this missing information would be necessary to draw
conclusions about what is the inherent or necessary result of practicing the
Oldham methods.” Id. at ¶ 88. Thus, although Oldham’s statement that
“[t]he resin may be introduced under vacuum” (Ex. 1003, 8:1) may appear,
at first, to be clear, one of ordinary skill in the art would have different
interpretations as to what that statement discloses.
Dr. Goosey details multiple types of encapsulation processes and
molding apparatuses that one of ordinary skill in the art would have
understood at the time of invention, including references Schroeder and
Wang (Exs. 2050, 2072) that illustrate those processes. Id. at ¶¶ 94–133.
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Dr. Goosey also explains in detail that if the resin is under vacuum, that does
not necessarily mean that the cavity is under vacuum (Id. at ¶¶ 127, 180–
185), that if the mold is under vacuum, that does not necessarily mean that
the cavity is under vacuum (Id. at ¶¶ 196–197, see also Paper 76 at 45, 47
(for explanatory diagrams)), and that if the cavity is under vacuum, that does
not necessarily mean that the assembly is under vacuum (Id. at ¶¶ 198–217).
Dr. Goosey testifies to the possibility that the pressure on the assembly may
rise during resin addition, (Id. at ¶¶ 208–217), which is acknowledged by
Amkor’s declarant, Dr. Glew. Ex. 2054, 193:24–197:17. We find Dr.
Goosey’s testimony persuasive that Oldham’s characterization that the
“resin may be introduced under vacuum” does not necessarily mean that the
assembly itself is under vacuum during the introduction of the resin. As
such, we are not persuaded that Oldham teaches “applying a flowable
encapsulant to the assembly while maintaining the assembly under a
subatmospheric pressure,” per claim 1, and dependent claims 2–5.
In response, Amkor cites Oldham’s claim 17, which modifies claim
15, detailing that “prior to said filling of step ‘f’, said chamber is evacuated
to a pressure of about one millimeter of mercury or less and subsequently
said filling occurs under said vacuum.” Reply 10 (citing Ex. 1003, 19:6–9).
However, that recitation pertains to the chamber and not necessarily the
assembly, per claim 1 of the ’076 Patent. Amkor also cites Oldham’s
abstract as stating that “the mold cavity is evacuated to a subatmospheric
pressure to impose a vacuum on the mold,” (Reply 10), but that statement
comes after the statement that “the mold cavity is filled with a low viscosity
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heat curable, thermosetting resin.” Thus, the vacuum would not be applied
while “applying a flowable encapsulant,” per claim 1. Amkor also argues
that Oldham is silent about degassing the resin, as implied by Dr. Goosey,
(Reply 11), but we do not find this to be conclusive given the depth of
discussion provided in Dr. Goosey’s testimony. Rather, we are persuaded
that one of ordinary skill in the art would have considered that introducing
resin under vacuum could have meant that the resin is degassed and
maintained until it is applied. Ex. 2055 ¶ 176. As such, we are not
persuaded, in view of all of the evidence of record, that Oldham necessarily
teaches “applying a flowable encapsulant to the assembly while maintaining
the assembly under a subatmospheric pressure,” per claim 1.
In addition, we have reviewed the deposition of Dr. Goosey
(Ex. 1045) and can determine no point in which his testimony was shown to
be faulty or unpersuasive with respect to his discussions relied upon above.
Also, Amkor’s arguments in its Reply are unpersuasive for the reasons
explained above, and Amkor did not cite its Reply any declarant testimony
in rebuttal to Dr. Goosey’s testimony regarding the “applying” step. See
Reply 9–11. Based on the instant record, we determine Dr. Goosey’s
testimony to be uncontroverted.
Additionally, we accept that Amkor has asserted the anticipation
ground over Oldham expressly, as opposed to Oldham inherently disclosing
all of the elements of claims 1–5. At Oral Hearing, counsel for Amkor made
it clear that it need not rely on inherency for Oldham to anticipate claim 1–5.
Tr. 25–26. As such, we have considered what one of ordinary skill in the art
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would have found Oldham to disclose, and it is not clear that Oldham
teaches all of the elements of claims 1–5.
5

We also note that the ground of unpatentability of claims 1–5 over
Oldham was originally proffered by Amkor as being “under 35 U.S.C. § 102
or, in the alternative under 35 U.S.C. § 103.” Pet. 45; Dec. 6, n.2 (emphasis
omitted). As we noted in our Decision, Amkor’s asserted ground does not
provide any of the necessary analysis for obviousness, 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,” such that,
we interpreted the ground as being proffered under 35 U.S.C. § 102 only.
Dec. 6, n.2. As such, no consideration of the obviousness of claims 1–5
based on Oldham, alone or in combination with any other reference(s), has
been made during the instant proceeding.

D. Remaining Grounds of Unpatentability
In addition to the above-discussed anticipation ground over Oldham,
we also instituted on the following grounds:

5
The Dissent takes a different view of the disclosure of Oldham, but we
accept that anticipation must be based on whether a single reference
discloses all of the elements of a claim. Anticipation requires that every
limitation of the claim at issue be disclosed in a prior art disclosure and
“arranged or combined in the same way as recited in the claim.” Net
MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). “[I]t
is not enough that the prior art reference . . . includes multiple, distinct
teachings that the artisan might somehow combine to achieve the claimed
invention.” Id.
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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.
Dec. 34.
The analysis presented in Amkor’s Petition makes it clear that the first
two obviousness grounds are dependent on the analysis with respect to claim
1 in the anticipation ground over Oldham, discussed above. Pet. 50–54, 56–
57. The obviousness grounds applying Oldham do not discuss how the
secondary references would cure the defect we find in the anticipation of
claim 1 over Oldham. As such, we conclude that Amkor has not shown by a
preponderance of the evidence that claims 6–8, 10–13, 18, and 19 are
unpatentable, on the basis of those instituted grounds.
With respect to the anticipation ground of claims 24 and 25 over
Hwang, Tessera has not countered the analysis provided in the Decision with
respect to this ground. Dec. 32. We determined therein that Amkor had
demonstrated a reasonable likelihood that it would prevail with respect to
claims 24 and 25. Id. At oral hearing, Tessera’s counsel indicated that those
claims covered embodiments “not used commercially,” and that Tessera did
not want “to spend the Board’s resources or our resources fighting about
something that’s not used.” Tr. 62. We have reviewed the evidence
presented by Petitioner regarding claims 24 and 25 and determine that
Petitioner has shown that the claims are unpatentable by a preponderance of
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the evidence. See Pet. 59–60; Ex. 1008, 72–73; Ex. 1024, 3–5. As such, we
conclude that Amkor has shown that claims 24 and 25 are unpatentable, on
the basis of being anticipated by Hwang under 35 U.S.C. § 102(b).

E. Motion for Observation
Tessera filed a Motion for Observation (Paper 109) on the cross-
examination of Drs. Michael Caloyannides and Alexander Glew, which took
place after Amkor filed its Reply. Amkor filed a Response (Paper 118). We
have considered Tessera’s observations and Amkor’s responses in rendering
our decision.

III. CONCLUSION
We have considered the record before us in this inter partes review
proceeding. We conclude that Amkor has shown by a preponderance of the
evidence that claims 24 and 25 are unpatentable. We further conclude that
Amkor has not shown by a preponderance of the evidence that claims 1–8,
10–13, 18, and 19 are unpatentable.

IV. ORDER
In consideration of the foregoing, it is
ORDERED that claims 24 and 25 of the ’076 Patent are held
unpatentable;
FURTHER ORDERED that claims 1–8, 10–13, 18, and 19 have not
been shown to be unpatentable;
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FURTHER ORDERED that the terminal disclaimer filed by Patent
Owner in U.S. Patent Application No. 08/975,590 (issued as the ’076 Patent)
on April 11, 2014, shall no longer be held in abeyance. See Paper 129; and
FURTHER ORDERED that because this is a final written decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
Certain materials have been sealed in this proceeding, but have not
been relied upon in this final written decision. See Papers 31, 99. The
record will be maintained undisturbed pending the outcome of any appeal
taken from this decision. At the conclusion of any appeal proceeding, or if
no appeal is taken, the materials will be made public. See Office Patent
Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760-61 (Aug. 14, 2012).
Further, either party may file a motion to expunge the sealed materials
from the record pursuant to 37 C.F.R. § 42.56. Any such motion will be
decided after the conclusion of any appeal proceeding or the expiration of
the time period for appealing.
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DeFRANCO, Administrative Patent Judge, joining-in-part and dissenting-
in-part.
I join the majority opinion holding that claims 24 and 25 of the ’076
patent are unpatentable, but I respectfully dissent from the majority
regarding the patentability of claims 1–8, 10–13, 18, and 19.
Claim 1, the independent claim at issue, recites a “method of
encapsulating a microelectronic assembly” that includes the step of
“applying a flowable encapsulant while maintaining the assembly under a
subatmospheric pressure.” Ex. 1007, 14:29–32 (emphasis added). Simply
put, this step requires that encapsulant be applied to the assembly while the
assembly is under vacuum. According to the Specification of the ’076
patent, applying the encapsulant in a vacuum environment is important “so
that the encapsulant flows into the gap” defined between the microelectronic
element (e.g., a semiconductor chip) and the underlying substrate of the
assembly. Id. at 3:1–17, Fig. 1; see also id. at 5:62–67 (“The vacuum
environment . . . causes the encapsulant 200 to flow under the chip between
the chip and the substrate by capillary action”). The Specification explains
that “interpos[ing] encapsulant material between and/or around elements” of
the assembly reduces “the strain and stress on the connections” between the
chip and the underlying substrate. Id. at 1:17–23.
Like the ’076 patent, Oldham describes a “method of encapsulating
electrical components to provide increased resistance to electrical stress.”
Ex. 1003, 1:11–14. In particular, claim 15 of Oldham’s disclosure illustrates
an embodiment comprising the steps of:
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(a) providing a rigid mold having a cavity therein . . . ;

(b) providing a chamber for containing said mold and for . . .
varying pressures to said cavity of said mold; . . .

(d) loading the component in said cavity of said mold;

(e) loading said mold containing said component into said
heated chamber;

(f) filling the mold cavity with . . . resin . . . ;

(g) evacuating the mold cavity to a subatmospheric pressure
. . . to impose a vacuum on the mold to thereby impregnate the
component with the resin . . . .

Id. at 18:28–50 (emphases added). Oldham’s disclosure of impregnating the
electrical component with resin while imposing a vacuum on the component
within the mold cavity satisfies the claimed step of “applying a flowable
encapsulant to the assembly” while maintaining the assembly under vacuum.
Central to the majority’s analysis is its finding that Oldham fails to
disclose that “the assembly itself is under vacuum during the introduction of
the resin.” Final Dec. 10 (emphasis added). But claim 1 does not say
“introducing” the resin under vacuum, it says “applying” the resin “to the
assembly” while under vacuum. As disclosed in Oldham, the application of
resin to the electrical component occurs in step (g) of claim 15, when the
vacuum is imposed on the mold cavity “to thereby impregnate the
component with resin.” Ex. 1003, 18:45–49. That Oldham’s component is
under vacuum during application, i.e., impregnation, of the resin is made
clear by the express reference in step (b) of claim 15 to “varying pressures to
said cavity of said mold” and in step (g) to “evacuating the mold cavity to a
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subatmospheric pressure.” Id. at 18:33–46 (emphasis added). Once the
mold cavity, which holds the component, is evacuated, the vacuum within
the cavity causes the resin to thereby “impregnate,” i.e., be applied, to the
component. Id. at 18:45–49. Thus, contrary to the majority’s finding,
Oldham’s claim 15 evinces an encapsulation process where the electrical
component is under vacuum during application of the resin into the
component.
Moreover, Example 6 of Oldham reiterates that the vacuum is
“maintained on the assembly” during application of the resin. Ex. 1003,
15:50–16:23. As described in Example 6, the resin was “metered under
vacuum into the mold containing the coil [assembly]. A vacuum . . . was
applied to the mold and maintained on the assembly for 2 minutes to
impregnate the coil . . . in the mold.” Id. at 16:8–13 (emphasis added).
Further evidence includes Oldham’s disclosure that the mold containing the
electrical component “acts as the vacuum pressure chamber, with
pressurization being produced on the mold contents.” Id. at 8:35–40; see
also id. at 3:18–26 (“providing a rigid mold having a cavity and . . . varying
pressure to the mold contents”) (emphasis added). Those disclosures make
clear that Oldham’s electrical component, contained within the mold cavity,
is under vacuum during application of the resin. On that basis, I would
conclude that one of ordinary skill in the art, reviewing Oldham’s disclosure
in claim 15 of “evacuating the mold cavity to a subatmospheric pressure . . .
to impose a vacuum on the mold” for “impregnat[ing] the component with
resin,” would understand it to be the same as “applying a flowable
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encapsulant to the assembly while maintaining the assembly under a
subatmospheric pressure,” as called for by claim 1.
The majority errs by focusing on a single statement in Oldham to the
exclusion of Oldham’s disclosure as a whole. Pointing to Oldham’s
statement that “the resin may be introduced under vacuum,” the majority
draws the conclusion that, although Oldham may “introduce” the resin under
vacuum, “the article [i.e., component] within the mold is not maintained
under vacuum.” Final Dec. 9 (citing Ex. 2055 ¶¶ 173–217). The majority’s
analysis, however, suffers from the limited perspective of what happens
during Oldham’s introduction of resin into the mold, i.e., the initial step of
“filling” the mold. See id. at 9–10. But, as discussed above, the more
relevant focus is on step (g) of Oldham’s claim 15, which pertains
specifically to applying the resin “to the component” while under “vacuum.”
The majority’s limited view of Oldham may stem from a narrow
reading of the claim term “applying.” The plain and ordinary meaning of
“applying” is “to lay or spread on.”
1
Consistent with spreading the resin
over the electronic component, the Specification of the ’076 patent states
that:
The step of applying the encapsulant may include the step of
applying the encapsulant along one or more edges of the
microelectronic element so that the encapsulant flows into the
gap . . . while the assembly is under the subatmospheric
pressure.

1
Merriam-Webster’s Collegiate Dictionary, 56 (10
th
ed. 2000).
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Ex. 1007, 3:5–9 (emphasis added).
2
Additional passages in the Specification
provide that: “the encapsulant flows into the porous layer while the
assembly is under the subatmospheric pressure” (id. at 3:10–12), and “[t]he
vacuum environment . . . causes the encapsulant 200 to flow under the chip
between the chip and the substrate by capillary action” (id. at 5:62–67)
(emphasis added). Those descriptions of applying the encapsulant to flow
into and around the assembly while “under subatmospheric pressure”
reasonably indicate that the claimed “applying” step pertains to spreading
the encapsulant over the assembly, not simply introducing the resin into the
mold, as the majority opines.
By narrowly construing the claimed “applying” step as encompassing
only “introducing” or “filling” resin in the mold, the majority overlooks the
pertinent disclosure in Oldham in which the resin is spread into the
component, i.e., step (g) of claim 15, which describes application of the resin
in terms of “impregnat[ing] the component with the resin” while
“impos[ing] a vacuum” on the mold and the component therein. That
oversight amounts to error in the majority’s anticipation analysis of Oldham.
Further, the majority’s reliance on Dr. Goosey’s testimony (Final Dec. 9–10)
is of no assistance because, like the majority, Dr. Goosey never addresses
step (g) of Oldham’s claim 15.

2
Dependent claim 6, which depends directly from claim 1, likewise defines
the step of “applying said encapsulant.” Ex. 1007, 14:49–56.

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In any event, even if the claimed “applying” step is limited to when
Oldham introduces the resin into the mold (i.e., Oldham’s “filling” step), the
evidence still does not support the majority’s finding because Oldham
discloses a modified embodiment in claim 17, in which the vacuum is
imposed on the mold cavity “prior to” the filling step so that “filling occurs
under said vacuum.” Ex. 1003, 19:6–9. Taken together, claims 15 and 17
therefore disclose an embodiment in which the mold cavity, and the component
therein, are under vacuum while the resin is being introduced into the mold. Id.
at 18:28–49, 19:6–9.
3

To the extent the majority infers that claim 17’s reference to the
“chamber” being under vacuum does “not necessarily” mean the component is
under vacuum (see Final Dec. 10), Oldham makes clear that the mold “acts as
the vacuum pressure chamber, with pressurization being produced on the
mold contents.” Ex. 1003, 8:35–40 (emphasis added). That disclosure
confirms that the vacuum produced in Oldham’s “chamber” is translated to
the contents of the mold, namely, the electrical component. Dr. Goosey, on
whose testimony the majority relies, never addresses Oldham’s embodiment
as modified by claim 17. See Final Dec. 9–10. Thus, on this record, there is

3
Citing Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008),
the majority infers that Oldham’s disclosure involves “multiple, distinct
teachings” that cannot be combined to achieve the claimed invention. Final
Dec. 12 n.5. But Oldham’s claim 15 is directed to a single embodiment, not
multiple, distinct embodiments. Likewise, Oldham’s claim 17, which
depends directly from claim 15, involves a single embodiment. That claim
17 incorporates, as a matter of law, the steps of claim 15 does not does not
make it an improper combination of different embodiments.
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no evidence to support the majority’s view that Oldham’s claim 17
embodiment lacks a vacuum on the component itself. In contrast, Oldham
expressly evinces that encapsulation of the component takes place in a
vacuum chamber.
4
On that basis, I would conclude that Oldham’s claim 17
discloses an embodiment where the electrical component sitting within the
mold chamber is under vacuum during both introduction of the resin into the
mold and application of the resin into the component, thereby satisfying the
claimed “applying” step of claim 1.
The majority does not find that Oldham lacks any other limitation of
claim 1, or any of the limitations of dependent claims 2–5, and the evidence
confirms that such limitations are disclosed expressly by Oldham. See Pet.
45–50. Thus, because the record supports a finding that Oldham discloses,
and thus anticipates, the subject matter of claim 1–5, including the step of
applying encapsulant to the assembly while maintaining the assembly under
vacuum, I respectfully dissent from the majority opinion.
Further, because the majority’s determination of non-obviousness of
dependent claims 6–8, 10–13, 18, and 19 is based entirely on its finding that
Oldham lacks the “applying” step of independent claim 1, the majority’s
error in its anticipation analysis undermines its non-obviousness
determination. Thus, I respectfully dissent from the majority’s
determination that dependent claims 6–8, 10–13, 18, and 19 are patentable.

4
Like Oldham, the Specification of the ’076 patent speaks of the
encapsulation process as occurring “within the vacuum chamber 220.” See,
e.g., Ex. 1007, 5:28–44.
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For PETITIONER:
Lissi Mojica
Kevin Greenleaf
DENTONS US, LLP
Lissi.mojica@dentons.com
Kevin.greenleaf@dentons.com

For PATENT OWNER:
Jon E. Wright
Robert Greene Sterne
Jason D. Eisenberg
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
jwright-PTAB@skgf.com
rsterne-PTAB@skgf.com
Jasone-PTAB@skgf.com

Jason Sheasby
H. Annita Zhong
IRELL & MANELLA, LLP
jsheasby@irell.com
hzhong@irell.com