Camtek and Orbotech are both Israel based manufacturers of imaging systems for the semiconductor industry.
After requesting modified examination under Section 17c of the Law, Orbotech received a notice of allowance for Israel Patent Number 179995 titled “Systems and Method for Inspecting Patterned Devices Having Microscopic Conductors” which published for opposition purposes back on 31 October 2010.
On 31 January 2011 Camtek filed an opposition.
Camtek claimed that the system and method use image analysis based on Darkfield and Brightfield illumination, using standard elements, and thus the claimed invention lacked novelty and inventive step over the prior art including US 6,947,151, IL 81450, US 5,969,372, WO 99/10730, HandBook for Machine Vision, 2006 and Optical Consideration for Machine Vision, 1985.
Furthermore, Camtek claimed that Orbotech had failed to make earlier Orbotech patent no. IL 81450 of record in this case, contravening the duty of disclosure under Section 18 of the Israel Patent Law and showing inequitable behaviour.
The Applicant countered that the invention did not relate to a new principle or to a new component but rather to a new system, in that the arrangement of components provided the invention.
Inter Partes Opposition to 179995 titled “Systems and Method for Inspecting Patterned Devices Having Microscopic Conductors”
As to the Duty of Disclosure, Orbotech went on to argue that the cited art was insufficient to invalidate the invention as claimed.
Experts representing both parties submitted affidavits and the applicant managed to have some clauses cancelled as illegimate widening of the grounds of opposition. The experts were cross-examined.
The application includes 30 claims, of which claims 1, 11 and 22 are independent.
The system, as claimed in claim 1 is directed to:
An inspection system operative to inspect patterned devices having microscopic conductors, the system comprising:
at least first and second light sources, which illuminate a patterned substrate, said patterned substrate defining a substrate plane, wherein said first and second light sources define first and second paths of illumination, respectively; wherein said first and second paths of light are mutually non-parallel in a plane parallel to said substrate plane;
a camera viewing a location of a candidate defect on said patterned substrate, and acquiring thereat at least one image of the location, said at least one image being illuminated by illumination from at least said first and second light sources; wherein said camera defines an optical axis and said first and second paths of illumination are offset from said optical axis;
and wherein a response to illumination supplied along said first path of illumination is differentiable from a response to illumination supplied along said second path of illumination; and a defect classifier operative to receive said at least one image and to distinguish therewithin a candidate defect caused by a particle foreign to said patterned substrate from other types of candidate defects.
Claim 11 is directed to a corresponding method and claim 22 to the system of claim 1 being able to differentiate between cuts and other defects.
The opposition proceedings focused on the meaning of the term used to describe the first and second paths of light, described as being “mutually non-parallel in a plane parallel to said substrate plane“. The Applicant claimed that this relates to the Azimuth angle, and the Opposer noted that the term Azimuth Angle is not mentioned anywhere in the claims and is first introduced in the affidavit of Orbotech’s expert witness.
In the ruling, Deputy Commissioner Jacqueline Bracha cited 345/87 Hughes Aircraft Company vs. State of Israel to explain how claim construction should be achieved in Israel. Essentially, claims, are to be interpreted like any other clause in any other document. The specification as a whole is to be used to explain the claims, while noting that the claims are intended to be understood by persons of the art, and with a little leeway to account for the Applicant’s intention, falling back on dictionaries whilst acknowledging that the Applicant may be his own lexographer.
Based on the above, the Deputy Commissioner went on to rule that ideally, claims should be self-explanatory and understandable to persons of the art without reference to the specification. Even where a full understanding is based on other parts of the specification, the claims should be sufficiently clear and concise, and this is the purpose of Section 13 of the Law and clause 20(a) 3 of the regulations.
Ms Bracha went on to claim that this approach reflects the Supreme Court ruling 2626/11 Hasin Esh Taaiyot (lit. Fireproof Industries) vs. Koniel Antonio (Nevo 11/4/13).
“secondly, where a legal disagreement relates to a monopol or its boundaries, the specification will serve as a support for explaining the claims.” …. “from this, it transpires that the specification cannot protect details that are not mentioned in the claims. In other words, the monopoly went extend beyond the scope of the claim-set. This principle protects the public interest in that it provides clarity to that protected by a patent and allows the public to do research and development on those elements [described but] not protected.
Ms Bracha went on to suggest that as with Contract Law, any ambiguities should act against the Patentee since the Patentee is responsible for them.
Quoting from recent US decision, Nautilus Inc. v. Biosig Instruments, Inc. 572 US (2014):
“At the same time, a patent must be precise enough to afford clear notice of what is claimed, thereby “‘appris[ing] the public of what is still open to them.'”…patent system fosters “an incentive to be as vague and ambiguous as you can with your claims” and “defer clarity at all costs”). Eliminating that temptation is in order, and “the patent drafter is in the best position to resolve that ambiguity in … patent claims”.”
The ruling now gets very technical regarding what light sources can be considered parallel and where Darkfield fits into the picture, at different azimuth’s and refers to Figures attached to Golan’s affidavit that, unfortunately, are not reproduced.
The Applicant, does, however, refer to the specification as well.
As to Novelty, the Deputy Commissioner cited Section 4 of the Law and Hughes Aircraft section 45. For comparative purposes, she cited a UK ruling:
“In order to anticipate a patent, the prior art must disclose the claimed invention and (together with common general knowledge) enable the ordinary skilled person to perform it.”
(H. Lundbeck A/S v. Generics (UK) Ltd. & Ors  R.P.C. 19, par. 9).
the Opposer noted that a Supervision system was available from Amitech prior to the priority date and that this is a prior art publication in Israel (in the US and some other places, there is a grace period).
The functionality of this earlier system was examined and was compared to the claimed invention. The cited art was then examined in turn.
The Deputy Commissioner ruled that claim 1 was anticipated by IL 81450, specifically by claims 11-13 thereof, and thus lacked novelty.
Claim 2 merely adds a camera. to photograph defects.
Claim 3 adds a classifier of defects but the nature of this is not explained and the term classifier per se is too broad to be inventive.
Claim 4 merely slightly improves the functionality of the classifier and is not inventive over claim 3.
Similarly Claim 5, which is able to identify dust particles, merely slightly improves the functionality of the classifier and is not inventive over claim 3.
Claim 6 introduces using two sources of monochromatic light having different wavelengths. This is considered obvious my be combination of IL 81450 and WO 99/10730.
Claim 7 indicates that the two light sources do not act together and is not considered inventive over claim 1.
Claim 8 relates to perpendicular light sources which is preempted by IL 81450.
Claim 9 was not specifically challenged by the Opposer and appears to have been supported by Fig 4D and by pages 11 and 12 of the specification. Probably because the Opposer didn’t challenge this, the Applicant’s expert witness did not relate to this claims. Somewhat oddly in my opinion, the deputy Commissioner felt that the onus was on the applicant to prove novelty and he had failed to do so, so this claim was struck as well.
Claim 10 simply applies claim 1 to an array of electronic components and neither describes the equipment or the method, so was considered anticipated and not based on the specification and thus rejected under sections 4 and 13. Here again, I am at a loss to understand the relevance of section 13.
Claim 11 relates to a method of using the system of claim 1 and the reasoning used against claim 1 is relevant here as well. Claim 12 relates to claim 11 using Darkfield, claim 12 to claim 11 using an AOI system and since the system described is an AOI system, this adds nothing. Claims 14 to 21 are method equivalents of claims 3-10 and claims 22-25 claim the system of claim 1 where the defects detected change and this does not render the equipment or the method new. Claims 26-30 relate to the substrate being examined and this also does not render the equipment or the method new.
The background of the application relates to the supervisor and to the US 6,947,151 patent, so failure to mention these in an information disclosure statement was not deemed critical. However, IL 81450 is owned by Amitech and thus known to them, yet was not mentioned. Apparently the Opposer did not claim inequitable behavior (to me it seems odd that Adv. Levit would miss this).
Mentioning the Supervisor in the background is somewhat of a problem since the Examiner cannot easily determine what this includes. The Deputy Commissioner hypothesizes that submission of a product manual might have been in order under section 20(a)1, but the Examiner did not ask for this and she does not see that the law provides for sanctions against the applicant. The sanction for inequitable behavior is defined in Section 18c and relates to the duty of disclosure of documents and here, the Applicant fulfilled his obligations. Citing 14/92 Plasson Maagan Michael vs. Ferdy Freint, the Deputy Commissioner noted that the duty of disclosure is ongoing up until allowance and that failure can result in more than compensation [i.e. that an issued patent may be deem unenforceable or voided]. Mentioning equipment in the background is insufficient. The background should have included a description of the functionality.
That said, the claims are all struck down as lacking novelty or inventive step and the efficiency of the proceedings may be considered in terms of the amount of work required by opposer to obtain and describe this evidence when costs are awarded.
The opposition was accepted and the patent application was cancelled.
Israel Patent Number 179995 titled “Systems and Method for Inspecting Patterned Devices Having Microscopic Conductors” to Orbotech, Opposed by Camtek, ruling by Deputy Commissioner Jacqueline Bracha, 20 July 2014
I don’t remember the quote from Hasin Eish, but I think the Supreme Court ruling is not as clear as it could be. One can do research and development on patented elements protected by claims, and one can manufacture and sell non-claimed elements that are described.
Claim 1 cannot fairly be read as relating to perpendicular azimuths. This could be a flaw in the drafting, but also may indicate that the applicant was unaware of what they wanted an invention on at the time of filing. The Israel Law used to enable suing for infringement of ‘the pith and marrow’ of the invention as described, and if it is clear from specification that something not clearly claimed was intended, the claim construction for enforcement purposes may work slightly differently. At the opposition stage, claim 1 does appear too wide and it might, perhaps, have benefited from narrowing and clarifying amendments. I am a little unhappy at claim 9 being invalidated because of the failure of applicant to show patentability. I think that in both examination and opposition, there is a presumption of novelty and inventiveness to the extent that, although not yet enforceable against third parties, during examination and opposition proceedings, the onus is on the Examiner and then the Opposer, to challenge the validity by bringing relevant prior art and logical arguments.
Nevertheless, the decision seems to be generally thorough and well reasoned.