Rohm & Haas Successfully Saves and Preserves Patent Right

Rodel Inc. transferred its patent titled ”A pad useful for polishing integrated circuit wafers” (the “subject patent”) to Rohm & Haas Electronics Materials CMP Holdings Inc. (hereinafter “Rohm & Haas”) in 2000 with the transfer being duly recorded and registered with the competent authority.  However, an invalidation requester, LIU Sheng-Fang filed an invalidation action against the subject patent.  In November 2012, the Taiwan IPO examined the invalidation action and decided that the subject patent fell into the unpatentable circumstances as specified in the Taiwan Patent Act, and therefore, made a decision that “the invalidation is sustained and the patent right for the subject patent shall be revoked.”  Rohm & Haas was dissatisfied with the Taiwan IPO’s decision and therefore filed an administrative appeal with the Ministry of Economic Affairs (MOEA) which subsequently dismissed Rohm & Haas’ appeal in September 2013.  MOEA’s dismissal further caused Rohm & Haas to initiate an administrative lawsuit with the Taiwan IP Court against the Taiwan IPO’s invalidation decision.  The Taiwan IP Court later rendered a judgment in favor of Rohm & Haas.

According to the IP Court judgment, Rohm & Haas and Taiwan IPO had disputed over the issue whether Exhibit 2 presented by the invalidation requester was able to prove that claim 1, 3, and 4 of the subject patent were in violation of subparagraph 2 of the 1st paragraph of Article 20 of the Taiwan Patent Act operable at the time when the subject patent was approved and granted. 

The IP Court conducted a technical comparison between the scope of claims of the subject patent and invalidation requester’s Exhibit 2 (see the comparison tables below), deciding that the Exhibit 2 is not sufficient to prove claim 1, 3, and 4 of the subject patent lacked novelty, and in this regard, the Taiwan IPO’s invalidation decision was not appropriate, and that the Taiwan IPO’s invalidation decision and the MOEA’s appeal decision should both be vacated.  This IP Court judgment is appellable. (September 2014)

Table 1.  Comparison between the technical features of claim 1 of the subject patent and Exhibit 2

Item	Claim 1 of the subject patent	Exhibit 2	Disclosed or Not
1	A pad useful for polishing integrated circuit wafers	Fig. 3 depicts a pad used for polishing integrated circuit wafers (18)	Yes
2	The said pad having a portion comprised of a solid uniform polymer sheet with no intrinsic ability to absorb or transport slurry particles	Fig. 3 and line. 19~21 of p.17 of the specification indicates that “…the typical pad materials in the region overlying the platen hole 30 has been replaced with a solid polyurethane plug 42.  The plug 42 is integrally molded into the pad 18.”	No. It cannot be derived directly.
3	The said polymer sheet is transparent to light having a wavelength within the range of 190 to 3500 nanometers	Line 12~13 of p. 32 of the specification indicates that “it is believed these two competing factors in the choice of wavelength are optimally balance if a red light laser beam is chosen.”	Yes
Conclusion	Exhibit 2 is not sufficient to prove claim 1 of the subject patent in lack of novelty.

Table 2.  Comparison between the technical features of claim 3 of the subject patent and Exhibit 2

Item	Claim 3 of the subject patent	Exhibit 2	Disclosed or Not
1	A pad useful for polishing integrated circuit wafers	Fig. 3 depicts a pad used for polishing integrated circuit wafers (18)	Yes
2	The said pad having a portion comprised of a solid uniform polymer sheet with no intrinsic ability to absorb or transport slurry particles	Fig. 3 and line. 19~21 of p.17 of the specification indicates that “…the typical pad materials in the region overlying the platen hole 30 has been replaced with a solid polyurethane plug 42.  The plug 42 is integrally molded into the pad 18.”	No. It cannot be derived directly.
3	And a second portion comprised of a microporous polyurethane structure	Line 7~8 of p.5 of the specification indicates that “…the covering layer 22 is usually either an open cell foamed polyurethane (e.g. Rodel IC1000)…” or that as indicated in Line 1 of Exhibit 4, IC is the microporous polyurethane pad.	Yes
4	The said polymer sheet is transparent to light having a wavelength within the range of 190 to 3500 nanometers	Line 12~13 of p. 32 of the specification indicates that “it is believed these two competing factors in the choice of wavelength are optimally balance if a red light laser beam is chosen.”	Yes
Conclusion	Exhibit 2 is not sufficient to prove claim 3 of the subject patent in lack of novelty.

Table 3.  Comparison between the technical features of claim 4 of the subject patent and Exhibit 2

Item	Claim 4 of the subject patent	Exhibit 2	Disclosed or Not
1	A pad useful for polishing integrated circuit wafers	Fig. 3 depicts a pad used for polishing integrated circuit wafers (18)	Yes
2	The said pad having a portion comprised of a solid uniform polymer sheet with no intrinsic ability to absorb or transport slurry particles	Fig. 3 and line. 19~21 of p.17 of the specification indicates that “…the typical pad materials in the region overlying the platen hole 30 has been replaced with a solid polyurethane plug 42.  The plug 42 is integrally molded into the pad 18.”	No. It cannot be derived directly.
3	And a second portion comprised of a filled or blown composite polyurethane structure	Line 7~8 of p.5 of the specification indicates that “…the covering layer 22 is usually either an open cell foamed polyurethane (e.g. Rodel IC1000)…”  Line 65~66 of the 2nd column of Exhibit 3 indicates that the filled or blown composite polyurethane structure is that of  the IC series, MH series, and LP series manufactured by Rodel.	Yes
4	The said polymer sheet is transparent to light having a wavelength within the range of 190 to 3500 nanometers	Line 12~13 of p. 32 of the specification indicates that “it is believed these two competing factors in the choice of wavelength are optimally balance if a red light laser beam is chose.”	Yes
Conclusion	Exhibit 2 is not sufficient to prove claim 4 of the subject patent in lack of novelty.

/CCS