Katana Silicon Technologies LLC v. Micron Technology, Inc.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
KATANA SILICON TECHNOLOGIES LLC,
Appellant
v.
MICRON TECHNOLOGY, INC.,
Appellee
______________________
2024-2100, 2024-2101, 2024-2103
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2023-
00071, IPR2023-00072, IPR2023-00073.
______________________
Decided: April 21, 2026
______________________
HOWARD L ITHAW L IM , Carter Arnett PLLC, Dallas, TX,
argued for appellant. Also represented by S COTT W.
BREEDLOVE .
ANDREW D UFRESNE, Perkins Coie LLP, Madison, WI,
argued for appellee. Also represented by A MANDA T ESSAR ,
Denver, CO; AMY ELIZABETH SIMPSON, Holland & Knight
LLP, Los Angeles, CA.
______________________
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KATANA SILICON TECHNOLOGIES LLC v.
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Before T ARANTO, CLEVENGER , and STOLL , Circuit Judges.
STOLL , Circuit Judge.
Katana Silicon Technologies LLC appeals from three
final written decisions of the United States Patent and
Trademark Office Patent Trial and Appeal Board in inter
partes reviews of U.S. Patent Nos. RE38,806
and 6,352,879. In its final written decisions, the Board
held claims 1–33 of the ’806 patent and claims 1–15 of the
’879 patent unpatentable as obvious under 35 U.S.C. § 103.
In making that determination, the Board adopted a claim
construction Katana challenges on appeal. Because we
adopt the Board’s construction, we affirm the Board’s deci-
sions.
BACKGROUND
The ’806 and ’879 patents disclose “a semiconductor de-
vice having a structure substantially miniaturized to a chip
size, i.e., a CSP (Chip Size Package) structure, and a
method of manufacturing such a semiconductor device.”
U.S. Patent No. RE38,806 col. 1 ll. 17–20.1 The patents
specifically describe a miniaturized semiconductor device
having a CSP that includes multiple semiconductor chips
stacked vertically inside the package (i.e., a stacked pack-
age structure). Id. at col. 1 ll. 15–20, col. 1 ll. 53–65, col. 2
ll. 63–65. For example, Figure 14(a) of the ’806 patent (re-
produced below) shows a cross-sectional view of a
1 The ’806 and ’879 patents have identical specifica-
tions except for their respective priority statements and an
explanation of markup notations unique to the reissued
’806 patent. Compare ’806 patent col. 1 ll. 4–12, with U.S.
Patent No. 6,352,879 col. 1 ll. 4–7. Because the patents
share a common specification, we refer only to the ’806 pa-
tent specification unless otherwise specified.
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KATANA SILICON TECHNOLOGIES LLC v.
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conventional semiconductor device having a stacked pack-
age structure. Id. at col. 6 ll. 24–26.
Id. Fig. 14(a). The specification explains that in a conven-
tional semiconductor device where multiple semiconductor
chips are stacked and laminated, two different methods are
used to bond the laminated semiconductor chips to each
other—“an adhesive agent (paste) potting method and a
method using a thermo-compression sheet.” Id. at col. 2
ll. 16–22.
In the potting method, if the amount of the adhesive
agent is excessive, the adhesive agent may spread and
overflow beyond the outer edge of the semiconductor chips,
as illustrated by overflown adhesive agent 87a between
semiconductor chips 81 and 82 in Figure 14(a). Id. at col. 2
ll. 23–29. Such overflown adhesive agent may contact
wires in the package or the electrode pad of the semicon-
ductor chips, so the wiring must be provided far from the
side surfaces of the chips, which increases the package size.
Id. at col. 2 ll. 30–43. “On the other hand, if the amount of
the adhesive agent is too small, a gap is produced between
the semiconductor chips 81 and 82 . . . causing problems
such as separation of the semiconductor chip 82 from the
semiconductor chip 81.” Id. at col. 2 ll. 44–48.
In the method using a thermo-compression sheet, the
thermo-compression sheet is disposed on the surface of a
first semiconductor chip, and then a second semiconductor
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chip is adhered to the thermo-compression sheet. Id.
at col. 2 ll. 49–56, col. 4 ll. 12–22, col. 9 ll. 46–50. Thus, the
thermo-compression sheet must be the same size as semi-
conductor chip 82 and must be placed accurately at a spe-
cific location on semiconductor chip 81. Id. at col. 2 ll. 49–
53. “In addition, the semiconductor chip 82 must be
bonded to the thermo-compression sheet so as to be located
exactly on the top of the thermo-compression sheet.” Id.
at col. 2 ll. 53–57. This process thus requires accurate po-
sitioning twice, “i.e., positioning the thermo-compression
sheet, etc., and positioning the first or second semiconduc-
tor chip on the thermo-compression sheet.” Id. at col. 3
ll. 33–38.
The ’806 and ’879 patents purport to avoid these com-
plications with the conventional bonding methods by form-
ing an “adhesion layer” “in advance” on a back surface of a
wafer that has a circuit formed on its front surface. Id.
at col. 4 ll. 17–20, col. 6 ll. 42–45. In other words, the ad-
hesion layer is formed on a wafer during the semiconductor
fabrication process before the wafer is cut or diced to pro-
duce individual chips with adhesion layers. Id. at col. 4
ll. 17–63. By applying the adhesion layer in advance, “the
adhesive agent does not overflow the space between the
first and second semiconductor chips,” which allows other
components like wiring to be positioned closer to the chip
edges and allows the chip to be mounted “by accurately po-
sitioning it once.” Id. at col. 4 ll. 57–63, col. 5 ll. 15–29,
col. 3 ll. 19–44, col. 3 l. 66–col. 4 l. 24, col. 4 ll. 48–56.
Every independent claim of the ’806 and ’879 patents
requires at least one “adhesion layer” on the back surface
of a chip for mounting the chip in a stack. For example,
claim 1 of the ’806 patent recites:
1. A semiconductor device including a stacked
package structure and a chip size package struc-
ture, comprising:
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an insulating substrate including a wiring
layer having electrode sections;
a first semiconductor chip having a first adhe-
sion layer adhered to its back surface where a
circuit is not formed, said first semiconductor
chip being mounted on said wiring layer
through the first adhesion layer; and
a second semiconductor chip having a second
adhesion layer adhered to its back surface
where a circuit is not formed, said second sem-
iconductor chip being mounted on a circuit-
formed front surface of said first semiconductor
chip through the second adhesion layer;
each of said first and second semiconductor
chips being wire-bonded to the electrode sec-
tion with a wire, said first and second semicon-
ductor chips and the wire being sealed with a
resin.
Id. at col. 13 ll. 45–63 (emphases added).
Micron Technology, Inc. filed three petitions for inter
partes review, arguing that International Patent Applica-
tion Publication No. WO 96/13066 (“Mostafazadeh”), in
combination with other references not pertinent to this ap-
peal, rendered all claims of the ’806 and ’879 patents obvi-
ous. Mostafazadeh, like the ’806 and ’879 patents,
recognizes the advantages of forming a layer that provides
adhesion on a wafer before the wafer is cut or diced to pro-
duce individual chips with adhesive layers that neither
overflow nor underfill the chip’s surface. See J.A. 1280–83.
Most relevant to Katana’s arguments on appeal, Mosta-
fazadeh’s adhesive layer is formed on the wafer, dried,
diced, and later cured during bonding. J.A. 1282, 1284–85,
1297.
The Board held all the challenged claims obvious under
§ 103 in view of Mostafazadeh, in combination with other
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references. The Board construed the term “adhesion layer”
to not be limited to a pre-formed solid sheet, such as a
thermo-compression sheet. See, e.g., J.A. 21–22. Instead,
the Board rejected Katana’s proposal to construe the term
as “a pre-formed layer that is adhered” and adopted Mi-
cron’s proposed construction—“a layer that adheres.”
J.A. 16–26. The Board reasoned that several claims and
the shared specification expressly called for “forming” an
adhesion layer on the back surface of a wafer, which it
viewed as strongly suggesting that an “adhesion layer”
need not always be “pre-formed.” Rather, the Board rea-
soned, the adhesion layer could “be formed in situ on the
back surface of a wafer.” J.A. 18–21. And rather than find-
ing the specification’s use of a thermo-compression sheet in
both preferred embodiments to be definitional or critical to
the goal of avoiding overflow or underfill, the Board con-
cluded that the specification described drawbacks of using
adhesives and thermo-compression sheets and that the dis-
closed solution to both sets of issues was in forming an ad-
hesion layer at the wafer stage before the wafer is diced
into individual chips. J.A. 22, 25–26.
Katana timely appealed. We have jurisdiction under
28 U.S.C. § 1295(a)(4)(A).
D ISCUSSION
“Claim construction is a question of law with underly-
ing questions of fact.” Wasica Fin. GmbH v. Cont’l Auto.
Sys., Inc., 853 F.3d 1272, 1278 (Fed. Cir. 2017). Where “the
intrinsic record fully governs the proper construction of a
term,” our review is de novo. Id.
The sole dispute in this appeal is whether the Board
erred in construing the claim term “adhesion layer” as “a
layer that adheres.” Katana insists that the adhesion layer
must be “a pre-formed layer that is adhered,” such that the
adhesion layer is a solid sheet disposed in advance on the
wafer before the wafer is diced and cannot be formed from
an adhesive that is later cured, as in Mostafazadeh.
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Micron, by contrast, defends the Board’s view, which is that
neither the claims nor the specification requires a pre-
formed solid sheet to avoid adhesive potentially overflow-
ing or underfilling the space between a chip’s surface and
the mounting surface. We agree with the Board.
Looking first at the claim language, the term “adhesion
layer” merely requires a layer that provides adhesion.
That is, “adhesion” is an adjective modifying the noun
“layer” to specify the type or purpose of the layer. Nothing
in the claim language requires a fully-formed or “pre-
formed” adhesion layer where no further processing is re-
quired. See, e.g., ’806 patent col. 13 ll. 45–63. Had the pa-
tentee intended to limit the claims to a pre-formed
adhesion layer with no further required processing, it could
have included language in the claims to that effect.
Katana argues that claim 30 of the ’806 patent re-
quires “forming” the first and second adhesion layers on a
back surface of the wafers before producing separate chips
from those wafers by dicing and mounting the chips in a
stack. According to Katana, these limitations exclude an
adhesion layer that is not fully pre-formed in advance.
However, Katana never asked for a construction of “form-
ing,” so we must apply the ordinary meaning of the plain
claim language. And while the ordinary meaning of “form-
ing a first insulating adhesion layer” includes adhesion lay-
ers that are pre-formed, it does not in fact exclude forming
an adhesion layer on a wafer and curing it after dicing. See
id. at col. 17 l. 58–col. 18 l. 17. Indeed, nowhere does
claim 30 exclude using an adhesive agent, such as a glue or
paste that is later cured, to form an adhesion layer. Thus,
the Board’s construction is consistent with the plain claim
language.
The Board’s construction is also more consistent with
the specification than Katana’s. Although both preferred
embodiments described in the specification disclose a pre-
formed thermo-compression sheet as an adhesion layer,
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“[t]here is a fine line between reading the claims in light of
the specification and importing limitations from the speci-
fication into the claims.” IQRIS Techs. LLC v. Point Blank
Enters., Inc., 130 F.4th 998, 1003–04 (Fed. Cir. 2025).
Here, where there is no evidence suggesting that the ordi-
nary meaning of adhesion layer is limited to a thermo-com-
pression sheet or even to a fully pre-formed layer, “we are
not inclined to import limitations from the preferred em-
bodiments into the claimed invention.” Id. at 1004 (citing
Playtex Prods., Inc. v. Procter & Gamble Co., 400 F.3d 901,
907–08 (Fed. Cir. 2005) (collecting cases)).
Moreover, “[a]bsent lexicography or disavowal, we do
not depart from the plain meaning of the claims.” Lu-
minara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d
1343, 1353 (Fed. Cir. 2016). Contrary to Katana’s asser-
tion, there is no clear disavowal of using adhesive agents
such as glue or paste to form an adhesion layer or lexicog-
raphy that would exclude such an adhesion layer in the
specification or prosecution history. The specification does
not limit an adhesion layer to a thermo-compression sheet
but instead discloses a thermo-compression sheet as an ex-
ample of an adhesion layer. For example, a first embodi-
ment, described as simply “one embodiment of the present
invention,” includes a chip mounted “through a thermo-
compression sheet (adhesion layer) 6 so that its back sur-
face is adhered to the thermo-compression sheet 6.”
’806 patent at col. 6 ll. 34–35, col. 6 ll. 48–52. Similarly, in
a second embodiment, “[t]he thermo-compression sheet 6 is
provided as an adhesion layer for holding” a first chip on a
second chip. Id. at col. 11 ll. 31–33 (emphasis added). In
both instances, we read the specification’s use of the term
“adhesion layer” as referring to the role of the thermo-com-
pression sheet in the device, not as defining “adhesion
layer” as a thermo-compression sheet. Although the speci-
fication includes only these two exemplary embodiments,
“[w]e have cautioned against reading limitations into a
claim from the preferred embodiment described in the
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specification, even if it is the only embodiment described,
absent clear disclaimer in the specification.” In re Am.
Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir.
2004). And when we read these embodiments in light of
the rest of the specification, we are not convinced that these
exemplary embodiments represent clear disclaimer of
other types of adhesion layers.
Indeed, although Katana argues that the specification
consistently uses the term “adhesive agent” to refer to glue
or paste and the term “adhesion layer” to refer to solid, pre-
formed layers, see Appellant’s Reply Br. 11–12, the specifi-
cation makes clear that an adhesion layer can be formed
from an adhesive agent because it uses these terms inter-
changeably. For example, after describing a method of
manufacturing a semiconductor device using a first and
second “adhesion layer,” the specification states, “in the
above manufacturing method, the adhesive agent does not
overflow the space between the first and second semicon-
ductor chips.” ’806 patent at col. 4 ll. 57–62, col. 4 ll. 25–47
(emphasis added); id. at col. 5 ll. 23–28, col. 4 l. 64–col. 5
l. 14. Katana argues that “[t]he phrase ‘the adhesive
agent,’” as it is used in this context “actually refers back to
the ‘an adhesive agent’ in the problem description in the
background of the invention section,” and concludes that
“the phrase ‘the adhesive agent’ more likely means that the
problem . . . is solved by the manufacturing method and not
that the manufacturing method contemplates using an ad-
hesive agent.” Appellant’s Br. 45–46. But the more con-
sistent reading of the specification is that the
manufacturing method of forming the adhesion layer at the
wafer stage solves the problems described in the specifica-
tion even when using an adhesive agent that later becomes
an adhesion layer.
Indeed, the specification explains that its manufactur-
ing methods of forming the adhesion layers “in advance” on
the back of wafers before dicing avoids the issue of over-
flow, which leads to a smaller package size, and provides
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the benefits of requiring only one positioning step and a
simplified manufacturing process. See ’806 patent at col. 4
ll. 48–62, col. 4 ll. 17–24, col. 5 ll. 15–29, col. 3 ll. 37–44.
Thus, given the claim language, the absence of lexicogra-
phy or disavowal, and the specification’s described solu-
tions to the problems of conventional devices and methods
of manufacture, we do not adopt Katana’s interpretation
requiring an adhesion layer to be a pre-formed layer.
Although Katana argues that its factual attacks on the
prior art and obviousness combinations proposed by Mi-
cron do not depend on any claim construction, Katana’s
own statements contradict this argument. Appellant’s Re-
ply Br. 9, 22. For example, Katana contends that “even un-
der the Board’s faulty construction, Mostafazadeh still does
not disclose the claimed adhesion layer and render the
claims obvious because its process would not fully form the
purported adhesion layer on the wafer but instead on the
chips after mounting.” Appellant’s Reply Br. 9 (emphasis
added). Because we adopt the Board’s contrary construc-
tion that does not require a pre-formed layer, we are not
persuaded.
CONCLUSION
We have considered Katana’s remaining arguments
and find them unpersuasive. For the foregoing reasons, we
affirm the Board’s final written decisions in all three pro-
ceedings.
AFFIRMED
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