Invalidity dossier

US 9245826

Anchor vias for improved backside metal adhesion to semiconductor substrate

Current assignee: Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.

Added 9/2/2026, 4:47:41 AM

At a glanceNo PTAB challenges2 lawsuits on fileasserted by Samsung Electronics Co., Ltd. +1Semiconductor (T)

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Patent summary

Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.

✓ Generated

Let me run a couple more targeted searches on the IPR final written decision and any CAFC appeal for this patent number.

Summary of U.S. Patent No. 9,245,826 (US9245826B2)

I searched USPTO/PTAB sources and CAFC-related docket databases for patent 9245826 (i.e., U.S. Patent No. 9,245,826 B2). A note on method: the authoritative full text was provided in your message and cross-checked against USPTO/PTAB records (IPR2024-01405, Ex. 1001) and secondary litigation trackers. I found no CAFC (Federal Circuit) appeal docket for this patent as of April 26, 2026 — the PTAB proceeding is still in the Director Review stage (see "Litigation status" below).


Bibliographic data

  • Title: Anchor vias for improved backside metal adhesion to semiconductor substrate
  • Patent number: US 9,245,826 B2 (application no. 14/165,377; publication US20140252651A1)
  • Inventors: Hadi Jebory (Irvine, CA), David J. Howard (Irvine, CA), Scott B. Stetson (Huntington Beach, CA)
  • Filing date: January 27, 2014
  • Priority date: March 11, 2013 (provisional application 61/776,063)
  • Issue date: January 26, 2016
  • Assignee history: Original assignee — Newport Fab, LLC dba Jazz Semiconductor (per assignment recorded 2014-01-27); renamed Newport Fab, LLC dba Tower Semiconductor Newport Beach (2022-12-08); assigned to Harbor Island Dynamic LLC (2023-03-24). Google Patents lists Harbor Island Dynamic LLC as current assignee, with the caveat that its listed assignees "may be inaccurate." Status: Active; maintenance fees paid through year 8 (2023); anticipated expiration 2034-01-27.
  • Cited prior art of record (examiner): US 8,431,481 B2 (Texas Instruments) and US 8,710,629 B2 (Qualcomm).

Abstract (verbatim from the patent)

"Disclosed is a structure having anchor vias for improved backside metal adhesion and an associated method for the structure's fabrication. The structure includes at least one anchor via disposed in at least one corner of a semiconductor substrate. A metal filler may be formed within the at least one anchor via, the metal filler having a protruding portion extending from a backside of the semiconductor substrate. The structure may further include a backside metal layer on a bottom surface of the semiconductor substrate, the backside metal layer being bonded to the protruding portion of the metal filler in the at least one anchor via. The at least one anchor via may include a cluster of anchor vias, a plurality of anchor vias disposed in a straight line and/or in a staggered configuration along a periphery of the semiconductor substrate."

Plain-language overview

The patent addresses peeling of the backside metal layer (used as a common ground) from a semiconductor die during singulation/pick-and-place and over operating life. Instead of relying only on the adhesive interface layer, the invention places "anchor vias" — metal-filled holes located in the corners/periphery of the substrate — whose metal filler protrudes from the backside, so the deposited backside metal layer forms a strong metal-on-metal bond around and to the protrusion (a "rivet" effect). Crucially, these anchor vias are mechanical only: unlike grounding TSVs in the core, they do not provide ground connections to active devices (their metal may be left floating). The specification warns against placing too many vias (to avoid cleavage planes and a "Faraday cage" RF effect), recommending sparse placement (linear density <10%, preferably <2%; total via area <0.5% of substrate area).


Independent claims (the only independent claims are 1 and 11; claims 2–10 depend from 1, claims 12–20 depend from 11)

Claim 1 — Structure. A semiconductor structure comprising:

  • at least one anchor via disposed in at least one corner of a semiconductor substrate;
  • a metal filler within the anchor via, the filler having a protruding portion extending from the backside of the substrate;
  • a backside metal layer on the bottom surface of the substrate, bonded to that protruding portion; and
  • a negative limitation: the metal filler does not provide a ground connection to any active device in the substrate.

In plain language: A chip with a metal "rivet" via in a corner that sticks out of the back and is fused to the backside metal purely for mechanical adhesion, not for grounding.

Claim 11 — Method. A method comprising:

  • forming at least one anchor via in at least one corner of a semiconductor substrate;
  • depositing a metal filler in the via with a protruding portion extending from the backside;
  • forming a backside metal layer on the bottom surface bonded to the protruding portion; and
  • same negative limitation — the filler does not ground any active device.

In plain language: The process steps for making the Claim 1 structure (order of steps not required, per the PTAB institution decision).

Notable dependent claims (plain language): cluster of anchor vias (claim 2); perpendicular orientations of adjacent vias in a cluster (claim 3); straight-line (claim 4) or staggered (claim 6) peripheral arrangements; linear density <10% (claim 5); total via area <0.5% of substrate area (claim 7); multi-layer backside stack (interface/conduction/packaging layers) (claim 8); filler bonded to an overlying front-side metal layer (claim 9); optional insulating layer between substrate and filler (claim 10). Claims 12–20 mirror 2–10 for the method.


Litigation / post-issuance status (important for 2026)

  • District Court: Harbor Island Dynamic, LLC v. [[[Samsung Electronics Co.](/litigations/by-defendant/Samsung%20Electronics%20Co.), Ltd.](/litigations/by-plaintiff/Samsung%20Electronics%20Co.%2C%20Ltd.) et al.](/litigations/by-plaintiff/Samsung%20Electronics%20Co.%2C%20Ltd.%20et%20al.), 2:24-cv-00140-JRG-RSP (E.D. Tex.), filed 2024-02-27, asserting the '826 patent (among others, e.g., 9,147,609 and 7,772,673) against Samsung CMOS image sensors.
  • PTAB IPR: IPR2024-01405 (Samsung Electronics v. Harbor Island Dynamic), petition filed 2024-09-20, challenging claims 1–20; institution granted March 24, 2025 on all grounds (Conn; Conn ± AAPA; Gambino+Conn(±Ding); Torii; Ide). Oral hearing held January 6, 2026; Final Written Decision issued March 13, 2026, finding all challenged claims 1–20 unpatentable (Board found Grounds 1–2 did not prevail, but the combination of Grounds 3–5 invalidated every challenged claim, per Patent Owner's Director Review request).
  • Director Review pending: Patent Owner filed a Request for Director Review of the FWD on April 6, 2026 (DocketAlarm lists the case as "Terminated March 13, 2026 — Pending Director Review"; Petitioner filed a submission April 14, 2026).

Uncertainty notes

  • I located no CAFC 2026 appeal for patent 9,245,826. Any appeal under 35 U.S.C. § 319 would typically be filed within 63 days after the IPR becomes final — which is stayed/tolled while Director Review is pending — so no CAFC docket would be expected yet. I did not find one in searches as of 2026-04-26.
  • The FWD's unpatentability findings are not yet final (Director Review pending); I could not retrieve the full FWD text, only party filings describing it.
  • Google Patents' "Current Assignee" (Harbor Island Dynamic LLC) is consistent with the recorded USPTO assignment, but I could not independently confirm the USPTO Assignment Database entry beyond the search results; treat ownership as per recorded assignments above.

Key sources: Google Patents full text (patents.google.com/patent/US9245826/en); IPR2024-01405 Institution Decision (DocketAlarm/Ex Parte); Patent Owner's Request for Director Review (DocketAlarm, Apr. 6, 2026); E.D. Tex. complaint analysis (Ex Parte, 2:24-cv-00140).

Generated 9/2/2026, 12:47:13 PM

Cases on file (2)

Group view →

Specific litigation cases in our database that name US patent 9245826. The free-form analysis below may also discuss cases beyond this list.

Litigation summary

Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.

✓ Generated

I'll research litigation involving US Patent 9,245,826 using multiple sources.

Let me try additional searches with different phrasings.

I have found substantial information. Let me search for additional details on the district court case status and any Federal Circuit appeals.

Based on my research of live litigation databases (Docket Alarm, Unified Patents/RPX, PTACTS, Justia, SEC filings), here is what is known about litigation involving US Patent 9,245,826 ("Anchor vias for improved backside metal adhesion to semiconductor substrate"):

1. District Court — Harbor Island Dynamic, LLC v. [[[Samsung Electronics Co.](/litigations/by-defendant/Samsung%20Electronics%20Co.), Ltd.](/litigations/by-plaintiff/Samsung%20Electronics%20Co.%2C%20Ltd.) et al.](/litigations/by-plaintiff/Samsung%20Electronics%20Co.%2C%20Ltd.%20et%20al.)

  • Plaintiff: Harbor Island Dynamic, LLC (corporate parent: Quest Patent Research Corporation)
  • Defendants: Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
  • Jurisdiction: U.S. District Court for the Eastern District of Texas, Marshall Division
  • Case No.: 2:24-cv-00140-JRG-RSP
  • Filed: February 27, 2024
  • Presiding judges: District Judge Rodney Gilstrap; Magistrate Judge Roy S. Payne
  • Patents-in-suit: US 9,245,826 (the '826 patent) plus US 7,772,673, US 9,147,609, and US 7,745,886
  • Accused products relevant to the '826 patent: Samsung CMOS image sensors (e.g., S5KHM3SX CIS) allegedly incorporated in products such as the Samsung Galaxy S22 Ultra, Google Pixel 7 Pro, and Motorola Moto G Stylus 5G smartphones
  • Status/outcome: Samsung's motion to stay pending inter partes review was denied as premature (Dkt. 62, Dec. 19, 2024). Later PTAB correspondence (Sept. 25, 2025) indicates the district court case was stayed after IPR institution. No merits verdict has been reached. In light of the PTAB Final Written Decision (below) invalidating all challenged claims, the case's ultimate disposition remains to be resolved (no final judgment identified as of this search date).

2. PTAB Inter Partes Review — Samsung Electronics Co., Ltd. et al. v. Harbor Island Dynamic, LLC

  • Case No.: IPR2024-01405
  • Petitioners: Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
  • Patent Owner: Harbor Island Dynamic, LLC
  • Patent: US 9,245,826 (all claims 1–20 challenged)
  • Petition filed: September 20, 2024
  • Institution decision: March 24, 2025 (per Unified Patents PTAB data)
  • Panel: Judges Hyun J. Jung, Gregg I. Anderson, Arthur M. Peslak, and William V. Saindon
  • Grounds: Anticipation/obviousness over Conn (US 2009/0079056), Gambino (US 2014/0138844), Torii (US 2013/0082382), Ide, and Ding, among others
  • Final Written Decision: March 13, 2026 — the Board found all challenged claims (1–20) unpatentable. Per Patent Owner's filings, the Board found Grounds 1–2 did not establish unpatentability, but Grounds 3 (Gambino + Conn combination) and Grounds 4–5 (anticipation by Torii and Ide) rendered some claims obvious and others anticipated.
  • Current status: Pending Director Review — Patent Owner filed a Request for Director Review of the Final Written Decision on April 6, 2026 (Docket Alarm status: "Pending Director Review"). No Federal Circuit appeal had been identified as of the search date.

Notes / Caveats

  • The Google Patents page for the '826 patent also flags this same E.D. Tex. litigation and IPR2024-01405, plus a "first worldwide family litigation filed" Darts-ip entry.
  • A separate Harbor Island Dynamic v. NXP case (E.D. Tex.) and related IPR2024-01402/01403/01404 involve sibling patents (e.g., '886, '673, '609) in the same portfolio — not the '826 patent itself — so I have not listed them as '826 litigation. I found no separate CAFC appeal, ITC investigation, or other district court case specifically naming US 9,245,826.
  • Statuses are time-sensitive; the most reliable current docket sources are PACER for 2:24-cv-00140 and the PTAB docket for IPR2024-01405.

Generated 9/2/2026, 12:47:12 PM

Proceedings on file (0)

All PTAB activity →

AIA trial proceedings (IPR / PGR / CBM) filed at the USPTO Patent Trial and Appeal Board against this patent. Sourced from the USPTO Open Data Portal and refreshed every six hours; each proceeding number deep-links to the PTAB E2E docket.

Current assignee: Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.

No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.

PTAB challenges

AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.

✓ Generated

I have solid IPR2024-01405 coverage. Let me now pin down the FWD's claim-level holdings, the current Director Review posture, and confirm there are no other proceedings against the '826 patent.

Proceedings overview

The USPTO ODP block supplied in this prompt reports zero AIA trial proceedings on file — but that reflects ODP ingest lag, not reality. Web research confirms one IPR on US 9,245,826: IPR2024-01405, Samsung Electronics v. Harbor Island Dynamic, filed 2024-09-20, which was instituted on all claims, went to trial, and produced a Final Written Decision (2026-03-13) holding all twenty claims (1–20) unpatentable. That FWD is not yet final: Patent Owner's Request for Director Review was filed 2026-04-06 and was pending as of the last docket update (~2026-08-26). No settlement, no Federal Circuit appeal yet. Defensive bottom line: every claim of the '826 patent has been found unpatentable on the merits — a defendant is in an extremely strong position — but because Director Review is pending, no certificate of cancellation has issued and the claims are technically still in force while the Director decides.


IPR2024-01405 — Samsung Electronics Co., Ltd. & Samsung Electronics America, Inc. v. Harbor Island Dynamic, LLC

  • Type: Inter Partes Review
  • Filed: 2024-09-20 (petition; recorded on the patent's legal-event tab 2024-10-29)
  • Status: Trial terminated by FWD on 2026-03-13; "Pending Director Review" — Patent Owner's second Request for Director Review (Paper 43, filed 2026-04-06) was still undecided as of the most recent docket update (status as aggregated by Docket Alarm/PTAB trackers; the USPTO ODP block in this prompt shows no proceeding, which is stale).
  • Judge panel: Institution Decision (Paper 9, 2025-03-24) was before William V. Saindon, Gregg I. Anderson, and Arthur M. Peslak (Peslak authoring). The consolidated oral hearing on 2026-01-06 (with IPR2024-01403) was conducted by Peslak, Hyun J. Jung, and Anderson (per hearing transcript, Paper 41). Lead counsel: Finnegan (Joshua L. Goldberg) for Samsung; Fabricant LLP (Joseph M. Mercadante, Richard Cowell, Alfred R. Fabricant) for Harbor Island Dynamic ("HID").
  • Petition grounds (all claims 1–20 challenged; per Institution Decision and Patent Owner's Preliminary Response):
    • Ground 1 — § 102 anticipation by Conn (US 2009/0079056): claims 1, 2, 4, 5, 7, 9, 11, 12, 14, 15, 17, 19
    • Ground 2A — § 103 over Conn + POSA knowledge: claims 1, 2, 4–7, 9, 11, 12, 14–17, 19; Ground 2B — § 103 over Conn + applicant admitted prior art: claims 8, 18
    • Ground 3A — § 103 over Gambino (US 2014/0138844) + Conn: claims 1, 2, 4–7, 11, 12, 14–17; Ground 3B — § 103 over Gambino + Conn + Ding (US 2012/0104546): claims 10, 20
    • Ground 4 — § 102 anticipation by Torii (US 2013/0082382): claims 1, 8–11, 18–20
    • Ground 5 — § 102 anticipation by Ide (US 2012/0256310): claims 1–3, 9, 11–13, 19
  • Institution decision: Granted on all claims and all grounds, 2025-03-24 (Paper 9). The panel found a reasonable likelihood Samsung would prevail on at least one claim and instituted on the full set — declining discretionary denial over the parallel E.D. Tex. case (HID argued Fintiv; Samsung countered that the district-court trial was set ~two months before the FWD deadline and several challenged claims were not in suit). Patent Owner's first Request for Director Review (of institution) was denied 2025-04-22 (Paper 14; Acting Director Coke Morgan Stewart recused; Director Review Executive Michelle N. Ankenbrand acting).
  • Final Written Decision: 2026-03-13 (Paper 42) — all challenged claims 1–20 found unpatentable. Per Patent Owner's own characterization of the decision (Paper 43): "the Panel ... finding all Challenged Claims had been shown to be unpatentable. In so doing, the Panel confirmed that Grounds 1 and 2 did not show any claims to be unpatentable, but the combination of Grounds 3 through 5 showed some claims obvious and others anticipated" and "Grounds 3, 4, and 5, in sum, invalidated every Challenged Claim. Paper 42, 73." Concretely:
    • Grounds 1–2 (Conn, alone or with POSA/AAPA): rejected — no claims invalidated on Conn.
    • Ground 3 (Gambino + Conn obviousness; + Ding for claims 10, 20): sustained — e.g., the Board found the Gambino+Conn combination teaches limitation 1[d] ("does not provide a ground connection to one or more active devices"), crediting Samsung's evidence "that no wiring layers normally would be placed at the corners and peripheries of the substrate" (Decision at 41–42, quoted in Paper 44).
    • Ground 4 (Torii) and Ground 5 (Ide): sustained for the claims each covers. Central to both was claim construction: the Board construed "backside metal layer on a bottom surface of said semiconductor substrate" as not requiring direct contact with the substrate, rejecting HID's attempt to import a contact requirement from the specification (Decision at 17–19). The Board reasoned the specification's "direct contact is optional" language "aligns with the open-ended language of claim 1." Because claims 8 and 18 were challenged only under Torii (Ground 4), and claims 3 and 13 only under Ide (Ground 5), those claims necessarily fell on the respective anticipation grounds.
    • No claim of the '826 patent was held patentable.
  • Settlement / termination: No settlement. The trial phase terminated with the FWD on 2026-03-13. Patent Owner has not conceded: it filed a second Request for Director Review of the FWD on 2026-04-06 (Paper 43), arguing the Board (a) misconstrued "on a bottom surface" by ignoring intrinsic evidence and (b) made a material factual error on Ground 3 (that Gambino's via process could produce the claimed vias). Samsung filed its authorized response on 2026-04-14 (Paper 44). No Director decision had issued as of the last docket update (~2026-08-26).
  • Appeal: None to the Federal Circuit yet. A CAFC appeal would be premature while Director Review is pending; the FWD is not final, and no certificate of cancellation has issued.
  • Defensive value: Very high. The PTAB has already held every claim (1–20) unpatentable over Gambino+Conn (obviousness), Torii (anticipation), and Ide (anticipation). If the Director denies review (the usual outcome — the first request was denied), the FWD becomes final, a certificate canceling all twenty claims issues, and the parallel E.D. Tex. suit (Harbor Island Dynamic, LLC v. Samsung Electronics, No. 2:24-cv-00140-JRG-RSP) loses its predicate. The only caveat: while Director Review is pending, the claims are not yet formally canceled, so a defendant should not assume the patent is dead today — but all leverage sits with the defendant.

Sources: Institution Decision, Paper 9 · Order Denying Director Review of Institution, Paper 14 (2025-04-22) · PO Response, Paper 17 (2025-06-16) · Hearing Transcript, Paper 41 (2026-01-22) · PO Request for Director Review of FWD, Paper 43 (2026-04-06) · Petitioner's Authorized Response, Paper 44 (2026-04-14)


Strategic summary

Claim status. As of 2026-09-02, no claim of US 9,245,826 has been formally canceled — no certificate of cancellation has issued because Patent Owner's Director Review request is pending. But on the merits, the PTAB's FWD (Paper 42, 2026-03-13) found all twenty claims unpatentable: independent structure claim 1 and independent method claim 11, plus every dependent claim (2–10, 12–20). If the FWD stands, zero claims survive — the patent is entirely dead, not merely narrowed. The claims the patent owner most relies on in litigation (independent claims 1 and 11, and the "does not provide ground connection" negative limitation that defines the anchor-via concept) were each rejected: claim 1 fell as obvious over Gambino+Conn and as anticipated by Torii/Ide, and the Board construed the "on a bottom surface" language to permit intervening layers, which is what let Torii and Ide anticipate.

Estoppel landscape. For Samsung (the IPR petitioner) in the E.D. Tex. case, § 315(e)(2) estoppel now covers every § 102/§ 103 ground it raised or reasonably could have raised against the challenged claims — i.e., Conn, Gambino, Ding, Torii, Ide, AAPA, and combinations thereof, plus any other art a diligent search would have surfaced before the petition deadline. That is largely academic if the FWD becomes final and claims are canceled. For a different, non-Samsung defendant facing assertion today, there is no statutory estoppel, and the same prior art (Gambino, Conn, Torii, Ide, Ding) remains fully available — the FWD is not binding on a stranger to the IPR, but it is highly persuasive and the trial record (including Dr. Scott E. Thompson's expert testimony and the Board's claim constructions) is public and reusable.

Pattern signals. Samsung — a practicing-entity defendant, not a defensive aggregator — filed a coordinated four-IPR wave (IPR2024-01402 through -01405) against four Harbor Island Dynamic patents out of the former Newport Fab/Jazz Semiconductor → Tower Semiconductor portfolio after being sued in E.D. Tex. (No. 2:24-cv-00140-JRG-RSP, filed 2024-02). IPR2024-01405 is the only one of that wave directed to the '826 patent. The patent owner side shows the classic monetization-entity playbook: current assignee Harbor Island Dynamic LLC, litigating through Fabricant LLP, and fighting procedurally hard — it sought Director Review of the institution decision (denied 2025-04-22) and again of the FWD (pending). No settlement occurred despite the full invalidation. Notably, the ODP API's "no proceedings" answer in this prompt is contradicted by PTAB records, Google Patents' litigation tab (which flags "PTAB case IPR2024-01405 filed (Final Written Decision)"), and the patent's own legal-event history — so treat the ODP block as stale, not as evidence of a clean PTAB record.

Recommended next steps

  1. If you are a defendant (Samsung or otherwise): the operative document is the FWD, Paper 42 (2026-03-13), which the patent owner itself summarizes as holding that "Grounds 3, 4, and 5, in sum, invalidated every Challenged Claim" (Paper 42 at 73, quoted in Paper 43). Pull the FWD from PTAB E2E / Docket Alarm's IPR2024-01405 docket and be ready to deploy it the moment it becomes final. Consider moving the E.D. Tex. court to stay or dismiss pending the Director Review outcome, or at least briefing that the FWD resolves all asserted claims.
  2. Watch the pending Director Review: Patent Owner's Request (Paper 43, 2026-04-06) and Samsung's response (Paper 44, 2026-04-14) are fully briefed. No decision had issued as of ~2026-08-26. Director Review of a FWD is granted only in narrow circumstances (abuse of discretion, important issues of law/policy, material factual error, legal error), and the first Director Review request here was denied — so denial is the likelier path, but check PTAB E2E/Unified Patents docket feed for the order.
  3. If the Director denies review, the FWD becomes final; watch for the certificate of cancellation canceling claims 1–20. At that point the '826 patent is unassertable, the E.D. Tex. case should collapse, and any demand letter citing claims 1–20 can be answered with the certificate. If the patent owner then appeals to the Federal Circuit (its 63-day window runs from the final agency decision), the claims remain dead during appeal unless a stay is obtained — the FWD's unpatentability findings are not stayed merely by filing an appeal.
  4. If you are not Samsung and receive a demand now: do not assume the claims are canceled yet, but do not fear them either. The complete invalidation record — including the Board's claim construction of "on a bottom surface" (no direct-contact requirement), the Gambino+Conn obviousness analysis, and the Torii/Ide anticipation analyses — is public and gives you a ready-made § 102/§ 103 case plus a Fintiv-style argument that the PTAB has already fully adjudicated these claims.

Generated 9/2/2026, 12:48:54 PM

Ownership chain (3)

Asserters network →

Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.

  1. 2014-01-20 · recorded 2014-01-27 · reel 032055/0839 · Assignment

    Hadi Jebory, David J. Howard, Scott B. StetsonNewport Fab, LLC dba Jazz Semiconductor

  2. ? · recorded 2022-12-08 · reel 062102/0979 · Change of Name

    Newport Fab, LLC dba Jazz SemiconductorNewport Fab, LLC dba Tower Semiconductor Newport Beach

    change of name only

  3. ? · recorded 2023-03-24 · reel 063094/0412 · Assignment

    Newport Fab, LLC d/b/a Tower Semiconductor Newport Beach, Inc.Harbor Island Dynamic LLC

    transfer-to-asserter

Assignment history

Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.

✓ Generated

Note on method: I attempted USPTO Assignment Center queries for correspondent-of-record details on each reel/frame but was rate-limited before retrieving the correspondent fields. Below, every conveyance, date, and reel/frame comes from the Google Patents legal-event feed for the '826 patent (which mirrors USPTO assignment records), cross-checked against SEC filings, RPX/Mondaq coverage, and the PTAB record. Where I could not verify a field (notably the correspondent of record), I say so explicitly rather than guessing.


Inventors

Inventor City (per assignment) Employer at filing (determinable)
Hadi Jebory Irvine, CA Newport Fab, LLC dba Jazz Semiconductor (Newport Beach, CA)
David J. Howard Irvine, CA Newport Fab, LLC dba Jazz Semiconductor
Scott B. Stetson Huntington Beach, CA Newport Fab, LLC dba Jazz Semiconductor

All three inventors assigned their rights to Newport Fab, LLC dba Jazz Semiconductor in a single assignment (reel 032055/0839, executed 2014-01-20, recorded 2014-01-27 — the same day the application was filed). Newport Fab/Jazz was Tower Semiconductor's specialty analog/RF foundry subsidiary (later "Tower Semiconductor Newport Beach"). The subject matter (backside metal adhesion for power-amplifier / wireless die) matches Jazz's RF/analog foundry process work. Unusual pattern: none verified — I found no evidence that the inventors departed Newport Fab shortly after filing, and no inventor-departure "fire-sale" tell.


Original assignee

  • Entity on the issued patent: Newport Fab, LLC dba Jazz Semiconductor (recorded assignee from the inventors via reel 032055/0839; Google Patents lists "Newport Fab LLC" as original assignee).
  • Line of business: Specialty semiconductor foundry (analog/mixed-signal, RF, power management, image-sensor process technologies) under the Jazz Semiconductor brand; a wholly owned subsidiary of Tower Semiconductor Ltd. since 2008 (colloquially "Tower Jazz").
  • Product embodying the claims: Unclear. The patent describes a process/design technique for unpatterned backside ground metal used in power-amplifier and wireless die — squarely within Jazz/Tower's foundry service offerings — but I found no public statement tying a specific shipped product to claim 1.
  • Current status: Operating. The fab entity was renamed Newport Fab, LLC dba Tower Semiconductor Newport Beach (effective 2021-05-12, recorded 2022-12-08, reel 062102/0979) and continues to operate as a Tower subsidiary. The 2023 patent sale to Harbor Island Dynamic was a portfolio divestiture, not a sale of the fab. (Tower itself remains independent after the terminated Intel acquisition.)

Assignment timeline

Only three recorded conveyances appear on the '826 assignment record (per Google Patents legal events). I found no record of assignments to any defensive aggregator and no additional post-issuance LLC-to-LLC transfers beyond those below.

2014-01-20 (executed) / 2014-01-27 (recorded) — Reel 032055/0839

  • Conveyance: Assignment of Assignors Interest
  • Assignor: Hadi Jebory, David J. Howard, Scott B. Stetson
  • Assignee: Newport Fab, LLC dba Jazz Semiconductor
  • Correspondent: not retrievable in my searches (this is the inventor-to-employer chain-of-title step; the correspondent would have been Newport Fab's counsel, not an NPE firm).
  • Context: Standard assignment of rights from the three inventors to their employer, recorded contemporaneously with the January 27, 2014 filing of application 14/165,377.

2021-05-12 (effective) / 2022-12-08 (recorded) — Reel 062102/0979

  • Conveyance: Change of Name
  • Assignor: Newport Fab, LLC dba Jazz Semiconductor
  • Assignee: Newport Fab, LLC dba Tower Semiconductor Newport Beach
  • Correspondent: not retrievable in my searches.
  • Context: Internal re-branding only — the operating fab subsidiary's name was aligned with Tower Semiconductor's branding; no change in ownership or control.

2023-02-02 (effective) / 2023-03-24 (recorded) — Reel 063094/0412

  • Conveyance: Assignment of Assignors Interest
  • Assignor: Newport Fab, LLC d/b/a Tower Semiconductor Newport Beach, Inc.
  • Assignee: Harbor Island Dynamic LLC (Texas LLC, formed January 2023; wholly owned subsidiary of Quest Patent Research Corporation)
  • Correspondent: not retrievable in my searches. (Context tell: QPRC's corporate HQ is 411 Theodore Fremd Ave., Suite 206S, Rye, NY 10580 — the same address as Fabricant LLP, which appears as counsel of record for Harbor Island Dynamic in both the E.D. Tex. litigation and IPR2024-01405. Fabricant is almost certainly the filing firm for QPRC/HID recordings, but I could not verify the correspondent field on this reel.)
  • Context: Portfolio sale — the '826 patent was one of a 7-to-10 patent "HID Portfolio" (QPRC's 8-K says ten patents; RPX/Mondaq says seven U.S. patents) sold by the Tower fab subsidiary to QPRC's newly formed, purpose-built licensing subsidiary for a $3.3 million cash purchase price funded by QPRC Finance III LLC under a monetization financing facility; QPRC's SEC filings disclose that Tower retained a contractual share of future net proceeds.

Additional recorded-document caveat: QPRC's March 2023 8-K states a Patent Security Agreement in favor of QPRC Finance III LLC was "filed with the USPTO" to perfect a security interest in the HID Portfolio. That would be a Security Agreement (not an assignment) and I could not verify whether or how it was recorded against the '826 patent specifically; the Google Patents legal-event feed for '826 shows only the three conveyances above, plus maintenance-fee payments (2019, 2023) and the 2024 IPR filing.

Verification: USPTO Assignment Center — https://assignmentcenter.uspto.gov/ (search by patent 9245826) or https://assignment.uspto.gov/patent/index.html#/patent/search.


Timeline diagram

timeline
    title Ownership of US 9245826
    2014 : Filed by Newport Fab Jazz
         : Inventors assign to Newport Fab
    2016 : Patent issued Jan 26
    2021 : Rebrand effective May 12
    2022 : Name change recorded Dec 8
    2023 : Sold to Harbor Island Dynamic LLC
         : Transfer recorded Mar 24
    2024 : Suit filed vs Samsung in EDTX
         : IPR2024-01405 petition filed
    2026 : Final written decision invalidates claims

NPE / troll-pattern signals

1. Shell-entity transfer — PRESENT. Reel 063094/0412 (recorded 2023-03-24) moved the '826 patent from an operating foundry subsidiary (Newport Fab LLC dba Tower Semiconductor Newport Beach — a real fab with employees and products) to Harbor Island Dynamic LLC, a Texas LLC formed in January 2023 and described by its parent in SEC filings and on qprc.com as a newly formed, wholly owned subsidiary created to purchase and monetize the Tower patents. HID sells no products; its only activity is assertion (E.D. Tex. 2:24-cv-00140). The name suffix ("Dynamic") alone proves nothing, but QPRC's own 10-K/8-K describing HID as a monetization vehicle is concrete evidence.

2. Known asserter in the chain — PRESENT. The current owner, Quest Patent Research Corporation (OTC: QPRC), states in its 10-K that it has "been engaged in the intellectual property monetization business since 2008," operates through wholly owned subsidiaries (Harbor Island Dynamic, MR Licensing, Flash Uplink, Koyo Licensing, etc.), and has been repeatedly covered by RPX as a litigation monetizer (RPX article "QPRC's Harbor Island Files First Suit," Mondaq, Feb. 2024). HID filed its first suit against Samsung on 2024-02-27 asserting the '826 patent, and is the patent owner in IPR2024-01405. QPRC's funding chain (QPRC Finance LLC / QPRC Finance III LLC, and earlier Intelligent Partners, whose principals are tied to other NPEs) reinforces the pattern.

3. Repeat correspondent across the chain — UNCLEAR. I could not retrieve the correspondent-of-record field for reels 032055/0839, 062102/0979, or 063094/0412. What is verifiable: Fabricant LLP (Richard Cowell, Joseph Mercadante) is counsel of record for Harbor Island Dynamic in the E.D. Tex. case and IPR2024-01405, and Fabricant's Rye, NY address (411 Theodore Fremd Ave., Suite 206 South) is the same building/suite complex as QPRC's corporate HQ — strong circumstantial evidence that one firm runs the QPRC/HID patent work end-to-end, but not a confirmed "same correspondent on multiple reels" finding.

4. Cascading transfers — NOT PRESENT. The chain is only three recorded conveyances over nine years (inventors → Newport Fab 2014; name change 2022; Newport Fab → HID 2023). There is no rapid-fire LLC-to-LLC cascade.

5. Pre-litigation transfer — NOT PRESENT (by the stated 6-month rule), with context. Reel 063094/0412 was recorded 2023-03-24; the first infringement suit naming '826 was filed 2024-02-27 — roughly 11 months later, outside the 6-month window. However, the surrounding record shows the transfer was arranged to enable assertion: HID was formed in January 2023, the purchase was funded on 2023-03-17 by QF3 under a facility whose stated purpose was acquiring "patent rights that [QPRC] intends to monetize," and the first suit followed ~11 months later.

6. Bankruptcy fire-sale — NOT PRESENT. Neither Newport Fab nor Tower Semiconductor was in bankruptcy when the '826 patent was sold. (QPRC, the buyer, averted its own bankruptcy in 2021 via rescue financing from QPRC Finance LLC — but that is the NPE's financial history, not a bankruptcy sale of this patent.)

7. Privateering — PRESENT (moderate). An operating foundry (Tower/Newport Fab) transferred the patent to an NPE subsidiary while, per QPRC's March 2023 8-K, Tower retained a contractual percentage of future net proceeds from monetization. HID then asserted the patent against Samsung, a semiconductor manufacturer with its own foundry and image-sensor business. The revenue-share economics are documented in SEC filings; the direct competitor nexus (Tower vs. Samsung) is inferred rather than proven — hence "moderate."

8. Defensive aggregator (anti-NPE) — NOT PRESENT. The chain terminates at Harbor Island Dynamic LLC, an asserting entity. No RPX, AST, LOT Network, Unified Patents, or OIN entity appears anywhere in the record.


Verdict

NPE — high confidence.

The '826 patent was transferred (reel 063094/0412, recorded 2023-03-24) from an operating foundry subsidiary to Harbor Island Dynamic LLC, a purpose-formed, wholly owned subsidiary of Quest Patent Research Corporation, a publicly traded patent-monetization company whose own SEC filings describe the acquisition as a monetization investment with Tower retaining a share of proceeds — and HID filed suit against Samsung within roughly a year (E.D. Tex. 2:24-cv-00140, 2024-02-27). Signals 1 (operating-company → licensing-only LLC), 2 (QPRC is a recognized, RPX-tracked assertion entity), and 7 (documented revenue-share privateering economics) combine to well exceed the two-strong-signal threshold. Notably, this is also a failed monetization bet: the PTAB Final Written Decision in IPR2024-01405 (2026-03-13) found all claims 1–20 unpatentable, with Director Review pending as of this analysis.

Verification: USPTO Assignment Center (https://assignmentcenter.uspto.gov/) and the recorded reels cited above; QPRC SEC filings (10-K filed 2025-03-26, accession 0001013762-25-002745; 8-K of 2023-03-16/17); RPX/Mondaq, "QPRC's Harbor Island Files First Suit"; QPRC corporate site (qprc.com/harborislanddynamicsllc); PTAB record IPR2024-01405 (DocketAlarm).

Generated 9/2/2026, 12:49:04 PM

Prior art

Earlier patents, publications, and products that may anticipate or render the claims unpatentable.

✓ Generated

I'll research the cited prior art references for US Patent 9,245,826. Let me start with the patent citations listed in the patent itself and verify against USPTO records.

I have good detail on both examiner-cited references. Now let me confirm the citation list on the USPTO record itself for patent 9245826, and check the publication history of both references for proper § 102 analysis.

Let me verify a few more details on the Qualcomm reference (inventors, application publication) and confirm the examiner citation list on the face of the '826 patent.

I have reached the tool-call limit for this session, so I'll answer based on the verified search results obtained and the authoritative patent text supplied. A note on method up front: I searched for the exact patent number 9245826 and its face citations; every result returned corresponded to U.S. Patent No. 9,245,826 B2 ("Anchor vias for improved backside metal adhesion to semiconductor substrate"). No similar-numbered patents were substituted.


1. USPTO database confirmation for patent 9,245,826

Per the USPTO-record data (mirrored on Google Patents, and used as Ex. 1001 in IPR2024-01405), U.S. Patent No. 9,245,826 B2 has:

  • Title: Anchor vias for improved backside metal adhesion to semiconductor substrate
  • Application: 14/165,377, filed 2014-01-27; provisional priority 61/776,063, filed 2013-03-11
  • Issue date: 2016-01-26
  • Independent claims: 1 (structure) and 11 (method); claims 2–10 and 12–20 depend respectively from claims 1 and 11.

The complete examiner citation list on the face of the '826 patent consists of exactly two references (both marked "cited by examiner" on the USPTO/Google Patents record):

Ref. Patent Assignee Title
1 US 8,431,481 B2 Texas Instruments Inc. IC device having low resistance TSV comprising ground connection
2 US 8,710,629 B2 Qualcomm Inc. Apparatus and method for controlling semiconductor die warpage

There are no other U.S. patents or published applications in the "Patent Citations" field of the '826 patent. (A third document, US 11,308,257 B1, appears only in the "Cited By" field — it cites the '826 patent and is therefore not prior art to it.)


2. Statutory framework (important for any § 102 analysis)

The '826 patent claims priority to a provisional application filed March 11, 2013 — before the AIA transition date of March 16, 2013. Its effective filing date is therefore March 11, 2013, and the patent is examined under pre-AIA 35 U.S.C. § 102. Under pre-AIA § 102(b), the one-year critical date is measured from the U.S. filing date (Jan. 27, 2014), i.e., Jan. 27, 2013. Under pre-AIA § 102(e), a U.S. patent to another is prior art as of its earliest U.S. filing date.

For a single reference to anticipate under § 102, it must disclose every claim element, arranged as in the claim, either expressly or inherently — including negative limitations.


3. Reference 1 — US 8,431,481 B2 (Dunne et al. / Texas Instruments)

Full citation: Dunne, R.; Morrison, G. P.; Chauhan, S. S.; Murtuza, M.; Bonifield, T. D., "IC Device Having Low Resistance TSV Comprising Ground Connection," U.S. Patent No. 8,431,481 B2, issued April 30, 2013.

  • Filing/prosecution chain: Divisional of application 13/444,545 (filed Apr. 11, 2012); parent 12/463,086 (filed May 8, 2009, issued as US 8,178,976 B2); provisional 61/052,471 (filed May 12, 2008).
  • Printed-publication dates that matter for § 102(b): US 2009/0278244 A1 published Nov. 12, 2009 (more than one year before both the critical date and the '826 filing date, so it is § 102(b) art); later publications US 2012/0193814 A1 (Aug. 2, 2012) and US 2012/0202321 A1 (Aug. 9, 2012) also precede Jan. 27, 2013 and qualify as § 102(b) printed publications. The April 30, 2013 grant itself is not § 102(b) art (it issued after the critical date), but the reference independently qualifies as § 102(e) art via its U.S. filing dates of May 8, 2009 / Apr. 11, 2012 (before the '826's filing date).

Brief description: The patent addresses high-resistance grounding of TSV tips to a package substrate (e.g., die paddle) in analog/RF ICs such as power amplifiers. It discloses an IC die having TSVs whose electrically conductive filler extends out of the backside as "protruding integral tips" (tip height typically 1–50 μm), with a metal layer formed on the bottom surface of the die and over the sidewalls and distal end of the protruding tips — creating a low-resistance, metal-on-metal ground path. The TSVs are coupled on the front side to ground pads of functional circuitry. Notably, this exact reference was also filed as Exhibit 1023 in IPR2024-01405 by Samsung.

Element-by-element § 102 check against independent claim 1 (and mirrored method claim 11):

  • Metal filler within a via having a protruding portion extending from the backsidedisclosed (protruding integral tips 104/216/217).
  • Backside metal layer on the bottom surface bonded to the protruding portiondisclosed (metal layer 112/220 on the bottom surface and over the tips).
  • At least one anchor via disposed in at least one cornernot disclosed; Dunne places ground TSVs where electrical grounding is needed, with no corner/periphery anchoring requirement.
  • Metal filler does not provide ground connection to active devices (negative limitation)expressly contradicted. Dunne's entire purpose is to provide low-resistance ground connections to active RF/analog circuitry via ground pads; the TSVs are the opposite of the claimed floating mechanical "anchor vias."

Anticipation conclusion: US 8,431,481 B2 is the closest structural prior art to the claimed protruding-filler/backside-metal "rivet" feature, but it does not anticipate any claim of the '826 patent. Because it fails (indeed teaches away from) the "does not provide ground connection" limitation of claim 1 and the "corner" placement, and because claims 2–10 incorporate those limitations by dependency, it likewise does not anticipate claims 2–10 or the method claims 11–20. Its proper role is as obviousness fodder — it squarely supplies the protruding-portion + backside-metal structure that combination grounds would need.


4. Reference 2 — US 8,710,629 B2 (Qualcomm)

Full citation: "Apparatus and Method for Controlling Semiconductor Die Warpage," U.S. Patent No. 8,710,629 B2, assignee Qualcomm Incorporated, issued April 29, 2014.

  • Filing/publication: U.S. application (family) filed Dec. 17, 2009 (priority date Dec. 17, 2009 per USPTO record); published as US 2011/0147895 A1 on June 23, 2011. Inventor names were not independently verified in my searches; the assignee and bibliographic data are confirmed. (Caveat noted below.)
  • § 102 status: The June 23, 2011 publication precedes Jan. 27, 2013 by more than one year → § 102(b) prior art via that printed publication, and § 102(e) prior art via the Dec. 17, 2009 U.S. filing. As with '481, the April 29, 2014 grant date itself post-dates the '826's filing and is not itself the § 102(b) event.

Brief description: The patent addresses die/package warpage caused by CTE mismatch and residual stress, which concentrates at die corners and degrades interconnect reliability. It discloses metal-filled "stress relief vias" (e.g., Cu or W) placed in the peripheral region and around the corners of the die (FIG. 4, vias 42; optionally "round corner vias," FIG. 5, vias 55) to tune the die's CTE and relieve stress. The vias are expressly described as non-signal-carrying dummies (with an option to carry signals in other embodiments).

Element-by-element § 102 check against claim 1 (and claim 11):

  • At least one anchor via disposed in at least one cornerdisclosed (stress relief vias placed around the corners/periphery).
  • Metal filler does not provide ground connection to active devicesarguably disclosed for the dummy/non-signal-carrying embodiment (the vias are stress-relief structures, not ground feeds).
  • Metal filler having a protruding portion extending from a backsidenot disclosed; the Qualcomm vias are conventional through-silicon vias used to control warpage, with no protruding backside tip teaching.
  • Backside metal layer on the bottom surface bonded to the protruding portionnot disclosed; '629 is silent on any backside metal adhesion structure.

Anticipation conclusion: US 8,710,629 B2 supplies the corner-located, non-grounding, dummy-via concept — the purpose half of the '826 invention — but is silent on the physical anchoring mechanism (protruding filler + bonded backside metal) that is the heart of claims 1 and 11. It therefore does not anticipate any claim (1–20) of the '826 patent. Its relevance is limited to the corner-placement and floating/dummy-via limitations.


5. Bottom line on § 102 anticipation of US 9,245,826

  • Neither of the two face citations (US 8,431,481 B2; US 8,710,629 B2) anticipates any claim of the '826 patent, individually. US 8,431,481 B2 fails the negative "no ground connection to active devices" limitation and the "corner" requirement; US 8,710,629 B2 fails the protruding-filler and bonded-backside-metal limitations. Since all dependent claims (2–10, 12–20) depend from claims 1/11 and add further limitations (clusters, straight/staggered lines, linear density <10%, total area <0.5%, layer stack, overlying-metal bond, insulating layer), no dependent claim can be anticipated by either reference either.
  • The two references are complementary to each other, however: Dunne teaches the structure (protruding TSV tips + backside metal) while Qualcomm teaches the placement and floating function (corner dummy vias not connected to circuitry). That complementarity is why the examiner listed both — their anticipation value is nil, but their combined obviousness value is what matters.
  • Separately and per the prior sections of this analysis: the art that actually proved dispositive was not these two face citations. In IPR2024-01405, the Board's March 13, 2026 Final Written Decision found claims 1–20 unpatentable on the petitioner's combination/anticipation grounds (Conn; Gambino + Conn ± Ding; Torii; Ide), while Grounds 1–2 did not prevail. Dunne '481 was nevertheless submitted into that IPR as Ex. 1023, and the PTAB's treatment of the "does not provide ground connection" negative limitation (see the Director Review record excerpts quoted in my searches) confirms that this limitation — the very one that blocks anticipation by Dunne '481 — was the central disputed issue.

6. Uncertainty notes

  • Inventor names for US 8,710,629 B2 were not confirmed from my search results; I have listed only the confirmed assignee (Qualcomm), title, and dates rather than risk misidentifying the inventors. The inventors listed on the USPTO grant can be verified in Patent Center/Google Patents.
  • Pre-AIA characterization: I treated the '826 patent as pre-AIA because its earliest effective filing date (Mar. 11, 2013 provisional) precedes the Mar. 16, 2013 AIA transition date. If a different effective-filing-date analysis were applied (e.g., one treating the Jan. 27, 2014 non-provisional filing as the operative date under AIA § 102), the references would still qualify as prior art under AIA § 102(a)(1)/(a)(2) since both were published/patented and had U.S. filings well before Jan. 27, 2014 — so the anticipation outcome is unchanged.
  • The IPR Final Written Decision findings (claims 1–20 unpatentable on Grounds 3–5) are not yet finalPatent Owner's Request for Director Review was pending as of this analysis date.

Key sources: Google Patents full text for US9245826B2 (patents.google.com/patent/US9245826/en); USPTO/PTACTS Director Review petition record for IPR2024-01405; Google Patents records for US8431481B2 and US8710629B2; Docket Alarm exhibit record for IPR2024-01405 (Ex. 1023 = US 8,431,481 Dunne).

Generated 9/2/2026, 12:48:56 PM

Obviousness

Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.

✓ Generated

Obviousness Analysis of U.S. Patent 9,245,826 Under 35 U.S.C. § 103

Scope and ground rules

This analysis evaluates whether the claims of U.S. Patent 9,245,826 B2 (the "'826 patent," "Anchor vias for improved backside metal adhesion to semiconductor substrate") would have been obvious to a person of ordinary skill in the art (POSITA) as of the March 11, 2013 priority date. It uses the prior-art record developed in the patent's own prosecution and in IPR2024-01405 (Samsung Electronics v. Harbor Island Dynamic), which is the most complete prior-art mapping available. Caveats up front:

  • No "Prior Art" section was included in the supplied materials, so I have reconstructed the relevant art from (a) the examiner-cited references on the face of the '826 patent (US 8,431,481 B2 and US 8,710,629 B2), and (b) the IPR2024-01405 exhibit list and party filings, which identify the primary references as Conn (US 2009/0079056 A1), Gambino (US 2014/0138844 A1), Ding (US 2012/0104546 A1), Torii (US 2013/0082382 A1), and Ide (US 2012/0256310 A1) (Docket Alarm exhibit list, Exs. 1004–1010).
  • The Final Written Decision (FWD, March 13, 2026) is not yet final — Patent Owner's Director Review request is pending as of the analysis date — so I treat the Board's unpatentability findings as persuasive but not conclusive.
  • Reference identifiers are quoted literally as they appear in the record (e.g., "US 2009/0079056," not auto-corrected).

I. The claimed invention in one paragraph

The '826 patent addresses peeling of an unpatterned backside metal stack (the die's common ground) from the substrate during die singulation, pick-and-place, and years of operation. Its solution is mechanical, not electrical: "anchor vias" — metal-filled vias placed in corners and/or along the periphery of the die — whose metal filler protrudes from the backside, so the subsequently deposited backside metal forms a strong metal-on-metal bond around the protrusion (a "rivet"). The distinguishing negative limitation (claims 1 and 11): the anchor-via filler "does not provide ground connection to one or more active devices" — it is deliberately non-functional electrically (floating). Dependent claims add: clusters (claims 2, 12); perpendicular orientations within a cluster (3, 13); straight-line (4, 14) or staggered (6, 16) peripheral arrays; linear density <10% (5, 15); total via area <0.5% of substrate area (7, 17); a multi-layer backside stack (8, 18); filler bonded to an overlying (front-side) metal layer (9, 19); and an insulating layer between substrate and filler (10, 20).


II. The relevant prior art

Ref. ID (literal) Title / subject Key teaching relevant to § 103
Conn US 2009/0079056 A1 (Ex. 1004) "Large Substrate Structural Vias" (R. Conn; pub. Mar. 26, 2009) Uses the exact term "anchor via": a via conductor 14 in a via 12 acts as a "rivet" securing a conducting layer 20 (e.g., copper) to a carrier/silicon substrate against thermal-fatigue delamination. Vias may be through-vias or blind. Conducting layer covers a major part of the substrate surface (≥10%). Figure 2 shows twelve "copper rivets" distributed across the layer.
Gambino US 2014/0138844 A1 (Ex. 1005) "Patterned Backside Metal Ground Plane for Improved Metal Adhesion" (IBM; pub. May 22, 2014) Solves peeling of backside metal from die corners/edges during dicing. Backside metal (ground plane) is patterned into pads — including "dummy metal pads" at corners and periphery for mechanical support — over TSVs; metal is kept out of dicing channels. Expressly motivated by corner/edge peeling stress at the metal–Si interface. RF/HBT emitter-ground context, i.e., the same power-amplifier/wireless application the '826 patent targets.
Ding US 2012/0104546 A1 (Ex. 1008) TSV structures with insulating liners Standard dielectric (e.g., oxide) liner between Si and via metal — relevant to claims 10/20 (insulating layer).
Torii US 2013/0082382 A1 (Ex. 1009) "Semiconductor Device" (TSV electrodes with main and sub-bumps) TSV electrodes with metal plugs and rear-side protrusions/bumps extending from the rear surface of a substrate.
Ide US 2012/0256310 A1 (Ex. 1010) "Semiconductor Device" (Elpida; stacked-chip alignment marks) Through-electrode TSV for a mark with a rear bump and insulating trench; via metal connected to rear-side metal features.
Dunne US 8,431,481 B2 (Ex. 1023; also examiner-cited) "IC device having low resistance TSV comprising ground connection" (TI) Conventional grounding TSV architecture — useful as the counterpoint the '826 patent distinguishes; also evidence of the standard TSV fabrication toolbox.
Qualcomm US 8,710,629 B2 (examiner-cited) Die-warpage control using structures in the substrate Evidence that structural (non-signal) substrate features for mechanical purposes were a known design tool before 2013.

All of Conn, Gambino, Ding, Torii, and Ide are prior art under § 102(a)/(e) relative to the March 11, 2013 priority date (Conn published 2009; Gambino filed Nov. 21, 2012 — before the critical date, though published after — and claims priority no earlier than its filing date, so it qualifies as § 102(a)(2) art; Torii and Ide published in 2012–2013 before March 11, 2013).


III. Legal framework

Obviousness under 35 U.S.C. § 103 follows Graham v. John Deere: (1) scope and content of the prior art; (2) differences between the prior art and the claims; (3) level of ordinary skill; (4) secondary considerations. Under KSR Int'l v. Teleflex, a combination of known elements is obvious when a POSITA would combine them "by known methods" with a "reasonable expectation of success," especially where the combination "yields predictable results" and merely "unites old elements with no change in their respective functions."

Level of skill: A POSITA would hold a B.S./M.S. in electrical engineering, materials science, or equivalent, with 3–5 years in semiconductor back-end/front-end-of-line integration, including TSV formation, backside metallization, and die singulation. They would be familiar with the standard TSV process flow (lithography, DRIE, dielectric liner deposition, metal fill, backside grind/polish, backside metal deposition) disclosed in essentially identical terms in Gambino, Conn, and the examiner-cited Dunne patent.


IV. The differences between the prior art and the claims (and why they are small)

The '826 patent concedes (col. 1) that backside metal stacks with an adhesive interface layer were conventional. Its contribution is narrow: add metal-filled vias at the corners/periphery whose protruding filler is mechanically bonded to the backside metal, and leave those vias electrically floating. Measured against the art:

  1. "Anchor via" as a rivet for a metal layer on a substrate — fully disclosed by Conn, using the same word ("anchor via") and the same metaphor ("rivet"), for the same failure mode (delamination of a conducting layer from a substrate under stress).
  2. Corner/periphery placement to resist dicing peel — fully disclosed by Gambino, which places dummy backside metal pads at corners and edges specifically because that is where dicing-induced peeling stress is highest.
  3. Protruding filler bonded to the backside metal — Conn's via conductors contact and "penetrate" the conducting layer (Fig. 2 "copper rivets" through the layer); Gambino's TSVs land on backside metal pads. Making the via stud protrude before depositing the backside metal is an ordinary process choice within both disclosures.
  4. Negative limitation (no ground connection to active devices) — Conn's structural anchor vias are mechanical; nothing requires them to be tied to device circuitry, and Conn describes supplying some via conductors with "a control signal/electrical potential" only as an option. Gambino's dummy pads are, by definition, not electrically connected. A POSITA designing a purely mechanical anchor would simply omit any connection to device nodes — there is no teaching away, and the '826 specification itself says the filler "essentially has a floating voltage potential."

The genuinely arguable gaps in any single reference are (i) the combination of "corner placement" with "anchor via rivet," and (ii) the explicit non-grounding character. Those are exactly the gaps the Gambino + Conn combination fills.


V. The operative obviousness combinations

Combination A — Gambino in view of Conn (primary ground; renders claims 1–9 and 11–19 obvious)

Proposed combination: Start with Gambino's semiconductor die (RF/HBT die with backside ground plane and TSVs, patterned backside metal with dummy pads at corners/periphery for mechanical support against dicing peel) and apply Conn's anchor-via rivets to secure the backside metal pads to the substrate.

Element-by-element mapping for claim 1:

Claim 1 limitation Gambino Conn (supplying the gap)
"at least one anchor via disposed in at least one corner of a semiconductor substrate" Dummy metal pads at the corners of die 10; substrate 5 is a semiconductor substrate Anchor via 12/14 (via + via conductor) secured to the conducting layer — added at the corner pad locations
"a metal filler within said at least one anchor via, having a protruding portion extending from a backside" TSV 12 metal fill exposed at the backside after grind/polish Via conductor 14 as a "rivet" that penetrates/contacts conducting layer 20 — protruding filler is inherent where the via is filled before the backside metal is laid down
"a backside metal layer on a bottom surface... bonded to said protruding portion" Patterned backside metal ground plane 16 / pads 16a on the backside Conn's metal-on-metal contact between via conductor and conducting layer
"wherein the metal filler does not provide ground connection to active devices" Dummy pads are non-electrical Conn's anchor vias are structural; no device connection required

Claims 2–9 and 11–19: The cluster claims (2, 12) map to Gambino's corner clusters of dummy pads; perpendicular orientation (3, 13) and straight-line/staggered arrays (4, 6, 14, 16) are routine layout choices for pad/via arrays already present in Gambino's figures and Conn's Figure 2 distribution; the <10% linear density (5, 15) and <0.5% area (7, 17) limits are sparse-placement design parameters that the '826 patent itself frames as preferences to avoid cleavage planes and Faraday-cage RF effects — selecting a low density of structural vias is a predictable optimization, not a new function; the multi-layer stack (8, 18) is Gambino's standard backside metal (and conventional Ti/Ni/Cu/Au stacks of record); bonding filler to an overlying metal layer (9, 19) is Conn's own teaching of conducting layers on both substrate surfaces interconnected by via conductors.

Combination B — Gambino + Conn + Ding (claims 10 and 20)

Claims 10/20 add "an insulating layer disposed between the semiconductor substrate and the metal filler." Lining a TSV (or anchor via) with silicon dioxide or another dielectric before metal fill was the industry-standard practice (the '826 patent itself describes it as "optional," col. 3). Ding (Ex. 1008) discloses exactly that liner in a TSV context, and both Torii and Ide disclose insulating trenches around through-electrodes. Adding a liner to the Gambino+Conn via is a textbook application of a known technique to a known structure — obvious under KSR's "known technique" rationale.

Combination C — Conn alone or Conn + conventional corner placement (claims 1, 2, 4, 5, 7, 9, 11, 12, 14, 15, 17, 19)

The IPR petition pressed anticipation over Conn for these claims (Ground 1). Even if one accepts Patent Owner's textual arguments that Conn does not expressly mention "corner" placement or dicing protection, Conn still renders these claims obvious: Conn's whole purpose is securing a large-area conducting layer to a substrate with distributed rivets against stress-induced delamination; placing some rivets near the die corners — where Conn itself teaches stress concentrates (thermal cycling fatigue concentrates at package corners, a fact Conn's background acknowledges) — and spacing them sparsely is an obvious design choice. The Board's institution decision credited Conn for the anchor-via, protruding-filler, metal-bonded, non-grounding features; the only contestable limitation is "corner," which Gambino supplies.

Combination D — Torii-based combinations (claims 1, 8–11, 18–20)

Torii discloses TSV plugs formed integrally with rear-side protrusions (rear bumps) on a substrate — a direct analog of the claimed "protruding portion extending from a backside." Patent Owner's objections were (i) that Torii's vias make electrical connections (including static-electricity discharge/grounding), and (ii) that Torii lacks a claimed backside metal layer bonded to the protrusion. Both objections evaporate under § 103: a POSITA would take Torii's protruding rear-bump structure and leave the protrusion unconnected to active devices (the negative limitation is a mere absence of a function, and the '826 specification itself describes the floating-filler embodiment), and would combine it with Gambino's backside metal layer or Conn's conducting layer to obtain the metal-on-metal bond. The result — a protruding, floating, metal-filled via at a die corner bonded into a backside metal ground plane — is the claimed invention.

Combination E — Ide-based combinations

Ide (Elpida, 2012) discloses a through-electrode TSV for an alignment mark, with a rear bump and insulating trench — i.e., via metal tied to rear-side metal features, in a corner/peripheral location (mark regions). Patent Owner's response that Ide's "metal layer is not on the semiconductor surface" goes to the exact placement of the rear metal, which Conn/Gambino supply. Ide is best used as a secondary reference confirming (a) protruding rear via metal, (b) insulating trenches, and (c) non-signal, structurally/optically functional vias were known before 2013.


VI. Motivation to combine and reasonable expectation of success

  1. Same field and same problem. Gambino and the '826 patent address literally the same problem — backside metal peeling at die corners/edges during dicing of RF dies with blanket backside ground metal (compare Gambino ¶¶ [0015]–[0017] with '826 col. 1). Conn addresses the cognate problem of conducting-layer delamination under stress. A POSITA working on Gambino-type die yield would naturally consult Conn-type anchor-rivet art.

  2. Complementary, non-competing solutions. Gambino solves dicing peel by patterning the metal; Conn solves delamination by mechanically riveting the metal to the substrate. There is no conflict: Conn's anchor vias can be added to Gambino's dummy pads without altering Gambino's electrical design because the pads are dummies. The IPR petition correctly characterized this as a "fail-safe" combination covering both manufacturing-phase (dicing) and operational-phase (thermal fatigue) stresses.

  3. Predictable result; no new function. Each element retains its known function: the via anchors the metal (Conn); the dummy pad sits at the high-stress corner (Gambino); the liner isolates (Ding/Torii/Ide). This is precisely the KSR "predictable variation" scenario. The claimed "floating" filler is the absence of an electrical hook-up — the default state of Conn's structural vias and Gambino's dummy pads.

  4. Shared fabrication toolbox. Gambino already fabricates TSVs; forming Conn-style anchor vias uses the same lithography/etch/liner/fill sequence. The institution decision found the combination "would have been obvious" with a high expectation of success for exactly this reason, and the FWD (per the Patent Owner's own Director Review filing, Apr. 6, 2026) found all challenged claims 1–20 unpatentable.

  5. Secondary considerations. No objective indicia of non-obviousness (long-felt need, commercial success, licensing, copying, unexpected results) are evident in the record. To the contrary, the rapid, near-identical solutions in Gambino (IBM, 2012) and Conn (2009) indicate a crowded field with multiple independent groups converging on mechanical backside-metal retention.


VII. Counterarguments and their limits

A Patent Owner would press three points:

  1. Conn does not mention "corners" or dicing. Correct as to Conn alone — which is why the combination with Gambino (which places dummy pads at corners precisely for dicing-peel resistance) is the stronger ground, and why the FWD (per available summaries) did not rest on Conn anticipation alone for all claims.
  2. Gambino's metal pads are ground pads, so the filler would "provide ground connection." This conflates Gambino's signal/ground TSV pads with its dummy pads. The combination maps the anchor via to the dummy pads, which are non-electrical; the negative limitation is thus satisfied. Torii presents the mirror-image weakness for Patent Owner: its vias are functional, but nothing prevents a POSITA from omitting the connection.
  3. The density/area ranges (claims 5, 7) are not disclosed in the art. These are functional preferences the '826 specification itself derives from the cleavage-plane and Faraday-cage concerns; a POSITA selecting sparse placement would arrive at <10% linear density and <0.5% area by routine optimization. However, if the Board's FWD did not specifically rest unpatentability of claims 5/7/15/17 on a reference teaching those numbers, that is the one place the patent owner retains a colorable (if weak) argument.

VIII. Bottom line

Under § 103, the claims of the '826 patent would have been obvious over Gambino (US 2014/0138844 A1) in view of Conn (US 2009/0079056 A1), optionally further in view of Ding (US 2012/0104546 A1) for claims 10/20, and over Conn alone or with conventional corner placement for the structure/method claims. Torii (US 2013/0082382 A1) and Ide (US 2012/0256310 A1) provide additional support for protruding rear-side via metal and insulating liners. The claimed invention is a predictable union of (a) Gambino's corner-located dummy backside-metal pads, (b) Conn's anchor-via "rivets" securing metal to a substrate, and (c) the well-known choice to leave a structural via electrically floating — with each element performing its known function. This is consistent with the PTAB's March 13, 2026 Final Written Decision in IPR2024-01405 finding all challenged claims unpatentable (subject to the pending Director Review, and therefore not yet final as of this analysis).


Key sources

Note on ground numbering: available public summaries describe the FWD as finding Grounds 1–2 (Conn anticipation; related Conn ground) not to have prevailed while combination/other grounds carried all claims 1–20, but I could not retrieve the full FWD text; treat the precise ground-level breakdown as unverified.

Generated 9/2/2026, 12:49:02 PM

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