Case 5:20-cv-09341-EJD Document 138-5 Filed 03/18/22 Page 1 of 77
`Case 5:20-cv-09341-EJD Document 138-5 Filed 03/18/22 Page 1 of 77
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`EXHIBIT 4
`EXHIBIT 4
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`Case 5:20-cv-09341-EJD Document 138-5 Filed 03/18/22 Page 2 of 77
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`
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`APPLIED MATERIALS, INC.
`Petitioner,
`
`v.
`
`DEMARAY LLC
`Patent Owner.
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`
`___________________
`
`Case IPR2021-00103
`Patent No. 7,544,276
`___________________
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`
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`10890652
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`Case 5:20-cv-09341-EJD Document 138-5 Filed 03/18/22 Page 3 of 77
`Case IPR2021-00103
`Patent No. 7,544,276
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`TABLE OF CONTENTS
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`
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`I.
`II.
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`B.
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`C.
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`D.
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`E.
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`F.
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` Page(s)
`Introduction ............................................................................................. 1
`Fintiv Factors Favor Discretionary Denial Of Institution Under 35
`U.S.C. § 314(a) ....................................................................................... 4
`A.
`Fintiv Factor #1: No Evidence That The District Court
`Would Grant A Stay If A Proceeding Is Instituted ...................... 5
`Fintiv Factor #2: Jury Trial Is Expected To Occur Well
`Before The Final Written Decision .............................................. 5
`Fintiv Factor #3: There Has Been And Will Be Immense
`“Investment In The Parallel Proceeding By The Court And
`Parties” ......................................................................................... 6
`Fintiv Factor #4: There Is Substantial “Overlap Between
`Issues Raised In The Petition And In The Parallel
`Proceeding” .................................................................................. 7
`Fintiv Factor #5: The Defendants In The Texas Litigations
`Are Real-Parties-In-Interest ......................................................... 8
`Fintiv Factor #6: “Other Circumstances That Impact The
`Board’s Exercise Of Discretion, Including The Merits” Favor
`Non-Institution ............................................................................. 8
`III. Technology Background ......................................................................... 9
`A.
`The ’276 invention describes a unique combination that
`solves a problem unique to reactive sputtering ............................ 9
`Prior art fails to teach the solution claimed by the ’276 patent . 14
`1.
`Barber does not use any RF filter with its DC power
`supply ............................................................................... 14
`Hirose’s filter operates at a frequency shifted from that
`of the RF bias power supply coupled to the substrate ..... 19
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`B.
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`2.
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`IV. The Petition Fails To Show A Likelihood Of Success On At Least
`One Challenged Claim .......................................................................... 21
`A. Hirose’s filter is not a claimed filter (elements 1(f) and 6(g)) ... 21
`1.
`The operating frequency of Hirose’s filter differs from
`that required by elements 1(f) and 6(g) ........................... 22
`Hirose’s filter is not coupled to a bipolar pulsed DC
`power supply to a target as required by elements 1(f)
`and 6(g) ............................................................................ 25
`None of the other references suggests using a narrow band
`rejection filter in the Barber system ........................................... 29
`Petitioner has failed to articulate a competent reason why a
`POSITA would have included a claimed filter in Barber’s
`system ......................................................................................... 48
`1.
`Petitioner has failed to articulate a competent reason
`why Barber would need an RF filter between its DC
`power supply and the target ............................................. 48
`Hirose does not suggest using a filter that rejects or
`operates at a frequency of the RF bias power supply to
`the substrate ...................................................................... 56
`Arguments regarding what a POSITA would have
`been able to do is legally insufficient .............................. 56
`Petitioner’s analysis of other claims do not cure the
`deficiencies above ...................................................................... 59
`The Petition Should Be Denied Under 35 U.S.C. § 325(d) .................. 60
`A.
`The Petition relies on the same or substantially arguments
`overcome during prosecution ..................................................... 60
`The Petition fails to show that the Office erred in a manner
`material to the patentability of the challenged claims ................ 66
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`V.
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`2.
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`2.
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`3.
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`B.
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`C.
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`D.
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`B.
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`Case 5:20-cv-09341-EJD Document 138-5 Filed 03/18/22 Page 5 of 77
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`
`
`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Advanced Bionics, LLC v. MED-EL Elektromedizinische
`Geräte GmbH, IPR2019-01469, Paper 6 (Feb. 13, 2020) ........................... 60, 62
`Apple Inc. v. Fintiv Inc.,
`IPR2020-00019, Paper 11 (PTAB, March 20, 2020) ..................................passim
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 15 (P.T.A.B. May 13, 2020) ........................................... 6
`Arendi S.A.R.L v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) .............................................................. 26, 27, 57
`Becton, Dickinson & Co. v. B. Braun Melsungen AG,
`IPR2017-01586, Paper 8 (P.T.A.B. Dec. 15, 2017) ........................................... 60
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) .......................................................................... 57
`Bentley Motors Ltd. v. Jaguar Land Rover Ltd.,
`IPR2019-01539, Paper 16 (P.T.A.B. Oct. 2, 2020) .............................................. 7
`Cisco Sys., Inc. v. C-Cation Techs., LLC,
`IPR2014-00454, Paper 12 (PTAB Aug. 29, 2014) ............................................. 14
`Cont’l Intermodal Grp. – Trucking LLC v. Sand Revolution LLC,
`Case No. 7:18-cv-00147-ADA (July 22, 2020) .................................................... 5
`KSR. ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .................................................................... 34, 57
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 37
`Microsoft Corp. v. Enfish, LLC,
`662 F. App’x 981 (Fed. Cir. 2016) ............................................................... 29, 48
`Monarch Knitting Mach. Corp. v. Sulzer Morat GmbH,
`139 F.3d 877 (Fed. Cir. 1998) ............................................................................ 49
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`Otsuka Pharmaceutical Co., Ltd. v. Sandoz, Inc.,
`678 F. 3d 1280 (Fed. Cir. 2012) ......................................................................... 54
`Polaris Industries, Inc. v. Arctic Cat, Inc.,
`882 F.3d 1056 (Fed. Cir. 2018) .......................................................................... 57
`South-Tek Sys., LLC v. Engineered Corrosion Solutions, LLC,
`748 Fed. Appx. 1003 (Fed. Cir. 2018) ................................................................ 51
`In re Van Os,
`844 F.3d 1359 (Fed. Cir. 2017) .......................................................................... 35
`VLSI Tech. LLC v. Intel Corp.,
`Case No. 1:19-cv-00977-ADA ............................................................................. 6
`Statutes
`35 U.S.C. § 314(a) ................................................................................................. 4, 8
`35 U.S.C. § 325(d) ................................................................................... 4, 50, 60, 67
`Other Authorities
`37 C.F.R. § 42.6(a)(3) .............................................................................................. 14
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`Case 5:20-cv-09341-EJD Document 138-5 Filed 03/18/22 Page 7 of 77
`Case IPR2021-00103
`Patent No. 7,544,276
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`Ex. 2001
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`Ex. 2002
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`Ex. 2003
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`Ex. 2004
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`Ex. 2005
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`EXHIBIT LIST
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`U.S. Pat. No. 6,117,279 to Smolanoff et al.
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`Declaration of Dr. Alexander Glew in Support of Patent Owner’s
`Preliminary Response
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`Real Parties-in-Interest’s First Amended Preliminary Invalidity
`Contentions dated Feb. 12, 2021 in consolidated actions of
`Demaray LLC v. Intel Corp., 6:20-cv-00634-ADA (W.D. Tex.) &
`Demaray LLC v. Samsung Electronics Co., Ltd. et. al., 6:20-cv-
`00636-ADA (W.D. Tex.)
`
`Order Denying Motion for Preliminary Injunction, Dkt. 47, Applied
`Materials, Inc. v. Demaray LLC, 5:20-cv-05676-EJD (N.D. Cal.
`Dec. 23, 2020)
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`Scheduling Order, Dkt. 33 in consolidated actions of Demaray LLC
`v. Intel Corp., 6:20-cv-00634-ADA (W.D. Tex.) & Demaray LLC
`v. Samsung Electronics Co., Ltd. et. al., 6:20-cv-00636-ADA
`(W.D. Tex.)
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`Ex. 2006
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`U.S. Pat. No. 6,306,265 to Fu et al.
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`
`Introduction1
`The Office granted the challenged claims “because the prior art of record
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`I.
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`does not teach the claimed reactor combined with the narrow band rejection filter
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`that rejects [operating] at a frequency of the RF bias power supply coupled
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`between the pulsed DC power supply and the target area [target].” Ex. 1004 at
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`382. The examiner allowed the claims after the inventors explained the unique
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`characteristics the filter must possess for use in a claimed reactor system: “[a] filter
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`that blocks too many of the constituent frequencies of the pulsed DC waveform
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`results in the target voltage not attaining a positive voltage. A filter that does not
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`block the RF bias voltage can result in failure of the DC power supply.” Ex. 1052
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`at 1456-57. This insight of the inventors was absent from prior art of record, and
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`absent from the references presented here. See, e.g., Sections IV.A, IV.B, IV.C.3.
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`In the Petition, Petitioner alleges that either Barber alone or a combination of
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`Barber and Belkind2 discloses the claimed reactor system with a bipolar pulsed DC
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`power supply to the target and an RF bias on the substrate. See Pet. 20, 23-24, 67.
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`Yet, neither Barber nor Belkind, nor any other references describing plasma
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`1 All emphasis are added unless otherwise noted.
`2 Belkind is asserted in grounds 8-14 for its disclosure of a bipolar pulsed
`DC supply. Pet. 67-73. Petitioner analyzes the Barber/Belkind system in the same
`way as the Barber system (id.) and Patent Owner therefore uses Barber to refer to
`both systems.
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`deposition with a claimed reactor system, discloses the need for a filter between
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`the pulsed DC supply and the target, let alone one of the claimed properties. See
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`Sections III.B.1 & IV.C.1(a); see also Ex. 1005 (Barber), Fig. 2 (no filter between
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`target and DC power source); Ex. 1011 (Sproul) at Fig. 1 (same); Ex. 1008
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`(Belkind) (article does not mention using a filter with the DC power supply); Exs.
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`1048 & 1059 (Kelly) (same).
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`Hirose, the reference Petitioner asserted for the filter limitation, concerns an
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`etching system using only RF power supplies with RF matching circuits and
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`associated RF filters. See Ex. 1006, Fig. 1, Abstract. The RF filter 20 connected
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`to RF power source 14 and relied on by Petitioner is not even designed to operate
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`or reject at the RF frequency of the RF power source 15 whose energy the filter 20
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`allegedly is designed to block. Id., Abstract, Fig. 6. Instead, Hirose’s RF filter 20
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`is designed to operate at a frequency that is shifted from the RF power 15 applied
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`to the substrate. Id.; see also Sections III.B.2 and IV.A.1.
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`To the extent that a POSITA would have applied a filter designed for an
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`RF/RF etching system to a pulsed-DC/RF bias deposition system as Petitioner
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`urges,3 the filter still would not satisfy the requirement that it be one “that rejects
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`[operating] at a frequency of the RF bias power supply” (Ex. 1001, cls. 1 & 6).
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`3 Petitioner has failed to present any competent evidence for this theory. See
`Section IV.A.2.
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`Nor would it satisfy Petitioner’s purported reason for using Hirose’s filter to
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`“selectively filter (a) specific frequenc(ies) of electrical current generated by
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`[Barber’s] RF power 235 . . . .” Pet. 30-31. See Section IV.C.2.
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`Petitioner also proclaims that the use of a filter would have stabilized
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`Barber’s pulsed DC power’s waveform and improved its film deposition; that
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`proclamation contradicts Barber’s express disclosures. See Section IV.C.1(b).
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`Barber, for example, discloses that “if necessary, the [DC pulse] frequency should
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`be adjusted to achieve a stable waveform,” but that adjustment is done without a
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`filter. See Ex. 1005, Fig. 2 (no filter in the reactor system). Petitioner does not
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`explain, given Barber’s mechanism for stabilizing waveform without a filter, why a
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`filter would be needed. Additionally, Barber discloses that “[t]he frequency does
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`not affect the film quality,” (Ex. 1005, 8:67-9:3, 9:42-45, 7:59-60), or the
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`deposition rate (id., 7:47-48). Thus, Petitioner’s theory that a filter would optimize
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`film deposition through affecting DC pulse frequency is not supported by Barber’s
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`own disclosure. Petitioner also does not explain how a filter would or even could
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`have affected other processing parameters, such as pulse width, reactive gas flow
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`rate or ratio of reactive gas to inert gas, or otherwise would have otherwise affected
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`the deposition rate or film quality in Barber’s system. See Section IV.C.1(b).
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`In fact, the arguments raised here and the usage of the references are
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`substantially the same as those already considered by the Office. Specifically, as
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`noted, the claims were allowed because the prior art of record did not disclose the
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`claimed reactor system combined with the claimed filter (e.g., Ex. 1004 at 382,
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`434), that is, the claimed filter is specifically designed for the reactor system and is
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`not a design choice (e.g., Ex. 1052 at 1431-32, 1456-57). But Petitioner still
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`treated the claimed filter as a modular component that can be lifted from a
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`completely different system and planted into the claimed reactor system. The
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`Board should decline to consider these duplicative arguments under 35 U.S.C.
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`§ 325(d).
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`Finally, the FWD in this case is expected to issue about 4.5 months after the
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`jury trial that will decide the validity of the claims. Ex. 2005 at 4. The real-
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`parties-in-interest have indicated that they would continue to rely on the same
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`references for validity and to purse substantially the same arguments in the district
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`court litigation even if the Board institutes the trial. Ex. 2003 at 30 n.5. Given
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`these facts, the Board should also deny the petition under 35 U.S.C. § 314(a).
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`II. Fintiv Factors Favor Discretionary Denial Of Institution Under 35
`U.S.C. § 314(a)
`The Board should exercise its discretion to deny institution under 35 U.S.C.
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`§ 314(a) in light of a parallel, co-pending proceeding that is expected to determine
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`the issue of validity months before a final written decision in this case. Apple Inc.
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`v. Fintiv Inc., IPR2020-00019, Paper 11 (PTAB, March 20, 2020) (precedential).
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`Patent No. 7,544,276
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`A. Fintiv Factor #1: No Evidence That The District Court Would
`Grant A Stay If A Proceeding Is Instituted
`Petitioner offers no evidence that Judge Albright would grant a stay if an
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`IPR is instituted; and Judge Albright generally does not do so. Pet. 75; Cont’l
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`Intermodal Grp. – Trucking LLC v. Sand Revolution LLC, Case No. 7:18-cv-
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`00147-ADA (July 22, 2020) (order denying motion to stay instituted IPR). Judge
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`Davila in the Northern District of California also rejected Petitioner’s attempt to
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`enjoin the Texas litigation from proceeding. Ex. 2004. This factor weighs in favor
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`of denying institution.
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`B.
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`Fintiv Factor #2: Jury Trial Is Expected To Occur Well Before
`The Final Written Decision
`The second Fintiv Factor is “proximity of the court’s trial date to the Board’s
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`projected statutory deadline for a final written decision.” Fintiv, Paper 11 at 6. As
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`Fintiv explains, “[i]f the court’s trial date is earlier than the projected statutory
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`deadline, the Board generally has weighed this fact in favor of exercising authority
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`to deny institution under NHK.” Id., Paper 11 at 9. Here, jury selection for the
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`trial in the district court action is set to begin on December 27, 2021, about 4.5
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`months before an expected final written decision (“FWD”) in this case. Ex. 2005
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`at 4. This factor weighs in favor of denying institution.
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`Petitioner speculates that the trial may be delayed, e.g., due to COVID-19.
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`Pet. 75-76. This is pure speculation: Indeed, Judge Albright continues to hold in-
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`person jury trials, including one that starts today in VLSI Tech. LLC v. Intel Corp.,
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`Case No. 1:19-cv-00977-ADA. There is no evidence that there will be a delay. In
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`addition, the Board has made clear that it “generally take[s] courts’ trial schedules
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`at face value absent some strong evidence to the contrary.” Apple Inc. v. Fintiv,
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`Inc., IPR2020-00019, Paper 15, at 12 (P.T.A.B. May 13, 2020). Because
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`Petitioner fails to provide any non-speculative evidence regarding the timing of
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`trial, the Board should abide by its general practice and accept the scheduled trial
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`date as it is.
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`C. Fintiv Factor #3: There Has Been And Will Be Immense
`“Investment In The Parallel Proceeding By The Court And
`Parties”
`The deadline for institution is May 16, 2021. By that time, the parties will
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`have expended significant resources in the district court litigation complying with
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`the district court’s scheduling order, including:
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`• Claim construction briefing and Markman hearing
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`• Commencement of fact discovery
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`• Final infringement and invalidity contentions
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`The parties’ investment will continue to increase after institution, especially
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`because Judge Albright generally does not grant a stay pending instituted IPRs.
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`See Factor #1. For example, because the district court trial date precedes the
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`projected FWD deadline in this proceeding, the parties and the district court will
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`have invested a significant amount of time and resources after institution but
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`before the FWD deadline in preparation for the trial, including completion of fact
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`and expert discovery, pre-trial motion practices, trial preparation, trial and post-
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`trial motions.
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`The Board has found that “additional investment of time and resources by
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`the District Court and the parties” occurring “after institution but before our final
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`decision” also weighs “strongly in favor of denying institution.” Bentley Motors
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`Ltd. v. Jaguar Land Rover Ltd., IPR2019-01539, Paper 16, at 9-10 (P.T.A.B. Oct.
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`2, 2020). Factor 3 therefore weighs strongly in favor of denying institution to
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`avoid duplicative efforts.
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`D. Fintiv Factor #4: There Is Substantial “Overlap Between Issues
`Raised In The Petition And In The Parallel Proceeding”
`The real-parties-in-interest have included all of the asserted combinations in
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`the district court action and against all challenged claims at issue here. Ex. 2003 at
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`6 n.1, 19, 22-25. This fact weighs in favor of denying institution. Petitioner
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`asserts that “there is no evidence that the same invalidity grounds sought here will
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`be at-issue in the Texas Litigation.” Pet. 76. But the real-parties-in-interest have
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`indicated in their invalidity contentions that they will continue to use the asserted
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`art for invalidity purposes in the district court and will continue to pursue
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`cumulative grounds.4 Ex. 2003 at 29-30 & n.5. Based on the evidence before the
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`PTAB, the fourth Fintiv factor weighs in favor of denying institution.
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`E.
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`Fintiv Factor #5: The Defendants In The Texas Litigations Are
`Real-Parties-In-Interest
`This factor weighs in favor of denial, as defendants in both Texas Litigations
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`are real parties-in-interest in this IPR and coordinated with Petitioner in filing the
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`petition. Pet. 1, 76.
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`F.
`
`Fintiv Factor #6: “Other Circumstances That Impact The Board’s
`Exercise Of Discretion, Including The Merits” Favor Non-
`Institution
`Petitioner claims that they were diligent in filing the petition and the petition
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`is strong. Pet. 76-77. Patent Owner presents its response on the merits in Sections
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`III-V, which demonstrates that Petitioner has failed to show a reasonable
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`likelihood that it would prevail on at least one claim.
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` The Fintiv factors favor denying institution under 35 U.S.C. § 314(a).
`
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`4 For example, instead of Barber, RPIs can use Smolanoff (Ex. 2001) or
`Sproul (Ex. 1011) discussed during prosecution and allegedly disclosed the same
`properties as Barber. See Ex. 1052 at 1356; Ex. 1004 at 380-81. Under the
`“design choice” theory, the RPIs can use any of the other filter references in
`substantially the same way.
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`Case IPR2021-00103
`Patent No. 7,544,276
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`III. Technology Background
`A. The ’276 invention describes a unique combination that solves a
`problem unique to reactive sputtering
`U.S. 7,544,276 is entitled “Biased Pulse DC Reactive Sputtering of Oxide
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`Films.” Ex. 1001 at cover. The ’276 patent provides a packaged solution to
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`address problems associated with target poisoning in reactive sputtering. Although
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`the preferred embodiments relate to “deposition of oxide and oxynitride films by
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`pulsed DC reactive sputter,” (id., 1:11-13), the techniques disclosed for oxide film
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`deposition can also be used for nitride films. See Ex. 1001 at 3:3-7 (approaches are
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`useful with a broad array of process gasses “includ[ing] combinations of Ar, N2,
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`O2, C2F6, CO2, CO and other process gasses”).
`
`The claims of the ’276 patent require several interrelated components in a
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`reactor system. In addition to “a target area for receiving a target” and “a substrate
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`area opposite the target area for receiving the target,” it also requires at least
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`• “a pulsed DC supply coupled to the target area, the pulsed DC power
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`supply providing alternating negative and positive voltages to the target”;
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`• “an RF bias power supply coupled to the substrate” and
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`• “a narrow band rejection filter that rejects [operating] at a frequency of
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`the RF bias power supply coupled between the pulsed DC power supply
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`and the target area [target].”
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`Ex. 1001, 22:44-50 (cl. 1), 22:66-23:5 (cl. 6).
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`For the ’276 inventions, the target “provides material to be deposited on
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`[the] substrate.” See id., 5:20-24. In some preferred embodiments, the target “also
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`functions as a cathode when power is applied to it.” Id., 5:24-26.
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`
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`The bipolar pulsed DC, with its polarity oscillating between negative and
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`positive potentials, prevents arcing associated with reactively sputtering films such
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`as oxides, nitrides and oxynitrides. Id., 5:31-35. This is because, in the presence
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`of reactive gases such as oxygen and/or nitrogen, films of oxides, nitrides or
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`oxynitrides could build up on the surface of the target. See, id., 11:49-58, 4:49-51;
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`Glew (Ex. 2002), ¶ 29. Under steady state DC voltage conditions (e.g., steady
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`negative voltage conditions), “[t]he insulating surface charges up and result in
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`arcing during process. This arcing can damage the power supply, produce particles
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`and degrade the properties of the deposited film.” Id. 4:49-52; see also 11:59-64.
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`By reversing the polarity of the DC voltage to positive as needed, “the insulating
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`layer on the surface of target . . . is discharged” during the positive period (that is,
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`the surface is neutralized during the period), “and arcing is prevented.” Id. at 5:33-
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`35, 11:64-12:2.
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`An RF bias power is supplied to the substrate to, for example, “dandif[y]
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`(sic) [densify]” the deposited film and to “substantially eliminate[]” columnar
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`structures that may negatively affect the film quality. Id., 5:60-67. The use of RF
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`bias power, however, creates the danger that the DC power supply may be
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`damaged. Id. at 5:50-51. A filter (15) between the pulsed DC power supply and
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`the target “prevents the bias power from power supply 18 from coupling into
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`pulsed DC powers supply 14.” Id. at 5:50-51. But this is not the whole story
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`because the filter must also ensure that it does not “distort[] the pulses generated
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`by the pulsed-DC power supply.” Ex. 1052 at 1130-31, 1134. This led to the
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`claimed “narrow band rejection filter that rejects [operating] a frequency of the RF
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`bias power supply.” Ex. 1001 at cls. 1 & 6.
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`The use of the claimed narrow band rejection filter that operates/rejects at a
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`frequency of the RF bias power on the substrate is a unique insight of the inventors
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`specific to a reactor system that combines bipolar pulsed DC power to a target
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`(e.g., to help suppress arcing when reactively sputtering) with an RF bias on a
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`substrate. For example, during prosecution, the inventors represented that filters
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`were developed “to overcome the problem of catastrophic failure of the pulsed-DC
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`power supply output electrometer circuit during operation.” Ex. 1052 at 1134.
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`The inventors “discovered that that … a filter that passes all of the frequencies of
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`the square wave power supply except within a narrow band centered on the RF
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`frequency of the RF bias, protected the pulsed-DC power supply from the RF
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`energy while not distorting the pulses generated by the pulsed-DC power supply
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`applied to the target.” Id. They also explained to the examiner why the filter is not
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`a design choice:
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`The filter allows the combination of pulsed-DC power to the target
`(where the target voltage is oscillated between positive and negative
`voltages) and an RF bias on the substrate. A filter that blocks too
`many of the constituent frequencies of the pulsed DC waveform
`results in the target voltage not attaining a positive voltage. A filter
`that does not block the RF bias voltage can result in failure of the
`DC power supply.”
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`Ex. 1052 at 1456-57.
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`None of Petitioner’s references teaches the use of a narrow-band rejection
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`filter in a claimed reactor system. For example, none of Barber, Belkind, Sproul
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`and Kelly, which all allegedly applied a bipolar pulsed DC power to a target and an
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`RF bias to a substrate, suggested the use of a filter between the DC power supply
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`and the target. See Exs. 1005, 1008, 1011, 1048, 1059. Petitioner’s key reference
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`on the filter limitation, Hirose, involves a reactor system using only RF power
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`supplies for etching and therefore lacking a target. See Ex. 1006, Fig. 1; Pet. 30
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`(admitting that Hirose is about reactive ion etching). Furthermore, Hirose teaches
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`that the relied-on filter 20 coupled to RF power supply 14 is frequency-shifted
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`from the frequency of the RF bias power supply 15 to the substrate. See Pet. 26
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`(citing Hirose Fig. 1); Ex. 1006, Abstract; 5:58-61, Fig. 6.
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`As another example, Petitioner asserts that the configuration in Figure 1a of
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`the ’276 patent was “nothing new” and was taught in manuals by the “same
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`manufacturer of the DC power supply exemplified in the ’276 patent.” Pet. 10.
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`Petitioner, however, produces no evidence that the “RF filter” referenced in these
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`documents (Exs. 1024-1026 & 1062) is a claimed “narrow band rejection filter”
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`as opposed to, for example, a low-pass filter with the proper cut-off frequency. See
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`Pet. 10,5 33-36. Similarly, Petitioner provides no analysis on whether those
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`reactors were ever configured to supply a claimed bipolar pulsed DC power supply
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`to the target.6 Id. The art presented by Petitioner therefore does not contradict the
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`examiner’s determination that the combinations recited in the challenged claims
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`were patentable.
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`B.
`Prior art fails to teach the solution claimed by the ’276 patent
`All grounds of challenge rely on the following two references: Barber (Ex.
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`1005) and Hirose (Ex. 1006). The combination, however, does not teach all
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`limitations in the challenged claims, including elements 1(f) and 6(g), “a narrow
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`band-rejection filter that rejects at a frequency of the RF bias power supply
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`coupled between [a bipolar] pulsed DC power supply and [a] target area” and “a
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`narrow band rejection filter operating at a frequency of the RF bias power supply
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`coupled between the pulsed DC power supply and the target.”
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`1.
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`Barber does not use any RF filter with its DC power supply
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`5 Petitioner also cites to its expert’s declaration (Ex. 1002) “generally.” Pet.
`11. The Board should decline to consider this general reference to the expert
`testimony as it amounts to impermissible wholesale incorporation of the expert
`testimony. 37 C.F.R. § 42.6(a)(3); Cisco Sys., Inc. v. C-Cation Techs., LLC,
`IPR2014-00454, Paper 12 at 10 (PTAB Aug. 29, 2014) (informative).
`6 DC power supplies can be implemented to provide pulsed DC power to
`prevent arcing, but Petitioner fails to suggest or argue that such implementation
`were disclosed and that they were combined with RF bias to the substrate and the
`claimed filter in the prior art.
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`Petitioner acknowledges that Barber “does not expressly disclose the
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`
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`[claimed] filter features . . . added during prosecution.” Paper 3 at 3. Barber
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`involves the use of a rotating magnetron reactive sputtering system to achieve a
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`“sufficiently low” “surface roughness for [an] insulating layer” for depositing
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`high-quality piezoelectric film. Ex. 1005, 3:1-13.
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`Neither the reactor in Barber nor that in the incorporated-by-reference Miller
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`Application (see Ex. 1005, 2:13-21, 9:17-18) depicts an RF filter between the
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`supposedly bipolar pulsed DC supply and the target. See Ex. 1005, Fig. 2; Ex.
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`1060, Fig. 2 (reproduced below). In both configurations, element 260 is the target
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`and 225 is the anodic ring. Ex. 1005, 6:5-6; Ex. 1060, 7:1-5 (original page
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`number).
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`Barber, Fig. 2
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`Miller Application, Figure 2
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`Barber’s method requires “determin