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`Exhibit B
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`Trials@uspto.gov
`Paper 54
`571-272-7822
`Date: June 29, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLIED MATERIALS, INC., INTEL CORPORATION,1 and
`SAMSUNG ELECTRONICS CO., LTD.,2
`Petitioner,
`v.
`DEMARAY LLC,
`Patent Owner.
`
`IPR2021-00104
`Patent 7,381,657 B2
`
`
`
`
`
`
`
`
`
`Before CHRISTOPHER L. CRUMBLEY, KRISTINA M. KALAN, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`McGRAW, Administrative Patent Judge
`
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`1 Intel Corporation was joined as a petitioner in this proceeding based on a
`petition and motion for joinder filed in IPR2021-01031.
`2 Samsung Electronics Co., Ltd. was joined as a petitioner in this proceeding
`based on a petition and motion for joinder filed in IPR2021-01091.
`
`
`
`

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`
`I. INTRODUCTION
`We instituted this inter partes review pursuant to 35 U.S.C. § 314 to
`review claims 1–21 of U.S. Patent No. 7,381,657 B2 (Ex. 1001, “the ’657
`patent”), owned by Demaray LLC (“Patent Owner”). We have jurisdiction
`under 35 U.S.C. § 6(c). This Final Written Decision is entered pursuant to
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons discussed below,
`Petitioner3 has not shown by a preponderance of the evidence that claims 1–
`21 are unpatentable.
`A.
`Procedural History
`Applied Materials, Inc. (“Applied Materials”) filed a Petition
`(Paper 1, “Pet.”) requesting an inter partes review of claims 1–21 of
`the ’657 patent. Patent Owner filed a Preliminary Response to the Petition
`(Paper 7). Pursuant to our authorization (Paper 9), Applied Materials filed a
`reply (Paper 10), and Patent Owner filed a sur-reply (Paper 12). We
`instituted this inter partes review of all challenged claims based on all
`grounds asserted in the Petition. Paper 13 (“Inst. Dec.”).
`Patent Owner then filed a Patent Owner Response (Paper 29, “PO
`Resp.”) and Applied Materials filed a Reply (Paper 36, “Pet. Reply”). Intel
`Corporation (“Intel”) and Samsung Electronics Co., Ltd (“Samsung”) were
`then joined as a party petitioners. See Paper 38 (joining Intel to this
`proceeding based on a petition and motion for joinder filed in IPR2021-
`01031); Paper 42 (joining Samsung to this proceeding based on a petition
`and motion for joinder filed in IPR2021-01091). Patent Owner filed a Sur-
`
`
`3 Applied Materials, Intel, and Samsung are collectively referred to as
`“Petitioner” in this Decision.
`
`2
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`reply. Paper 47 (“PO Sur-reply”). An oral hearing4 was held on February 9,
`2022, with IPR2021-00103, which challenges U.S. Patent No. 7,544,276 B2.
`A transcript of the hearing has been entered into the record as Paper 52
`(“Tr.”).
`Real Parties in Interest
`B.
`In addition to the named parties, Applied Materials identifies
`Samsung Electronics America, Inc., Samsung Semiconductor, Inc., and
`Samsung Austin Semiconductor, LLC, as real parties-in-interest. See Pet.
`1. Patent Owner identifies itself as the real party-in-interest. Paper 5.
`C.
`Related Matters
`The parties identify Demaray LLC v. Samsung Electronics Co., Ltd.
`et al., No. 6-20-cv-00636 (W.D. Tex.); Demaray LLC v. Intel Corp.
`No. 6-20-cv-00634 (W.D. Tex.); and Applied Materials, Inc. v. Demaray
`LLC, No. 5-20-cv-05676 (N.D. Cal.) as related matters. Pet. 1; Paper 5, 2.
`Each of these proceedings involves the ’657 patent. Id.
`Patent Owner also identifies IPR2021-00106 (institution denied),
`which challenges the ’657 patent, as well as IPR2021-00105 (institution
`denied) and IPR2021-00103 (institution granted), both of which challenge
`related U.S. Patent No. 7,544,276. Paper 5, 3.
`D.
`The ’657 Patent and Prosecution History
`1.
`The ’657 Patent
`The ’657 patent, titled “Biased Pulse DC Reactive Sputtering of
`Oxide Films” is directed to a pulsed direct current (“DC”) reactor for
`sputtering oxide films. Ex. 1001, code (54), 1:11–13. The reactor has a DC
`
`
`4 Although we held a consolidated hearing, IPR2021-00103 and IPR2021-
`00104 are not consolidated.
`
`3
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`power supply that couples pulsed-DC power to the target and an “RF power
`supply,” which is an alternating current (“AC”) power supply that supplies a
`radio frequency (“RF”) bias to a substrate. See id. at code (57). The reactor
`also has a filter located between the pulsed-DC power supply and the target
`for filtering out the effects of the RF bias power applied to the substrate and
`protecting the pulsed-DC power supply. Id. at code (57), Fig. 1.
`The ’657 patent explains that RF sputtering typically had been used to
`deposit oxide dielectric films, but that RF systems used ceramic targets
`composed of multiple smaller tiles and that “arcing” between the tiles caused
`contamination in the deposited films. Id. at 2:25–30. The ’657 patent
`further explains that reactive DC magnetron sputtering of nonconductive
`oxides was done rarely because insulating oxide layers would form on the
`target surface causing charges to build up, resulting in arcing that can
`damage power supply and the production of particles that degrade the
`properties of deposited oxide films. See id. at 4:48–57. The ’657 patent
`states that there was a need for new methods of depositing oxide and oxide
`films. Id. at 2:39–41.
`Figure 1A of the ’657 patent, depicting an embodiment of the
`invention, with highlighting added by Petitioner, is reproduced below.
`
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`
`Figure 1A depicts a pulsed DC sputtering reactor apparatus 10 having RF
`power source 18 coupled to electrode 17 and substrate wafer 16 and
`target 12 electrically coupled through filter 15 to pulsed-DC power
`supply 14. Id. at 5:25–27, 5:32–36, Fig. 1; Pet. 10.
`
`Magnet 20 is used to scan across the top of the target 12, which reduces
`local erosion of target 12 during sputtering. Id. at 5:35, 8:57–66. Substrate
`16 is opposite and parallel to target 12. Id. at 5:29–30. Substrate 16 is
`capacitively coupled to electrode 17 via insulator 54. Id. at 5:32–36.
`Electrode 17 can be coupled to RF power supply 18. Id. at 5:34–35.
`The ’657 patent explains that RF power supply 18 is used to avoid columnar
`structures in a deposited film, which can be detrimental for optical wave
`guide applications. Id. at 5:66–6:6. The ’657 patent discloses that target 12
`functions as a cathode when power is applied to the target 12, which creates
`plasma 53. Id. at 5:30–32.
`Target 12, which comprises material to be deposited on the substrate,
`is electrically coupled through filter 15 to pulsed DC power supply 14. Id.
`at 2:55–57, 5:25–26. The ’657 patent discloses that the polarity of the power
`supplied to target 12 by pulsed DC power supply 14 oscillates between
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`negative and positive potentials. Id. at 5:36–39. According to the ’657
`patent, the insulating layer on the surface of target 12 discharges during the
`positive period, which prevents arcing. Id. at 5:39–41. The ’657 patent
`discloses that the pulsing frequency must exceed a critical frequency, which
`depends on a target material, cathode current, and reverse time. Id. at 5:41–
`43.
`
`Reactor apparatus 10 further includes filter 15, which prevents the RF
`power supply from coupling to into pulsed DC power supply 14. Id. at
`5:56–57. According to the ’657 patent, filter 15 can be a rejection filter,
`such as a 2 MHz band rejection filter when a 2 MHz power supply is used
`for RF power supply 18. Id. at 5:57–61. The ’657 patent also discloses that
`the bandwidth of filter 15 can be approximately 100 kHz. Id. at 5:61–63.
`E.
`Illustrative Claim
`Of the challenged claims, claims 1 and 2 are independent. Claim 2 is
`representative and is reproduced below with bracketed material5 and
`formatting added.
`2. [a] A method of depositing an insulating film on a
`substrate, comprising:
`[b] providing a process gas between a target and a substrate;
`[c] [c1] providing pulsed DC power to the target
`
`
`[c2] through a narrow band rejection filter
`[c1] such that the voltage on the target alternates between
`positive and negative voltages;
`[d] providing an RF bias that corresponds to the narrow
`band rejection filter to the substrate; and
`[e] providing a magnetic field to the target;
`
`5 The added brackets reflect Petitioner’s characterization of the claim
`elements.
`
`6
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`
`[f] wherein an oxide material is deposited on the substrate,
`and the insulating film is formed by reactive sputtering in a
`mode between a metallic mode and a poison mode.
`Ex. 1001, 23:16–27.
`F.
`Evidence
`In support of its unpatentability arguments, Petitioner relies on, inter
`alia, the declarations of Dr. Vivek Subramanian (Ex. 1002, “Subramanian
`Dec.”; Ex. 1108 (“Rebuttal Subramanian Dec.”)). In response, Patent
`Owner relies on, inter alia, the declaration of Dr. Alexander Glew (Ex. 2009
`(“Glew Dec.”), the Declaration of Rajiv Pethe (Ex. 2020 “Pethe Dec.”), and
`the Declaration of Dr. Hongmei Zhang (Ex. 2019).
`G.
`Prior Art and Instituted Grounds
`We instituted inter partes review of claims 1–21 of the ’657 patent on
`the following grounds:
`Claim(s) Challenged
`2–4, 6, 8, 10–12, 21
`5, 7
`9
`
`35 U.S.C. §6
`103(a)
`103(a)
`103(a)
`
`Reference(s)/Basis
`Barber,7 Hirose8
`Barber, Hirose, Dogheche9
`Barber, Hirose, Safi10
`
`
`6 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the
`’657 patent has an effective filing date prior to the effective date of the
`applicable AIA amendments, we refer to the pre-AIA versions of §§ 102 and
`103.
`7 US 6,342,134 B1, issued Jan. 29, 2002 (Ex. 1005).
`8 US 6,485,602 B2, filed July 18, 2001, issued Nov. 26, 2002 (Ex. 1006).
`9 E. Dogheche, Growth and Optical Characterization of Aluminum Nitride
`Thin Films Deposited on Silicon by Radio-Frequency Sputtering, Appl.
`Phys. Lett. 74, 1209 (1999) (Ex. 1029).
`10 I. Safi, A Novel Reactive Magnetron Sputtering Technique for Producing
`Insulating Oxides of Metal Alloys and Other Compound Thin Films, Surface
`and Coatings Tech. 135, 48 (2000) (Ex. 1039).
`
`7
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`
`35 U.S.C. §6
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`
`103(a)
`
`103(a)
`103(a)
`
`103(a)
`103(a)
`
`103(a)
`103(a)
`
`Claim(s) Challenged
`12, 13
`14–18
`19
`20
`1
`2–4, 6, 8, 10, 11, 12,
`21
`5, 7
`9
`12, 13
`14–18
`19
`20
`1
`
`Reference(s)/Basis
`Barber, Hirose, Aokura11
`Barber, Hirose, Segal12
`Barber, Hirose, Segal,
`Sakawaki13
`Barber, Hirose, Sill14
`Barber, Hirose, Sellers15
`Barber, Hirose, Belkind16
`Barber, Hirose, Belkind,
`Dogheche
`Barber, Hirose, Belkind, Safi
`Barber, Hirose, Belkind,
`Aokura
`Barber, Hirose, Belkind, Segal
`Barber, Hirose, Belkind, Segal,
`Sakawaki
`Barber, Hirose, Belkind, Sill
`Barber, Hirose, Belkind, Sellers
`
`II. ANALYSIS
`
`Legal Standards
`A.
`To prevail in this proceeding, Petitioner must demonstrate by a
`preponderance of the evidence that the challenged claims are unpatentable.
`35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). “In an [inter partes review], the
`
`
`11 JP H10102247 A, published Apr. 21, 1998 (Ex. 1068) ((English
`translation (pp. 1–12); Verified Statement of Translation (p. 13); Japanese
`language document (pp. 14–24).
`12 US 2001/0047838 A1, published Dec. 6, 2001 (Ex. 1069).
`13 US 2001/0031383 A1, published Oct. 18, 2001 (Ex. 1043).
`14 US 6,284,110 B1, issued Sept. 4, 2001 (Ex. 1057).
`15 US 5,651,865, issued July 29, 1997 (Ex. 1007).
`16 A. Belkind et al., Pulsed-DC Reactive Sputtering of Dielectrics:
`Pulsing Parameter Effects, Society of Vacuum Coaters, 43rd Annual
`Technical Conference Proceedings, 86 (2000) (Ex. 1008).
`
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`petitioner has the burden from the onset to show with particularity why the
`patent it challenges is unpatentable.” Harmonic Inc. v. Avid. Tech., Inc., 815
`F.3d 1356, 1363 (Fed. Cir. 2016); see also 35 U.S.C. § 312(a)(3) (requiring
`inter partes review petitions to identify “with particularity . . . the evidence
`that supports the grounds for the challenge to each claim”). That burden of
`persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l
`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015); see also In re
`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375–78 (Fed. Cir. 2016)
`(discussing the burden of proof in inter partes review proceedings).
`Furthermore, a petitioner cannot satisfy its burden of proving obviousness by
`employing “mere conclusory statements.” Magnum Oil, 829 F.3d at 1380.
`A claim is unpatentable for obviousness under § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) when in evidence, objective indicia of
`non-obviousness (i.e., secondary considerations).17 Graham v. John Deere
`Co., 383 U.S. 1, 17–18 (1966). “An obviousness determination requires
`finding both ‘that a skilled artisan would have been motivated to combine
`
`
`17 Because we determine Petitioner has not sufficiently shown the challenged
`claims would have been obvious, we do not reach Patent Owner’s asserted
`objective evidence of non-obviousness. PO Resp. 68–69.
`
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`the teachings of the prior art references to achieve the claimed invention, and
`that the skilled artisan would have had a reasonable expectation of success in
`doing so.’” CRFD Research, Inc. v. Matal, 876 F.3d 1330, 1340 (Fed. Cir.
`2017) (quoting Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821
`F.3d 1359, 1366 (Fed. Cir. 2016)).
`We analyze Petitioner’s challenges according to the above-stated
`principles.
`Level of Ordinary Skill in the Art
`B.
`Petitioner argues:
`A person of ordinary skill in the art (“POSITA”) would
`have had, at the time of the ’657 patent (March 2002): a Master’s
`degree in Electrical Engineering or Material Science (or an
`equivalent subject) plus at least two years of relevant experience
`(e.g., sputtering deposition of films on substrates (Ex. 1001,
`1:10–14, 2:45–47)), or a Bachelor’s degree in Electrical
`Engineering or Material Science (or an equivalent subject) plus
`at least four years of relevant experience. More education can
`substitute for practical experience, and vice versa.
`Pet. 9 (citing Ex. 1002 ¶¶ 19–20).
`In our Decision on Institution, we adopted Petitioner’s proposal
`regarding the level of one of ordinary skill in the art, except that we deleted
`the qualifier “at least” to eliminate vagueness as to the appropriate amount
`of relevant experience. Inst. Dec. 10 (noting that the qualifier expands the
`range without an upper bound, i.e., encompassing an unlimited amount of
`years of experience, and thus, does not meaningfully indicate the level of
`ordinary skill in the art).
`Neither party disputes our definition of a POSITA. See generally PO
`Resp.; Reply; see also Ex. 2009 ¶ 10 (applying Petitioner’s definition of a
`POSITA). Nor does either party argue that the outcome of this case would
`
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`differ based on our adoption of any particular definition of one of ordinary
`skill in the art.
`We further note that the prior art itself demonstrates the level of skill
`in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001) (explaining that “specific findings on the level
`of skill in the art . . . [are not required] ‘where the prior art itself reflects an
`appropriate level and a need for testimony is not shown’” (quoting Litton
`Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir.
`1985))).
`Upon review of the full record, we see no reason to modify, and we
`thus maintain, the definition of a POSITA applied in our Decision on
`Institution.
`Claim Construction
`C.
`In an inter partes review, we construe a claim term “using the same
`claim construction standard that would be used to construe the claim in a
`civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b). Under that
`standard, the words of a claim “are generally given their ordinary and
`customary meaning,” which is “the meaning that the term would have to a
`person of ordinary skill in the art in question at the time of the invention, i.e.,
`as of the effective filing date of the patent application.” Phillips v. AWH
`Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc).
`Neither Petitioner nor Patent Owner assert that construction of any
`claim term is required to resolve any issues in dispute. See Pet. 11 (citing
`Ex. 1002 ¶ 54); PO Resp. 10–11.
`In our Decision on Institution we invited the parties to address
`whether the claim term “providing an RF bias that corresponds to the narrow
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`band rejection filter to the substrate” requires that (1) the frequency of the
`RF bias be the same as the frequency at which the filter operates or whether
`(2) the frequency of the RF bias could be a shift from the frequency at which
`the filter operates. Inst. Dec. 37–38. Patent Owner states the term should be
`construed according to its plain and ordinary meaning, which the parties in
`the copending litigation allegedly agreed requires the claimed filter “to have
`a rejection band set at a frequency of the RF bias power supply.” PO Resp.
`10 (citing Ex. 2021; Ex. 2022, 7–10). Petitioner “disputes PO’s suggestion
`of ‘agree[ment] (EX 2022, 10)” but argues that Patent Owner’s “positions
`are not dispositive because they do not distinguish the prior art.” Reply 1.
`On the full record now before us, we agree that express construction
`of this term is not necessary as resolution of the present dispute does not turn
`on whether the frequency of the RF bias is the same as, or a shift from, the
`frequency at which the filter operates. See Nidec Motor Corp. v. Zhongshan
`Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that
`“we need only construe terms ‘that are in controversy, and only to the extent
`necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci.
`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`D. Overview of Principal Prior Art References
`Petitioner asserts sixteen grounds relying on ten different references.
`See Pet. 3–5. Each of Petitioner’s grounds, however, relies on two principal
`prior art references––Barber and Hirose, which are addressed below. Id.
`Other than Hirose, Patent Owner does not challenge the prior art status of
`any of the asserted references. See PO Resp. 12–39 (asserting that Hirose
`does not qualify as pre-AIA § 102(e) prior art to the challenged claims).
`
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`
`Barber
`1.
`Barber is a US patent titled “Method for Producing Piezoelectric
`Films with Rotating Magnetron Sputtering System.” Ex. 1005, code (54).
`Barber’s annotated Figure 2 is reproduced below.
`
`
`Figure 2 is a schematic diagram of a reactive sputtering arrangement with
`highlighting added by Patent Owner depicting DC power source 230
`connected to, and providing pulsed DC power to, target 260 (orange) and
`anode ring 225 (green), RF power source 235 connected to, and providing an
`RF bias to, substrate platen 115 (blue). Id. at 3:22–24; PO Resp. 62.
`
`
`The arrangement includes chamber 210 and a pair of electrodes (target 260
`(shown in orange) and anode ring 225 (shown in green) within the chamber.
`Ex. 1005, 6:4–6. Barber discloses that an “electric potential applied to the
`electrodes may be controlled by a pulsed DC power source 230 or other
`suitable source.” Id. at 6:6–8. First flow control source 240 provides noble
`
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`gases to chamber 210 and second flow control source 250 provides a
`reactive gas to chamber 210. Id. at 6:9–12. Substrate 110 is positioned
`within chamber 210 adjacent to rotating magnet assembly 280. Id. at 6:14–
`18. Barber discloses RF power supply 235 to apply a bias voltage to
`substrate platen 115 (shown in blue) to control tensile film stress. Id.
`at 6:29–31. Barber further describes using a cross-over curve to optimize its
`reactive sputtering deposition process. Id. at 7:2–5. Specifically, Barber
`discloses introducing noble gas into its chamber and then introducing
`reactive gas incrementally so the flow rate of the reactive gas is a rate
`corresponding substantially to, but greater than, the flow rate for a cross-
`over point between producing a metallic film and an insulator. Id. at 7:17–
`29.
`
`Hirose
`2.
`Hirose is a US patent titled “Plasma Processing Apparatus.”
`Ex. 1006, code (54). Hirose “relates to a plasma processing apparatus
`capable of suppressing a damage due to sputtering to a wall surface of a
`processing chamber during plasma occurrence.” Id. at 1:14–17. Hirose
`discloses a conventional plasma processing apparatus that applies high-
`frequency power with two types of frequency. Id. at 1:19–23. Hirose
`teaches that simultaneously applying two types of high-frequency power
`decreases an effective ground area to one electrode in comparison to when a
`single frequency is used, and this causes sputter rate to increase for the
`ground area and more damage to the wall of a processing chamber. Id.
`at 2:1–9.
`Hirose’s annotated Figure 1 is reproduced below.
`
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`
`
`Figure 1 is a configuration chart depicting a plasma processing apparatus,
`with color highlighting added by Patent Owner, having a first RF power
`supply (14) connected to, and applying RF power to, upper electrode 12
`(green) and a second RF power supply (15) connected to, and applying 2
`MHz power, to lower electrode 13 (orange); each RF power supply is
`connected to its respective filter (20, 21). Id. at 3:1–3; PO Resp. 62.
`
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`
`Hirose describes plasma processing apparatus 10 that includes
`processing chamber 11, upper electrode 12 (shown in green), and lower
`electrode 13 (shown in orange).18 Ex. 1006, 3:45–51. Hirose discloses that
`lower electrode 13 functions as a mount for a processing object, such as a
`semiconductor wafer. Id. at 3:56–58. Upper electrode 12 is connected to
`first high-frequency power supply 14 and lower electrode 13 is connected to
`second high-frequency power supply 15. Id. at 3:51–56. Hirose discloses
`that first high-frequency power supply 14 may apply, for example, 60 MHz
`power to upper electrode 12, and second high-frequency power supply 15
`may apply, for example, 2 MHz power to lower electrode 13. Id. at 3:59–60,
`3:64–65.
`Hirose describes first filter circuit 20 and second filter circuit 21. Id.
`at 4:9–11. First filter circuit 20 includes an inductor-capacitor (LC) resonant
`circuit with a varying circuit constant. Id. at 4:11–13. Hirose states that
`“[t]he LC series resonant circuit selectively filters a high-frequency current
`output from the second high-frequency power supply 15 for preventing the
`current from reaching the first high-frequency power supply 14.” Id.
`at 4:13–16. Hirose also discloses that second filter circuit 21 prevents high-
`frequency current from first high-frequency power supply 14 from reaching
`second high-frequency power supply 15. Id. at 4:18–21.
`
`
`18 Hirose discloses lower electrode 13 for the embodiment depicted in
`Figure 1. Ex. 1006, 3:50. However, Figure 1 does not include reference
`numeral 13 but does include reference numeral 33. The embodiment
`depicted in Figure 7 includes lower electrode 33. Id. at 6:29. Figure 1’s
`reference numeral 33 appears to be typographical error and we presume that,
`in Figure 1, reference number 33 is intended to refer to lower electrode 13.
`
`16
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`
`Hirose describes how to set the circuit constant of first filter circuit
`20. Id. at 4:39–40. First and second high-frequency power supplies 14, 15
`apply power to upper electrode 12 and lower electrode 13, respectively, and
`a capacitor capacity of first filter circuit 20 is varied by measuring a voltage
`waveform. Id. at 4:42–47. Hirose teaches that when first and second high-
`frequency power supplies 14, 15 provide power at respective frequencies of
`60 MHz and 2 MHz, a capacitor capacity of 2500 pF for first filter circuit 20
`provides an optimum resonance point. Id. at 4:51–57, 5:1–3. This effect is
`depicted in Hirose’s Figure 6, which is reproduced below.
`
`
`Hirose states Figure 6 “shows a decrease in the sputter rate.” Id. at
`3:24; Pet. 22 n.9. Hirose is concerned with sputtering the chamber wall of
`its device and examines the relationship between the sputter rate and the
`capacitor capacity. Id. at 2:1–10, 5:3–6, 5:11–12. Hirose determines that a
`capacitor capacity of 2000 pF for first filter circuit 20 “greatly decreases the
`sputter rate” compared to a capacitor capacity of 2500 pF, and first filter
`circuit 20 with a capacitor capacity of “2000 pF is superior to the optimally
`
`17
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`resonant filter circuit” with 2500 pF. Id. at 5:49–52, 5:58–62. Comparing
`first filter circuit 20 with a capacitor capacity of 2000 pF with first filter
`circuit 20 with a capacitor capacity of 2500 pF, “the former is slightly
`inferior to the latter with respect to the resonance phenomenon.” Id. at 5:61–
`62.
`
`3. Whether Hirose Qualifies as Prior Art to the ’657 Patent
`The parties dispute whether Hirose qualifies as prior art to the ’657
`patent. Petitioner, who bears the burden to show Hirose is prior art, asserts
`that Hirose qualifies as prior art under pre-AIA 35 U.S.C. § 102(e) because
`Hirose’s filing date of July 18, 2001 is before the March 16, 2002 effective
`filing date of the ’657 patent. See Pet. 5.
`Patent Owner responds that Hirose does not qualify as prior art to
`the ’657 patent because the inventors of the ’657 patent conceived and
`reduced to practice the ’657 invention on or before Hirose’s filing date of
`July 18, 2001, likely as early as June 13, 2001. PO Resp. 12. To support
`this position, Patent Owner provides argument and evidence relating to the
`conception of the subject matter recited in claims 1–8 and 10–21. Id. at 15–
`39.
`
`An inventor may antedate a § 102(e) reference by showing that the
`invention was conceived before the effective date of the reference, followed
`by reasonably continuous diligence until the constructive reduction to
`practice. Monsanto Co. v. Mycogen Plant Sci., Inc., 261 F.3d 1356, 1362
`(Fed. Cir. 2001). Evidence of such conception and reduction to practice
`must be provided on a claim-by-claim basis.
`Petitioner met its burden of production to demonstrate that Hirose,
`which has a filing date prior to the filing date of the ’657 patent, was prior
`
`18
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`art by asserting Hirose was prior art under § 102(e). See Dynamic
`Drinkware, 800 F.3d at 1379. Hirose’s earlier filing date shifts the burden
`of production to Patent Owner to produce evidence supporting a date of
`invention before Hirose’s filing date. See id. With its Response, Patent
`Owner presents evidence it contends shows a date of conception of claims
`1–8 and 10–21 prior to July 18, 2001, followed by reasonably continuous
`diligence.
`For the purposes of this decision, we need not determine whether
`Hirose qualifies as prior art, because, as explained below, even if Hirose
`qualifies as prior art, Petitioner has not sufficiently shown that all of the
`asserted claims would have been obvious over the grounds asserting Hirose.
`E.
`Asserted Obviousness of Claims 2–4, 6, 8, 10–12, and 21 over
`Barber and Hirose
`Petitioner contends claims 2–4, 6, 8, 10–12, and 21 would have been
`obvious over the combined teachings of Barber and Hirose. Pet. 12–41;
`Reply 25–38. Patent Owner opposes. PO Resp. 39–69; Sur-reply 19–28.
`For the reasons explained below, we determine Petitioner has not
`sufficiently shown that claims 2–4, 6, 8, 10–12, and 21 would have been
`obvious over the combined teachings of Barber and Hirose.
`1. Independent Claim 2
`Petitioner argues that Barber teaches every limitation of claim 2 other
`than the “narrow band-rejection filter” limitations that are recited in claim
`elements 2[c2] and 2[d]. For these claim elements, Petitioner relies on the
`combination of Barber and Hirose. Pet. 12–34.
`We first address Petitioner’s contentions regarding the limitations
`taught by Barber alone and then address the limitations Petitioner asserts are
`taught by Barber in combination with Hirose.
`
`19
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`
`a) Petitioner’s Contentions Regarding Barber Alone
`2[a] A method of depositing an insulating film on
`a substrate, comprising:
`2[b] providing a process gas between a target and
`a substrate;
`Petitioner contends Barber discloses a “method of depositing an
`insulating film on a substrate, comprising providing a process gas between a
`target and a substrate” as recited in claim elements 2[a]19 and 2[b] by
`teaching the deposition of piezoelectric film 120 on substrate 110 by
`providing a process gas such as argon, nitrogen, or oxygen gas between a
`target 260 and substrate/wafer 110. Pet. 15.
`2[c1] providing pulsed DC power to the target . . .
`such that the voltage on the target alternates
`between positive and negative voltages;
`Claim element 2[c] recites:
`[c1] providing pulsed DC power to the target
`
`
`[c2] through a narrow band rejection filter
`[c1] such that the voltage on the target alternates between
`positive and negative voltages;
`Petitioner contends that Barber discloses claim element 2[c1] as one
`skilled in the art would have understood that the voltage of the pulsed DC
`power provided by Barber’s pulsed-DC power supply (230) to target (260)
`alternates between positive voltages and negative voltages as required by
`claim element 2[c1]. Pet. 15–17.
`
`
`19 The parties identify the preamble of claim 2 as claim element 2[a]. We
`need not, and do not, determine whether the preamble is limiting.
`
`20
`
`

`

`