IPR2014-00726
`U.S. Patent No. 6,896,773
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`THE GILLETTE COMPANY, TAIWAN SEMICONDUCTOR
`MANUFACTURING COMPANY, LTD., TSMC NORTH AMERICA
`CORP., FUJITSU SEMICONDUCTOR LIMITED, and FUJITSU
`SEMICONDUCTOR AMERICA, INC.,
`
`Petitioner
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`v.
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`ZOND, LLC
`Patent Owner
`__________________
`
`Case IPR2014-007261
`Patent 6,896,773
`__________________
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`ZOND LLC’S PATENT OWNER RESPONSE
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`1 Case IPR2014-01481 has been joined with the instant proceeding.
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`IPR2014-00726
`U.S. Patent No. 6,896,773
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`TABLE OF CONTENTS
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`I. INTRODUCTION .......................................................................................................................1
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`II. TECHNOLOGY BACKGROUND ...........................................................................................6
`
`A.
`
`B.
`
`Overview Of Magnetron Sputtering Systems. ...............................................................6
`
`The ’773 patent: Dr. Chistyakov invents a new sputtering source containing a
`cathode containing a sputtering target, an ionization source to generate weakly
`ionized plasma, a power supply generating a voltage pulse having an
`amplitude and a rise time chosen to increase a density of ions in the strongly
`ionized plasma enough to generate sufficient thermal energy in the sputtering
`target to cause a sputtering yield to be non-linearly related to a temperature of
`the sputtering target........................................................................................................7
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`III. SUMMARY OF THE INSTITUTED GROUNDS FOR REVIEW .......................................12
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`IV. CLAIM CONSTRUCTION. ..................................................................................................13
`
`A.
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`B.
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`C.
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`The construction of “weakly ionized plasma” and “strongly ionized plasma” ...........14
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`The construction of “means for ionizing a feed gas to generate a weakly-
`ionized plasma” ............................................................................................................14
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`The construction of “means for increasing the density of the weakly-ionized
`plasma” ........................................................................................................................14
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`V. THE PETITIONER CANNOT PREVAIL ON ANY CHALLENGED CLAIM OF
`THE ’773 PATENT. ...............................................................................................................15
`
`A.
`
`The Petition failed to demonstrate that a skilled artisan would have been
`motivated to combine the teachings of the prior art references to achieve the
`claimed invention of the ’773 patent with a reasonable expectation of success
`or that combining the teachings of the prior art would have led to predictable
`results. ..........................................................................................................................16
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`1.
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`Scope and content of prior art. ...............................................................................19
`
`a.
`
`b.
`
`c.
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`d.
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`Lantsman ..........................................................................................................20
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`Fortov ...............................................................................................................21
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`Mozgrin ............................................................................................................22
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`Kudryavtsev .....................................................................................................23
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`IPR2014-00726
`U.S. Patent No. 6,896,773
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`2.
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`The Petitioner Failed To Show That It Would Have Been Obvious To
`Combine Mozgrin With Fortov, Lantsman, And/Or Kudryavtsev To
`Achieve the Claimed Invention With A Reasonable Expectation Of
`Success. ..................................................................................................................26
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`B.
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`The Petition fails to demonstrate how the alleged combinations teach every
`element of the challenged claims. ................................................................................37
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`The cited references do not teach “ionizing a feed gas to generate a
`weakly-ionized plasma proximate to a cathode assembly that comprises a
`sputtering target,” as recited in independent claim 21, and as similarly
`recited in independent claim 40. ............................................................................38
`
`The cited references do not teach “applying a voltage pulse to the cathode
`assembly to generate a strongly-ionized plasma from the weakly ionized
`plasma, an amplitude and a rise time of the voltage pulse being chosen so
`that ions in the strongly ionized plasma generate sufficient thermal energy
`in the sputtering target to cause a sputtering yield to be non-linearly
`related to a temperature of the sputtering target, thereby increasing a
`deposition rate of the sputtering,” as recited in independent claim 21 and
`as similarly recited in independent claim 40. .........................................................40
`
`The cited references do not teach the step of “ionizing the feed gas
`comprises exposing the feed gas to one of a static electric field, an AC
`electric field, a quasi-static electric field, a pulsed electric field, UV
`radiation, X-ray radiation, an electron beam, and an ion beam,” as recited
`in independent claim 28. ........................................................................................43
`
`The cited references do not teach the step of “diffusing the weakly-ionized
`plasma with a volume of the feed gas while ionizing the volume of the
`feed gas to create additional weakly-ionized plasma,” as recited in claim
`24............................................................................................................................44
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`The cited references do not teach the step of “diffusing the strongly-
`ionized plasma with a volume of the feed gas while applying the voltage
`pulse to the cathode assembly to generate additional strongly-ionized
`plasma from the volume of the feed gas” as recited in claim 25. ..........................46
`
`The cited references do not teach the step of “the voltage pulse applied to
`the cathode assembly generates excited atoms in the weakly-ionized
`plasma and generates secondary electrons from the sputtering target, the
`secondary electrons ionizing the excited atoms, thereby creating the
`strongly-ionized plasma,” as recited in claim 23. ..................................................48
`
`The cited references do not teach that “the ions in the strongly-ionized
`plasma causes at least a portion of a surface layer of the sputtering target
`to evaporate,” as recited in claim 29. .....................................................................50
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`IPR2014-00726
`IPR2014—00726
`U.S. Patent No. 6,896,773
`US. Patent No. 6,896,773
`VI. CONCLUSION ....................................................................................................................... 52
`VI. CONCLUSION.......................................................................................................................52
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`IPR2014-00726
`U.S. Patent No. 6,896,773
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`Exhibit List
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`Description
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`Exhibit
`No.
`Ex. 2004 U.S. Patent 6,398,929 to Chiang
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`Ex. 2005 Declaration of Dr. Hartsough, Patent Owner’s expert.
`
`Ex. 2006 Sinha, Naresh, K., Control Systems, Holt, Rinehart and Winston,
`1986.
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`Ex. 2007 Eronini Umez-Eronini, System Dynamics and Control, Brooks Cole
`Publishing Co., CA, 1999, pp. 10-13.
`
`Ex. 2008 Excerpts from Weyrick, Fundamentals of Automatic Control,
`McGraw-Hill Book Company, 1975.
`
`Ex. 2009 Excerpts from Kua, Automatic Control, Prentice Hall Inc., 1987.
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`Ex. 2010 Transcript of deposition of Mr. DeVito, Petitioner’s expert, for the
`’773 Patent
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`v
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`IPR2014-00726
`U.S. Patent No. 6,896,773
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`I. INTRODUCTION
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` The Petitioner’s arguments hinge on fanciful misreadings of the prior
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`art by their proffered expert, Mr. DeVito. As will be shown below, neither
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`Mozgrin nor Fortov teaches “an amplitude and a rise time of the voltage pulse
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`being chosen so that ions in the strongly ionized plasma generate sufficient
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`thermal energy in the sputtering target to cause a sputtering yield to be non-
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`linearly related to a temperature of the sputtering target, thereby increasing a
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`deposition rate of the sputtering,” as recited in independent claim 21 of the
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`‘773 patent. Once the Board recognizes that Mr. DeVito essentially invented
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`some of the alleged “teachings” in Mozgrin and Fortov to suit the Petitioner’s
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`objectives, the Board should agree to confirm the challenged claims.
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`Mozgrin does not even mention any attempt to achieve a sputtering
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`yield to be non-linearly related to a temperature of the sputtering target, let
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`alone achieving this yield by choosing an amplitude or rise time of the applied
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`voltage pulse. Rather, Mozgrin designed its voltage pulse to address an
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`entirely issue: ionization-overheating instability.2
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`Indeed, Petitioners’ own expert, Mr. DeVito, admitted in his deposition
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`that Mozgrin does not disclose choosing the amplitude and rise time of a
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`2 Exhibit, 1002, Mozgrin at 401, right col, ¶ 1 (emphasis added).
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`1
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`IPR2014-00726
`U.S. Patent No. 6,896,773
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`voltage pulse to cause the sputtering yield to be non-linear with the target
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`temperature:
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`Q. You would agree with me that Mozgrin is in the Mozgrin
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`reference is not concerned with the goal of increasing the density
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`of ions in the strongly-ionized plasma enough to generate
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`sufficient thermal energy in the sputtering target to cause a
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`sputtering yield to be non-linearly related to a temperature of the
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`sputtering target?
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`…
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`A. Well, that's why we bring in Fortov to use the tools that
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`Mozgrin gives to achieve the end results.3
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`
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`Although Fortov mentions a non-linear relation of a sputtering yield to a
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`temperature of the sputtering target, however, it does not make any mention of
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`how to achieve it. That is, Fortov does not describe how to (i) choose the
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`amplitude and rise time of the voltage pulse to (ii) increase ion density in the
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`strongly-ionized plasma to (iii) generate sufficient target thermal energy and
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`(iv) cause the sputtering yield to be non-linear with target temperature, as
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`required by claim 21.
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`Thus, Mr. DeVito’s conclusory opinions are unsupported and should be
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`disregarded by the Board. Once the prior art is properly understood, the Board
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`3 Exhibit 2010, DeVito Deposition (1.20.15), p. 31, l. 20 – p. 32, l. 11.
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`2
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`IPR2014-00726
`U.S. Patent No. 6,896,773
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`will see that it is missing key claim limitations, not only choosing an amplitude
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`and voltage pulse to cause the sputtering yield to be non-linear with target
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`temperature, but also other limitations in the other claims of the ’773 patent as
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`explained in detail below.4
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`In addition to missing key limitations, the Petitioner’s obviousness
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`rejections are all predicated on the false assumption that a skilled artisan could
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`have achieved the invention recited in the challenged claims of the ‘773 patent
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`by combining the teachings of Mozgrin with Fortov, Lantsman, and/or
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`Kudryavtsev.5
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`But these references disclose very different structures and processes. For
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`example, Mozgrin teaches two different “[d]ischarge device configurations: (a)
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`planar magnetron and (b) shaped-electrode configuration.”6 Mozgrin further
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`discloses a “square voltage pulse application to the gap.”7 Lantsman makes no
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`4 Infra, § V.B.
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`5 Petition at pp. 13-60.
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`6 Mozgrin, Ex. 1002 at Fig. 1 caption.
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`7 Id. at p. 402, col. 2, ¶ 2.
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`IPR2014-00726
`U.S. Patent No. 6,896,773
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`mention of generating strongly ionized plasma.8 Kudryavtsev teaches a fourth
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`type of discharge device configuration in which the “discharge occurred inside
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`a cylindrical tube of diameter 2R = 2.5 cm and the distance between the
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`electrodes was L = 52 cm.”9 Lantsman did not describe a pulsed power
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`supply; it instead discloses two DC power supplies: “DC power supply 10,”10
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`and “secondary DC power supply 32.”11
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`And the Petitioner sets forth no evidence that the structure and process
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`of Mozgrin would have produced the particular claimed sputtering source with
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`a voltage pulse having an amplitude and a rise time being chosen to increase a
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`density of ions in the strongly ionized plasma enough to generate sufficient
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`thermal energy in the sputtering target to cause a sputtering yield to be non-
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`linearly related to a temperature of the sputtering target if it were somehow
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`modified, for example, by the very different cylindrical structure Kudryavtsev
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`that does not have a magnet or a structure that does not even apply an
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`8 See e.g., id. at col. 4.
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`9 Kudryavtsev, Ex. 1404 at 32, right col. ¶5.
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`10 Lantsman, Ex. 1008 at col, 4, l. 11.
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`11 Id. at col. 4, l. 11.
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`electrical pulse or generate strongly-ionized plasma, like the structure disclosed
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`IPR2014-00726
`U.S. Patent No. 6,896,773
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`in Lantsman.12
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`That is, the Petitioner did not show that a “skilled artisan would have
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`been motivated to combine the teachings of the prior art references to achieve
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`the claimed invention, and that the skilled artisan would have had a reasonable
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`expectation of success in doing so.”13 The Board has consistently declined to
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`institute proposed grounds of rejections in IPR proceedings when the Petition
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`fails to identify any objective evidence such as experimental data, tending to
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`establish that two different structures or processes can be combined.14 Here,
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`the Petitioner did not set forth any such objective evidence.15
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`For these reasons as expressed more fully below, none of the claims of
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`the ’773 patent are obvious.
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`12 See e.g., Petition, pp. 14-60.
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`13 OSRAM Sylvania, Inc. v. Am Induction Techs., Inc., 701 F.3d 698, 706 (Fed.
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`Cir. 2012).
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`14 Epistar, et al. v. Trustees Of Boston University, IPR2013-00298, Decision Not To
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`Institute, Paper No. 18 (P.T.A.B. November 15, 2103).
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`15 See e.g., Petition, pp. 14-60.
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`5
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`IPR2014-00726
`U.S. Patent No. 6,896,773
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`II. TECHNOLOGY BACKGROUND
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`A. Overview Of Magnetron Sputtering Systems.
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`Sputtering systems generate and direct ions from plasma “to a target
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`surface where the ions physically sputter target material atoms.”16 Then,
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`“[T]he target material atoms ballistically flow to a substrate where they deposit
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`as a film of target material.”17 “The plasma is replenished by electron-ion pairs
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`formed by the collision of neutral molecules with secondary electrons
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`generated at the target surface.”18
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`A planar magnetron sputtering system is one type of sputtering system.19
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`“Magnetron sputtering systems use magnetic fields that are shaped to trap and
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`to concentrate secondary electrons, which are produced by ion bombardment
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`of the target surface.”20 “The trapped electrons enhance the efficiency of the
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`16 Ex. 1001, col. 1, ll. 9-10.
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`17 Id. at col. 1, ll. 10-12.
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`18Id. at col. 1, ll. 30-33.
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`19 Id. at 1, ll. 42-43.
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`20 Id. at col. 1, ll. 34-36.
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`IPR2014-00726
`U.S. Patent No. 6,896,773
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`discharge and reduce the energy dissipated by electrons arriving at the
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`substrate.”21
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`But prior art planar magnetron sputtering systems experienced non-
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`uniform erosion or wear of the target that results in poor target utilization.22
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`“In addition, conventional magnetron sputtering systems have a relatively low
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`deposition rate…the amount of material deposited on the substrate per unit of
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`time”23 “The deposition rate of a sputtering process is generally proportional
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`to the sputtering yield.”24 The sputtering yield means “the number of target
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`atoms ejected from the target per incident particle.”25
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`
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`B. The ’773 patent: Dr. Chistyakov invents a new sputtering source
`containing a cathode containing a sputtering target, an ionization
`source to generate weakly ionized plasma, a power supply generating a
`voltage pulse having an amplitude and a rise time chosen to increase a
`density of ions in the strongly ionized plasma enough to generate
`
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`21 Id. at col. 1, ll. 49-51.
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`22 Id. at col. 2, ll. 54-63.
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`23 Id. at col. 1, ll. 63-66.
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`24 Id. at col. 2, ll. 57-58.
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`25 Id. at col. 2, ll. 1-2.
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`7
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`IPR2014-00726
`U.S. Patent No. 6,896,773
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`sufficient thermal energy in the sputtering target to cause a sputtering
`yield to be non-linearly related to a temperature of the sputtering target
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`To overcome the problems of low deposition rate and sputtering yield of
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`the prior art, Dr. Chistyakov invented a sputtering source containing (i) a
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`cathode containing a sputtering target, (ii) an ionization source to generate
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`weakly ionized plasma, and (iii) a power supply generating a voltage pulse
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`having an amplitude and a rise time chosen to generate a strongly ionized
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`plasma with an increase in the density of ions enough to generate sufficient
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`thermal energy in the sputtering target to cause a sputtering yield to be non-
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`linearly related to a temperature of the sputtering target, as recited in
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`independent claims 1 and 34, and as illustrated in Fig. 5A of the ’773 patent,
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`reproduced below:
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`IPR2014-00726
`U.S. Patent No. 6,896,773
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`As illustrated by FIG. 5A, Dr. Chistyakov’s sputtering source 200 includes
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`a pulsed power supply 234, and a cathode assembly 216 including the
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`sputtering target 220. In one embodiment, the “cathode assembly 216 is
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`coupled to the output 222 of the matching unit 224.”26 “The input 230 of the
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`matching unit 224 is coupled to the first output 232 of the pulsed power supply
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`234. The second output 236 of the pulsed power supply 234 is coupled to the
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`anode 238.”27
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`26 Id. at col. 6, ll. 39-40.
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`27 Id. at col. 6, ll. 42-43.
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`IPR2014-00726
`U.S. Patent No. 6,896,773
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`“The anode 238 is positioned so as to form a gap 244 between the anode
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`238 and the cathode assembly 216 that is sufficient to allow current to flow
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`through the region 245 between the anode 238 and the cathode assembly 216.
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`In one embodiment, the width of the gap 244 is between approximately 0.3 cm
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`and 10 cm.”28
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`In operation, a “pre-ionizing voltage is applied between the cathode
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`assembly 216 and the anode 238 across the feed gas 256, which forms the
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`weakly-ionized plasma 262.”29 A magnetic field is generated to trap electrons
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`in a particular region:
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`[The] magnetic field tends to assist in diffusing electrons from the
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`region 245 to the region 264. The electrons in the weakly-ionized
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`plasma 262 are substantially trapped in the region 264 by the
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`magnetic field 245. In one embodiment, the volume of weakly-
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`ionized plasma 262 in the region 245 is rapidly exchanged with a
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`fresh volume of feed gas 256.30
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`“Next, the pulsed power supply 234 applies a high power electrical pulse
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`across the weakly-ionized plasma 262. The high power electrical pulse
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`28 Id. at col. 10, ll. 19-25.
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`29 Id. at col. 11, ll. 62-65.
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`30 Id. at col. 12, ll. 3-8.
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`IPR2014-00726
`U.S. Patent No. 6,896,773
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`generates a strongly-ionized plasma 268 from the weakly-ionized plasma
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`262.”31 “The strong electric field 266 causes the feed gas to experience stepwise
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`ionization. In one embodiment, the feed gas includes a molecular gases and
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`the strong electric field 266 increases the formation of ions that enhance the
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`strongly-ionized plasma 268.”32
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`The sputtering yield is monitored and the electrical pulse is adjusted so
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`that the sputtering yield increases in a non-linear manner:
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`After the strongly-ionized plasma 268 is formed (step 626), the
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`sputtering yield is monitored (step 628) by known monitoring
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`techniques. If the sputtering yield is insufficient (step 630), the
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`power delivered to the plasma is increased (step 632). In one
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`embodiment, increasing the magnitude of the high-power pulse
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`applied between the cathode assembly 216 and the anode 238
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`increases the power delivered to the plasma. In one embodiment,
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`the power delivered to the plasma is sufficient to vaporize a surface
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`layer of the target. This increases the sputtering yield in a
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`substantially nonlinear fashion.33
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`31 Id. at col. 13, ll. 41-44.
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`32 Id. at col 20, ll. 34-38.
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`33 Id. at col 1, ll. 53-63.
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`11
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`IPR2014-00726
`U.S. Patent No. 6,896,773
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`In the claimed invention, the rise time and amplitude of the applied voltage
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`pulse is chosen so that “to increase a density of ions in the strongly ionized
`
`plasma enough to generate sufficient thermal energy in the sputtering target to
`
`cause a sputtering yield to be non-linearly related to a temperature of the
`
`sputtering target.”34
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`III. SUMMARY OF THE INSTITUTED GROUNDS FOR REVIEW
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`For the Board’s convenience, below is a summary of the grounds
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`instituted in this IPR proceeding:
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`1. Claims 21, 22, 26-33, and 40: obvious under § 103(a) over the
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`combination of Mozgrin and Fortov;
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`2. Claims 24 and 25: obvious under § 103(a) over the combination of
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`Mozgrin, Fortov, and Lantsman; and
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`3. Claim 23: obvious under § 103(a) over the combination of
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`Mozgrin, Kudryavtsev and Fortov.
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`34 Id. at col. 21, ll. 19-23.
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`IPR2014-00726
`U.S. Patent No. 6,896,773
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`IV. CLAIM CONSTRUCTION.
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`Under the Board’s rules, any unexpired claim “shall be given its broadest
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`reasonable construction in light of the specification of the patent in which it
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`appears.”35 Under that construction, claim terms are to be given their ordinary
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`and customary meaning as would be understood by one of ordinary skill in the
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`art in the context of the entire patent disclosure.36 The customary meaning
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`applies unless the specification reveals a special definition given to the claim
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`term by the patentee, in which case the inventor’s lexicography governs.37
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`35 37 C.F.R. § 42.100(b).
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`36 Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc);
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`Research in Motion v. Wi-Lan, Case IPR2013-00126, Paper 10 at 7 (P.T.A.B.
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`June 20, 2013).
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`37 See Phillips, 415 F.3d at 1316 (“[T]he specification may reveal a special
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`definition given to a claim term by the patentee that differs from the meaning
`
`that it would otherwise possess. In such cases, the inventor’s lexicography
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`governs.”).
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`IPR2014-00726
`U.S. Patent No. 6,896,773
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`A. The construction of “weakly ionized plasma” and “strongly ionized
`plasma”
`
`The Board construed “strongly ionized plasma” as “a plasma with a
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`relatively high peak density of ions.”38 The Board construed “weakly ionized
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`plasma” as “a plasma with a relatively low peak density of ions.”39
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`
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`B.
`
` The construction of “means for ionizing a feed gas to generate a
`weakly-ionized plasma”
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`The Board also ruled that the corresponding structure for performing the
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`recited function —“ionizing a feed gas to generate a weakly-ionized plasma”—
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`to be a power supply electrically connected to a cathode assembly and an
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`anode.40
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`
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`C.
`
` The construction of “means for increasing the density of the weakly-
`ionized plasma”
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`The Board “observe[d] that the recited function for this claim element is
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`“increasing the density of the weakly-ionized plasma to generate a strongly ionized
`
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`38 Institution Decision, Paper No. 8, p. 10.
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`39 Id.
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`40 Id., p. 13.
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`IPR2014-00726
`U.S. Patent No. 6,896,773
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`plasma having a density of ions that generate sufficient thermal energy in the
`
`sputtering target to cause a sputtering yield to be non-linearly related to a
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`temperature of the sputtering target.”41 The Board ruled that the corresponding
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`structure for performing the recited “increasing” means is a cathode assembly, an
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`anode, and a pulsed power supply electrically coupled to the cathode assembly and
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`anode.42
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`
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`V. THE PETITIONER CANNOT PREVAIL ON ANY CHALLENGED
`CLAIM OF THE ’773 PATENT.
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`Differences between the challenged claims and the prior art are critical
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`factual inquiries for any obviousness analysis and must be explicitly set forth
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`by the Petitioner.43 The bases for rejection under 35 U.S.C. § 103 must be
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`made explicit.44 Thus, a Petition seeking to invalidate a patent as obvious must
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`demonstrate that a “skilled artisan would have been motivated to combine the
`
`teachings of the prior art references to achieve the claimed invention, and that
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`41 Id. at 13.
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`42 Id. at 15.
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`43 See Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17 (1966).
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`44 MPEP § 2143.
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`15
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`IPR2014-00726
`U.S. Patent No. 6,896,773
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`the skilled artisan would have had a reasonable expectation of success in doing
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`so.”45 The Petition’s evidence must also address every limitation of every
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`challenged claim.
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`Here, the Board should confirm the challenged claims because (i) the
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`Petition failed to demonstrate that a skilled artisan would have been motivated
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`to combine the teachings of the prior art references to achieve the claimed
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`invention of the ’773 patent, and that the skilled artisan would have had a
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`reasonable expectation of success in doing so or that combining the teachings
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`of the prior art would have led to predictable results, (ii) the Petition failed to
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`demonstrate that the prior art teaches every element of the challenged claims;
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`(iii) the Petition failed to demonstrate that the Mozgrin Thesis is prior art.
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`A. The Petition failed to demonstrate that a skilled artisan would have
`been motivated to combine the teachings of the prior art references to
`achieve the claimed invention of the ’773 patent with a reasonable
`expectation of success or that combining the teachings of the prior art
`would have led to predictable results.
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`The Petitioner cannot prevail on any of the grounds of rejection pending
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`in this IPR because the Petitioner failed to demonstrate that any of the
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`45 OSRAM Sylvania, Inc. v. Am. Induction Techs., Inc., 701 F.3d 698, 706 (Fed.
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`Cir. 2012).
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`IPR2014-00726
`U.S. Patent No. 6,896,773
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`challenged claims are obvious. Generally, a party seeking to invalidate a
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`patent as obvious must demonstrate that a “skilled artisan would have been
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`motivated to combine the teachings of the prior art references to achieve the
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`claimed invention, and that the skilled artisan would have had a reasonable
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`expectation of success in doing so.”46 This is determined at the time the
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`invention was made.47 This temporal requirement prevents the “forbidden use
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`of hindsight.”48 Rejections for obviousness cannot be sustained by mere
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`46 See Proctor & Gamble Co. v. Teva Pharm. USA, Inc., 566 F.3d 989, 995 (Fed.
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`Cir. 2009) (“To decide whether risedronate was obvious in light of the prior
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`art, a court must determine whether, at the time of invention, a person having
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`ordinary skill in the art would have had ‘reason to attempt to make the
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`composition’ known as risedronate and ‘a reasonable expectation of success in
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`doing so.’”) (emphasis added).
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`47 Id.
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`48 See Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1379 (Fed. Cir. 2012)
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`(“Indeed, where the invention is less technologically complex, the need for
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`Graham findings can be important to ward against falling into the forbidden
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`use of hindsight.”).
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`IPR2014-00726
`U.S. Patent No. 6,896,773
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`conclusory statements.49 “Petitioner[s] must show some reason why a person of
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`ordinary skill in the art would have thought to combine particular available
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`elements of knowledge, as evidenced by the prior art, to reach the claimed
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`invention.”50 Inventions are often deemed nonobvious (and thus patentable)
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`even when all of the claim elements are individually found in the prior art
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`because an “invention may be a combination of old elements.”51 The
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`motivation to combine inquiry focuses heavily on “scope and content of the
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`49 See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[R]ejections on
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`obviousness grounds cannot be sustained by mere conclusory statements;
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`instead, there must be some articulated reasoning with some rational
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`underpinning to support the legal conclusion of obviousness”).
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`50 Heart Failure Technologies, LLC v. Cardiokinetix, Inc., IPR2013-00183, Paper 12
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`at 9 (P.T.A.B. July 31, 2013) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
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`418 (2007)) (emphasis in original).
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`51 Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1321
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`(Fed. Cir. 2005).
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`prior art” and the “level of ordinary skill in the pertinent art” aspects of the
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`Graham factors.52 The Petition did not address either factor.
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`IPR2014-00726
`U.S. Patent No. 6,896,773
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`
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`1.
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`Scope and content of prior art.
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`Any obviousness analysis requires a consideration of the scope and
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`content of the prior art and the differences between the prior art and the
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`claims.53 The Petition does not offer any explanation of the scope or content of
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`the cited references. The proposed obviousness rejections of the challenged
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`claims pending in this IPR are based on the combinations of Mozgrin with
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`Fortov, Lantsman, and Kudryavtsev. These references are summarized below.
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`52 Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1290 (Fed. Cir. 2006) (“We
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`further explained that the ‘motivation to combine’ requirement ‘[e]ntails
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`consideration of both the ‘scope and content of the prior art’ and ‘level of
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`ordinary skill in the pertinent art’ aspects