`IPR2014-00803
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY LTD, AND
`TSMC NORTH AMERICA CORP.
`
`Petitioner
`
`v.
`
`ZOND, LLC
`Patent Owner
`
`U.S. Patent No. 7,808,184
`
`_____________________
`
`Inter Partes Review Case No. 2014-00803
`_____________________
`
`PATENT OWNER’s PRELIMINARY RESPONSE
`UNDER 37 CFR § 42.107(a)
`
`
`
`
`
`
`
`
`
`
`
`
`Patent No. 7,808,184
`IPR2014-00803
`
`
`TABLE OF CONTENTS
`
`I. INTRODUCTION .................................................................................. 1
`
`II. TECHNOLOGY BACKGROUND ....................................................... 6
`
`A. Overview of Pulsed Plasma Systems ................................................... 6
`
`B. The ‘184 Patent: Dr. Chistyakov Invents a Pulse Control
`Technique for Rapidly Increasing a Plasma’s Electron Density
`Without Arcing. ............................................................................. 8
`
`III. SUMMARY OF PETITIONER’S PROPOSED GROUNDS ................ 11
`
`IV. CLAIM CONSTRUCTION UNDER 37 C.F.R. §§ 42.104(B)(3) ........... 11
`
`A. Construction of “Weakly Ionized Plasma” and “Strongly Ionized
`Plasma” ....................................................................................... 12
`
`B. Petitioner’s Implicit Construction of Other Claim Language is
`Unclear and Does Not Comply with 42 C.F.R. § 42.104(b) or
`Federal Circuit Law. ..................................................................... 14
`
`C. Patent Owner’s Construction of “Voltage Pulse Having At Least
`One of a Controlled Amplitude and a Controlled Rise Time.” ........ 14
`
`V. PETITIONER HAS FAILED TO SHOW A REASONABLE
`LIKELIHOOD OF PREVAILING. ..................................................... 17
`
`A. Defects Common to All Grounds. ................................. 17
`
`1. Petition Fails to Follow the Proper Legal Framework
`For an Obviousness Analysis. .............................................. 17
`
`2. Petition Violates Page Restrictions by Incorporating
`Fifty-One Pages of Claim Charts. ......................................... 18
`
`B. Defects in Ground I: Petitioner Failed To Demonstrate That Any
`Claim Challenged in Ground I is Obvious Over Mozgrin and
`Kudryavtsev under 35 U.S.C. § 103(a). .......................................... 20
`
`
`
`i
`
`
`
`Patent No. 7,808,184
`IPR2014-00803
`
`
`1. Scope and Content of the Prior Art. ............................... 20
`
`a. Kudryavtsev ............................................................................ 20
`
`b. Mozgrin’s Experiments. .......................................................... 23
`
`2. Differences Between the Parent Claims 1, 11 and the
`Art. 26
`
`3. Level of Skill in the Art. ................................................. 31
`
`4. Incompatibility of the References and Absence of
`Motivation to Combine. ....................................................... 32
`
`5. Conclusion: Petitioner Has Not Shown a Reasonable Likelihood
`of Success on Any Claim Challenged in Ground I. ........................ 34
`
`6. Ground I: Petitioner’s Additional Arguments Against
`Claims 8 and 18 Do Not Justify Review ............................... 35
`
`7. Ground I: Petitioner’s Additional Arguments Against
`Dependent Claims 9, 10, 19 and 20 Do Not Justify
`Review ................................................................................ 37
`
`C. Defects In Ground II: Petitioner Failed To Demonstrate A
`Reasonable Likelihood That Claims 6 – 10 and Claims 16 – 20
`Are Obvious Over Mozgrin and Mozgrin’s Thesis under 35
`U.S.C. § 103(a). ............................................................................ 39
`
`1. The Petition Fails to Prove that Mozgrin’s Thesis is
`Prior Art. ............................................................................. 39
`
`2. Mozgrin Thesis Does Not Teach the Claimed
`Invention ............................................................................. 42
`
`3. Petitioner’s Additional Arguments Against
`Dependent Claims 6 – 10 and 16 – 20 Do Not Justify
`Review ................................................................................ 44
`
`D. Defects In Ground III: Petitioner Failed To Demonstrate A
`Reasonable Likelihood That Claims 6, 7, 9, 10, 16, 17, 19, and
`
`ii
`
`
`
`
`
`
`
`
`
`Patent No. 7,808,184
`IPR2014-00803
`
`
`20 Are Obvious Over Wang and Kudryavtsev under 35 U.S.C.
`§ 103(a). ....................................................................................... 44
`
`1. Ground III: Petition Fails to Show A Reasonable
`Likelihood of Success on and Claim Challenged in
`Ground III .......................................................................... 45
`
`2. Ground III: Petitioner’s Additional Arguments
`Against Dependent Claims 9, 10, 19 and 20 Do Not
`Justify Review ..................................................................... 48
`
`E. Ground IV. Petitioner Failed To Demonstrate A Reasonable
`Likelihood That Claims 8 and 18 Are Obvious Over Wang,
`Kudryavtsev and Mozgrin under 35 U.S.C. § 103(a) ...................... 50
`
`VI. CONCLUSION ................................................................................... 51
`
`
`
`
`
`
`
`
`
`iii
`
`
`
`Patent No. 7,808,184
`IPR2014-00803
`
`
`EXHIBIT LIST
`
`Exhibit No.
`Ex. 2001
`
`Description
`Information Disclosure Statement
`
`Ex. 2002
`
`Ex. 2003
`
`Ex. 2004
`
`
`
`
`
`
`Webster’s New World College
`Dictionary, 4th Edition, 2008
`U.S. Patent No. 6,896,773
`
`U.S. Patent No. 6,806,652
`
`
`
`iv
`
`
`
`
`
`
`
`
`
`I.
`
`Introduction
`
`Patent No. 7,808,184
`IPR2014-00803
`
`
`The Petitioner has represented in a motion for joinder (paper no. 6) that
`
`this petition “is identical to the Intel IPR in all substantive respects, includes
`
`identical exhibits, and relies upon the same expert declarant.” Accordingly,
`
`based upon that representation, the Patent Owner opposes review on the same
`
`basis presented in opposition to Intel’s request no. IPR2014-00456, which is
`
`repeated below:
`
`The present petition is the second of two petitions filed by Intel Inc. for
`
`inter partes review of U.S. Patent No. 7,808,184 (“the ‘184 patent”). The first1
`
`seeks cancellation of all independent claims (1, 11), and selected dependent
`
`claims. This second petition seeks cancellation of the remaining dependent
`
`claims 6 – 10 and 16 – 20. In order to justify review of the dependent claims 6
`
`– 10 and 16 -20, the Petitioner must first show a reasonable likelihood that that
`
`the parent claims 1, 11 are unpatentable, and then must further show that the
`
`narrower dependent claims are also likely to be unpatentable.
`
`The second petition copies the same arguments and evidence presented
`
`against the parent claims 1, 11 in IPR 2014-00455. Therefore, this second
`
`petition should be categorically denied for the exact same reasons given by the
`
`
`1 IPR 2014-00455.
`
`
`
`1
`
`
`
`
`Patent Owner in response to IPR 2014-00455, which, as required, are repeated
`
`Patent No. 7,808,184
`IPR2014-00803
`
`
`here.2 Furthermore, as explained below, the dependent claims specifically
`
`addressed in the present petition are even less likely to be found un-patentable
`
`and therefore the Petition does not justify review.
`
`The Petition, like IPR2014-00455, relies solely on theories of
`
`obviousness woven almost entirely from prior art references3 already
`
`considered by the patent office4 but without persuasive reasons why the
`
`outcome should be any different here. In fact, it does not even address the
`
`requisite factual inquiries for an obviousness analysis as set forth by the
`
`Supreme Court,5 and skirts several other significant procedural requirements:
`
`
`2 Rule §46.6 prohibits incorporation by reference of the Patent Owner’s
`
`response from IPR 2014-000455.
`
`3 Ex. 1003, Mozgrin; Ex. 1004, Kudyavtsev; Ex. 1005, Wang.
`
`4 Ex. 2001, Information Disclosure Statement, pgs. 2, 6.
`
`5 Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966); KSR
`
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 399 (2007) (“[T]he [Graham] factors define
`
`the controlling inquiry”); Liberty Mutual v. Progressive Casualty, CMB-2012-
`
`00003, paper 7 at 2 – 3.
`
`
`
`2
`
`
`
`Patent No. 7,808,184
`IPR2014-00803
`
`
`It cites to a student thesis without proof that the thesis was a
`
`prior “printed publication” as required by 35 U.S. C.
`
`§311(b);
`
`It fails to adequately identifying how key language in the
`
`challenged claims is construed for purposes if its comparison
`
`to the art, as required by rule §42.104(b)(3); and
`
`It improperly incorporates fifty-one pages of claim charts as
`
`exhibits in the face of rules §42.24(a)(i) and §42.6(a)(3).
`
`
`
`1.
`
`2.
`
`3.
`
`For at least these reasons, the Petition should be denied.
`
`The Petition relies primarily on the combined teachings of Mozgrin,
`
`Kudryavtsev, and Wang,6 each of which was considered by the Examiner
`
`before he allowed the claims of the ‘184 patent.7 The allowed claims recite a
`
`method for forming a strongly ionized plasma by, inter alia, generating a
`
`voltage pulse having a controlled amplitude and/or a controlled rise time to
`
`achieve a rapid increase in electron density without forming an arc. The
`
`cited references all describe pulses for generating a plasma, but none disclose
`
`the claimed type of “control.”
`
`The Petition does not identify what claim interpretation it uses for the
`
`control language, and strategically refrains from identifying the differences
`
`
`6 Ex. 1003, Mozgrin; Ex. 1004, Kudyavtsev; Ex. 1005, Wang.
`
`7 Ex. 2001, Signed Information Disclosure Statement.
`
`
`
`3
`
`
`
`
`between the claims and its cited art. Instead it argues that certain claim
`
`Patent No. 7,808,184
`IPR2014-00803
`
`
`features are taught by “the combination of Mozgrin and Kudryavtsev” or
`
`“the combination of Wang and Kudryavtsev.”8 The Petitioner thereby avoids
`
`admitting the shortcomings of Mozgrin, Kudryavtsev and Wang, but in doing
`
`so denies the Board a proper Graham analysis9 required for assessing
`
`obviousness.
`
`The Petitioner’s reticence about its interpretation of key claim language
`
`coupled with its refusal to acknowledge the differences between the claims and
`
`art, do not “provide a statement of the precise relief request for each
`
`challenged claim” as required by 37 C.F.R. §42.102. Instead, the Petition
`
`effectively forces the Patent Owner “to conjure up arguments against its own
`
`patent.”10 The Board has previously warned against this, noting that it will not
`
`“take the side of the Petitioner to salvage an inadequately expressed ground,”
`
`and will “address only the basis, rationale, and reasoning put forth by the
`
`
`8 Petition at 21, 49.
`
`9 Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966);
`
`10 Liberty Mutual Insurance Co. v. Progressive Casual Insurance Com., CBM 2012-
`
`00003, paper 8, page 14.
`
`
`
`4
`
`
`
`
`Petition and resolve all vagueness and ambiguity in Petitioner’s arguments
`
`Patent No. 7,808,184
`IPR2014-00803
`
`
`against the Petitioner.”11
`
`Lastly, the Petitioner tries to convince the Board that Zond
`
`misrepresented Mozgrin’s teachings during prosecution of Zond’s U.S. patent
`
`number 7,147,759 (“the ‘759 Patent”).12 A mere glance at the record reveals to
`
`the contrary: 13 In the alleged misrepresentation, Zond argued that Mozgrin
`
`does not teach a process in which “ground state atoms” are excited to form
`
`“excited atoms,” and then the excited atoms are “ionizing without forming an
`
`arc.”14 This is true. But Petitioner accuses Zond of wrongly asserting that
`
`“Mozgrin does not teach ‘without forming an arc.’”15 Petitioner significantly
`
`distorts Zond’s arguments by clipping the portion linked with other aspects of
`
`the claim. Zond clearly did not mischaracterize Mozgrin, and the Petitioner’s
`
`strained attempt to inject this as an issue speaks to the weakness of the
`
`Petition, to say the least.
`
`
`11 Id. at page 14
`
`12 Ex. 1013, ‘759 Patent.
`
`13 Petition at p. 24.
`
`14 Ex. 1014, Response of May 2, p. 13 – 16.
`
`15 Petition at p. 24.
`
`
`
`5
`
`
`
`In short, the Petition does not precisely state the relief requested16 and
`
`Patent No. 7,808,184
`IPR2014-00803
`
`
`
`
`fails to demonstrate a reasonable likelihood that any challenged claim is
`
`unpatentable.17 On the basis of the record presented in the present Petition,
`
`review should be denied.
`
`II. Technology Background
`A. Overview of Pulsed Plasma Systems
`
`A “plasma” is a gaseous mixture of electrons, positive ions and neutral
`
`molecules that can be formed by applying a strong electric field to a gas:
`
`A plasma can be created in a chamber by igniting a direct current
`
`electric discharge between two electrodes in the presence of a gas
`
`feed. The electrical discharge generates electrons in the feed gas
`that ionize atoms thereby creating the plasma.18
`
`A simplified illustration of a plasma formed between a pair of electrodes 238,
`
`216 is illustrated below from figure 5B of related Patent No. 6,896,773:19
`
`
`16 37 C.F.R. § 42.104(b).
`
`17 37 C.F.R. § 42.108(c).
`
`18 Ex. 1001, ‘184 Patent, col. 1, lines 16 – 20; see also col. 9, line 61 – col. 10,
`
`lines 48.
`
`19 Ex. 2003, ‘773 Patent.
`
`
`
`6
`
`
`
`
`
`Patent No. 7,808,184
`IPR2014-00803
`
`
`
`
`A plasma is on average electrically neutral because there are approximately as
`
`many negative electrons in the plasma as positive ions. However, the density
`
`of charged particles can vary greatly depending on the strength of the applied
`
`electric field and the length of time it has been applied. The figure 5D from the
`
`‘773 patent20 below shows a “strongly ionized plasma” having a significantly
`
`higher density of charged particles than in the figure above, resulting from a
`
`stronger electric field applied across the electrodes:
`
`
`
`It is well known that charged particles will move in the presence of an
`
`electric field. As a result, “high electric currents through a plasma can result
`
`20 Ex. 2003, ‘773 Patent.
`
`
`
`7
`
`
`
`
`in overheating the electrodes.”21 One known solution to the heat problem is to
`
`Patent No. 7,808,184
`IPR2014-00803
`
`
`limit the duration of the strong electric field to short bursts or pulses that
`
`temporarily provide the field strength needed to form a dense plasma, but at a
`
`“lower average power” that generates less heat.22 However, voltage pulses that
`
`are high enough to create the desired plasma density “can also cause arcing
`
`which can damage the electrodes and contaminate the work piece.”23
`
`B. The ‘184 Patent: Dr. Chistyakov Invents a Pulse Control
`Technique for Rapidly Increasing a Plasma’s Electron
`Density Without Arcing.
`
`To overcome the problems in the prior art, Dr. Chistyakov invented a
`
`pulse control technique that rapidly increases a plasma’s electron density to
`
`form a strongly-ionized plasma, but without arcing. Although it was known
`
`that a rapid transition of a plasma into a strongly ionized state increases the
`
`risk of arcing,24 Dr. Chistyakov taught that such a rapid transition can be
`
`accomplished without arcing by controlling the amplitude and/or rise time of
`
`the pulse.
`
`
`21 Ex. 1001, ‘184 Patent, col. 1, lines 24 – 25.
`
`22 Ex. 1001, ‘184 Patent, col. 1, lines 31 – 33.
`
`23 Ex. 1001, ‘184 Patent, col. 1, lines 44 – 46.
`
`24 Ex. 1001, ‘184 Patent, col. 1, lines 34 – 37.
`
`
`
`8
`
`
`
`Dr. Chistakov implemented such control with a pulsed power supply
`
`Patent No. 7,808,184
`IPR2014-00803
`
`
`
`
`
`that “can be programed to generate pulses having various shapes.”25 Figure
`
`5C of the ‘184 patent shows a multi-stage voltage pulse, wherein “the desired
`
`pulse shape requested from the pulsed power supply 102 are superimposed in
`
`dotted lines 304’’.”26
`
`
`
`The programmed voltage pulse has three stages – a first stage 306’’ during
`
`which a weakly ionized plasma is formed, and a pair of second stages 370, 380
`
`during which the weak plasma transitions to a strongly ionized state and is
`
`sustained in that condition.27 In the first stage, the desired voltage level 306’’ is
`
`
`25 Ex. 1001, ‘184 patent, col. 6, lines 8 - 10.
`
`26 Ex. 1001, ‘184 Patent, col. 11, lines 57 – 60.
`
`27 Ex. 1001, ‘184 Patent, col. 14, line 50 – col. 15, line 46.
`
`
`
`9
`
`
`
`
`sufficient to ignite and sustain the weakly ionized plasma.28 At the next stage,
`
`Patent No. 7,808,184
`IPR2014-00803
`
`
`the pulse’s voltage increases sharply to a high level 370. This “shifts the
`
`electron energy distribution in the weekly-ionized plasma to higher energies
`
`thereby causing a rapid increase in the ionization rate.”29
`
`Since plasmas are prone to arcing when the rate of ionization is
`
`increasing this rapidly,30 the power supply soon drops its desired output
`
`voltage to the level 380 while the plasma density is still growing, but before it
`
`leaps into an arc. At level 380, the voltage is still strong enough to continue
`
`growing the plasma density (as suggested by the continuing rise in current), but
`
`now at a safer pace.
`
`This example shows that by carefully controlling the generated pulse
`
`amplitude at selected moments and by selected amounts, a system can rapidly
`
`increase the electron density to quickly transition a plasma to a strongly-
`
`ionized condition, while still restraining the plasma from arcing. As the patent
`
`explains, “consequently, the initial plasma transitions in a relatively short
`
`
`28 Ex. 1001, ‘184 Patent, col. 14, lines 52 - 60.
`
`29 Ex. 1001, ‘184 Patent, col. 14, lines 23 – 26; col. 15, lines 6 – 24.
`
`30 Ex. 1001, ‘184 Patent, col. 1, lines 34 – 37.
`
`
`
`10
`
`
`
`
`period of time from a weakly ionized condition to a strongly ionized
`
`Patent No. 7,808,184
`IPR2014-00803
`
`
`condition.”31
`
`III. Summary of Petitioner’s Proposed Grounds
`
`For the Board’s convenience, here is a summary of the Petition’s proposed
`
`claim rejections:
`
`Groun
`d
`I
`II
`III
`IV
`
`Claims
`
`Art
`
`6 - 10, 16 - 20
`Mozgrin
`Kudryavtsev
`6 - 10, 16 - 20
`Mozgrin
`Mozgrin Thesis
`6, 7, 9, 10, 16, 17, 19, 20
`Wang
`Kudryavtsev
`8, 18
`Wang
`Kudryavtsev
`Mozgrin
`IV. Claim Construction Under 37 C.F.R. §§ 42.104(b)(3)
`
`Pursuant to Rule §42.104(b)(3), the Petitioner “must identify [] how the
`
`claim is to be construed” for purposes of comparing the challenged claim the
`
`cited art. The present Petition construes only the claimed phrases “strongly-
`
`ionized plasma” and “weakly-ionized plasma.” For all other claim language it
`
`offers no explicit construction, leaving the reader to infer the Petitioner’s
`
`“interpretation” from its allegations that the claimed features are taught by the
`
`prior art.
`
`The proposed explicit constructions and the interpretations implicit in
`
`the Petition’s analysis, are both unreasonable as explained below.
`
`
`31 Ex. 1001, ‘184 Patent, col. 15, lines 31 – 34.
`
`11
`
`
`
`
`
`Patent No. 7,808,184
`IPR2014-00803
`
`
`A. Construction of “Weakly Ionized Plasma” and “Strongly
`Ionized Plasma”
`The Petitioner’s proposed constructions of the claim terms “strongly
`
`ionized plasma,” and “weakly ionized plasma” are wrong because they are not
`
`the broadest reasonable constructions consistent with the specification. In
`
`particular, the Petitioner’s proposed construction of “strongly ionized plasma”
`
`as a “higher density plasma” is wrong because the proposed construction reads
`
`the claim term “ionized” out of the claim. That is, the Petitioner’s proposed
`
`construction of “strongly ionized plasma” is incomplete because it does not
`
`specify what the term “density” refers to.
`
`The proper construction of “strongly ionized plasma” is “a plasma with
`
`a relatively high peak density of ions.” This proposed construction specifies
`
`that the term “density” refers to ions and therefore, is consistent with the claim
`
`language. Moreover, the proposed construction is also consistent with the
`
`specification of the ’184 patent which indicates that a strongly ionized plasma
`
`is also referred to as a “high-density plasma,”32 and which says that the “peak
`
`plasma density can be controlled by controlling the …. voltage pulse.”33 In
`
`addition, the proposed construction is consistent with the specification of the
`
`
`32 Ex. 1001, ‘184 patent, col. 7, lines 12 - 13.
`
`33 Ex. 1001, ‘184 patent, col. 8, lines 3 – 4.
`
`
`
`12
`
`
`
`
`‘759 patent that refers to “strongly ionized plasma [as] having a large ion
`
`Patent No. 7,808,184
`IPR2014-00803
`
`
`density.”34 The term ‘strongly-ionized plasma’ is defined herein to mean a
`
`plasma with a relatively high peak density of ions.
`
`For similar reasons, the proper construction of the claim term “weakly
`
`ionized plasma” is “a plasma with a relatively low peak density of ions.” In
`
`particular, the specification of the ‘184 patent says that “a weakly ionized
`
`plasma [has] a relatively low-level of ionization,”35 and indicates that a weakly-
`
`ionized plasma is also referred to as a “low-density plasma.”36 Furthermore,
`
`the specification of a related patent number 6,806,652 (“the ‘652 Patent”)37
`
`states that “[t]he term ‘weakly-ionized plasma’ is defined herein to mean a
`
`plasma with a relatively low peak plasma density. The peak plasma density of the
`
`weakly ionized plasma depends on the properties of the specific plasma
`
`processing system.”
`
`
`34 Ex. 1013, ‘759 patent, col. 10, lines. 4-5.
`
`35 Ex. 1001, ‘184 patent, col. 17, lines 24 – 25.
`
`36 Ex. 1001, ‘184 patent, col. 6, lines 58 - 59.
`
`37 Ex. 2004, ‘652 Patent.
`
`
`
`13
`
`
`
`
`
`Patent No. 7,808,184
`IPR2014-00803
`
`
`B.
`
`Petitioner’s Implicit Construction of Other Claim Language
`is Unclear and Does Not Comply with 42 C.F.R. § 42.104(b)
`or Federal Circuit Law.
`Petitioner’s comparison of the claim to the prior art gives no apparent
`
`weight to word “controlled” and its qualifiers - “rapid increase in electron
`
`density” and “without forming an arc.” Treating claim terms as superfluous is
`
`“ a methodology of claim construction that [the Federal Circuit] has
`
`denounced.”38 Furthermore, to the extent that the Petitioner contends that it
`
`did attach meaning of this claim language, it did not “identif[y] how the
`
`challenged claim is to be construed” as required by 42 C.F.R. § 42.104(b).
`
`Accordingly, it did not “provide a statement of the precise relief request for
`
`each challenged claim” and should therefore be denied.39
`
`C. Patent Owner’s Construction of “Voltage Pulse Having At
`Least One of a Controlled Amplitude and a Controlled Rise
`Time.”
`For the reasons stated below, the broadest reasonable construction of
`
`this phrase is as follows:
`
`Claim Language at Issue
`Generating a voltage pulse having
`at least one of a controlled
`amplitude and a controlled rise
`time that increases an ionization
`
`38 Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007).
`
`Proposed Construction
`Generating a voltage pulse whose
`amplitude and/or rise time are directed or
`restrained to increase an ionization rate so
`that a rapid increase in electron density
`
`39 42 C.F.R. § 42.104(b).
`
`
`14
`
`
`
`
`
`Patent No. 7,808,184
`IPR2014-00803
`
`
`rate so that a rapid increase in
`electron density and a formation of
`a strongly ionized plasma occurs
`without forming an arc …”
`As is known to those skilled in the art, a voltage pulse applied across a
`
`and a formation of a strongly ionized
`plasma occurs without forming an arc.
`
`
`plasma will have a rise time based, inter alia, on the complexity of the
`
`impendence load. They also know that impedance of a plasma decreases as
`
`the electron density grows, thereby dropping the resistive load seen by the
`
`voltage source.40
`
`The claimed step of generating a voltage pulse requires the pulse’s
`
`amplitude and/or rise time to be “controlled” (despite such changes in
`
`impedance) to achieve certain specified plasma conditions. For purposes of
`
`this petition, we therefore need to consider the meaning of the claimed control
`
`in the context of a voltage pulse across a plasma whose impedance changes in
`
`response to the pulse.
`
`
`40 Ex. 1001, ‘184 patent, col. 6, lines 33 – 38 (“The impedance of the plasma
`
`decreases as the current density in the plasma increases. The pulsed power
`
`supply 102 attempts to maintain a constant voltage, but the voltage decreases
`
`due to the changing plasma resistive load.”).
`
`
`
`15
`
`
`
`
`
`Patent No. 7,808,184
`IPR2014-00803
`
`
`Webster’s dictionary defines the noun “control” to mean “the condition
`
`of being directed or restrained.”41 The claim uses the word “controlled” in a
`
`manner consistent with this meaning, thereby requiring direction or restraint of
`
`the pulse so as to achieve the specified plasma conditions - a “rapid” increase
`
`in electron density and a formation of a strongly-ionized plasma, but without
`
`forming an arc.
`
`The specification’s teaching is also consistent with this meaning of
`
`“controlled” in the context of a voltage pulse to a plasma. In the specification,
`
`a programmable power supply directs its output at selected times during the
`
`pulse, to thereby control amplitude and rise time of the pulse in a way that
`
`yields a “rapid” increase in electron density but also restrains the plasma from
`
`arcing as the plasma impedance plummets.42 As shown in one example
`
`depicted in figure 5 and discussed above, the timing and magnitude of these
`
`events cause the “rapid” increase in electron density, but achieve this quick
`
`transition without arcing.43 Thus, the proposed construction stated above is
`
`also reasonable in view of the specification.
`
`
`41 Ex. 2002, Webster’s Dictionary.
`
`42 Ex. 1001, ‘184 patent, col. 6, lines 8 – 9, col. 14, line 50 – col. 15 line 46.
`
`43 Ex. 1001, ‘`184 patent, col. 15, lines 31 – 34.
`
`
`
`16
`
`
`
`
`V.
`
`Patent No. 7,808,184
`IPR2014-00803
`
`
`Petitioner Has Failed to Show a Reasonable Likelihood of Prevailing.
`A. Defects Common to All Grounds.
`
`
`Petition Fails to Follow the Proper Legal Framework
`For an Obviousness Analysis.
`Each of Petitioner’s proposed grounds are based on the alleged
`
`1.
`
`obviousness of the claims in view of selected prior art references. However,
`
`the Petitioner neglects to follow the legal framework for an obviousness
`
`analysis set forth long ago by the Supreme Court.44 That framework requires
`
`consideration of the following factors: (1) the scope and content of the prior
`
`art, (2) any differences between the claimed subject matter and the prior art,
`
`and (3) the level of skill in the art. The Board has previously warned that
`
`failure to identify differences between the cited art and the claims is a basis for
`
`denying a petition:
`
`A petitioner who does not state the differences between
`
`a challenged claim and the prior art, and relies instead on the
`
`Patent Owner and the Board to determine those differences based
`
`on the rest of the submission in the petition risks having the
`
`
`44 Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966); see
`
`also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 399 (2007) (“While the sequence
`
`of these questions might be reordered in any particular case, the [Graham]
`
`factors define the controlling inquiry.”)
`
`
`
`17
`
`
`
`
`
`Patent No. 7,808,184
`IPR2014-00803
`
`
`corresponding ground of obviousness not included for trial for
`failing to adequately state a claim for relief. 45
`
`The present Petition does not identify the differences, and instead employs a
`
`rhetorical technique designed to de-emphasize and obscure them. For certain
`
`claim features, the Petition argues that the features are taught by “the
`
`combination of Mozgrin and Kudryavtsev” or ““the combination of Wang
`
`and Kudryavtsev,” leaving the Board to identify the shortcomings of the
`
`references.
`
`This technique, when coupled with the Petitioner’s failure to clearly
`
`identify an interpretation behind key claim limitations, obscures the
`
`arguments.46 On this basis alone, inter partes review based on obviousness
`
`should be denied.47
`
`2.
`
`Petition Violates Page Restrictions by Incorporating
`Fifty-One Pages of Claim Charts.
`The Petition attaches four sets of claim charts as exhibits 1019 – 1022,
`
`thereby exceeding the page limits of rule 42.24(a)(i) by nearly a factor of two.
`
`
`45 Liberty Mutual v. Progressive Casualty, CMB-2012-00003, paper 7 at 2 – 3.
`
`46 see, Liberty Mutual v. Progressive Casualty, CMB-2012-00003, paper 8 at 14 - 15.
`
`47 Liberty Mutual v. Progressive Casualty, CMB-2012-00003, paper 7 at 2 – 3;
`
`paper 8 at 14-15.
`
`
`
`18
`
`
`
`
`Petitioner incorporates each chart into its petition with a single sentence,
`
`Patent No. 7,808,184
`IPR2014-00803
`
`
`asserting that its expert witness, Mr. DeVito, “has reviewed the claim chart
`
`and agrees with it.”48 But this technique violates rule 42.6(a)(3)’s prohibition
`
`against incorporating documents by reference.
`
`Petitioner mentions that these claim charts were served on the Patent
`
`Owner in a related litigation, apparently in the hope that this will provide an
`
`exception to the rule.49 The Patent Office Trial Guide advises:
`
`Claim charts submitted as part of a petition … count towards
`
`applicable page limits …. A claim chart from another proceeding
`
`that is submitted as an exhibit however, will not count towards
`page limits. 50
`
`However, the trial guide’s reference to claim charts from other proceedings
`
`should not be construed to include charts exchanged between litigants. If
`
`claim charts exchanged in a related litigation can be attached to a petition
`
`without counting against page limits, then rules 42.24(a)(i) and 42.6(a)(3) will
`
`be rendered meaningless when the challenged patent is in litigation: Under
`
`this procedure, litigants would be allowed to supplement their IPR petitions
`
`
`48 Petition at 15, 37, 43, 56.
`
`49 Petition at 15, 34, 39, 41, and 43.
`
`50 Trial Guide at 48764.
`
`
`
`19
`
`
`
`
`with any number of claims charts of any size, so long as they first serve them
`
`Patent No. 7,808,184
`IPR2014-00803
`
`
`on opposing counsel.
`
`B. Defects in Ground I: Petitioner Failed To Demonstrate That
`Any Claim Challenged in Ground I is Obvious Over Mozgrin
`and Kudryavtsev under 35 U.S.C. § 103(a).
`
`Petitioner’s Ground I is premised on a claim “interpretation” that
`
`essentially ignores the word “controlled” and its relation to the qualifying
`
`language - “so that a rapid increase in electron density and a formation of a
`
`strongly-ionized plasma occurs without forming an arc.” As a result,
`
`Petitioner overlooks several shortcomings of the cited prior art and fails to
`
`demonstrate a reasonable likelihood that the claims are unpatentable.
`
`We now consider Petitioner’s cited art under the framework set forth in
`
`Graham v. Deere.51
`
`1.
`Scope and Content of the Prior Art.
`In ground I Petitioner combines two prior art references, a publication
`
`by Mozgrin and a publication by Kudryavtsev.
`
`a. Kudryavtsev
`Kudryavtsev describes a set of mathematical equations that he hopes
`
`accurately model the rate at which a plasma’s electron density changes in
`
`
`51 Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
`
`
`
`20
`
`
`
`
`response to an abrupt increase in an applied electric field.52 Petitioner cites
`
`Patent No. 7,808,184
`IPR2014-00803
`
`
`Kudryavtsev for his mathematical prediction that electron density can, over
`
`time, “increase explosively” if a “constant” electric field is applied long
`
`enough to a pre-ionized gas.53 In this regard, Kudryavtsev’s model shows that
`
`the density initially grows very slowly for a period of time designated “τs”. But
`
`according to the equations, the plasma will eventually enter a “fast stage” if the
`
`external field remains constant:
`
`• “[O]nce steady condi