UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`FUJITSU SEMICONDUCTOR LIMITED,
`FUJITSU SEMICONDUCTOR AMERICA, INC.,
`ADVANCED MICRO DEVICES, INC., RENESAS ELECTRONICS
`CORPORATION, RENESAS ELECTRONICS AMERICA, INC.,
`GLOBALFOUNDRIES U.S., INC., GLOBALFOUNDRIES DRESDEN
`MODULE ONE LLC & CO. KG, GLOBALFOUNDRIES DRESDEN
`MODULE TWO LLC & CO. KG, TOSHIBA AMERICA ELECTRONIC
`COMPONENTS, INC., TOSHIBA AMERICA INC., TOSHIBA
`AMERICA INFORMATION SYSTEMS, INC.,
`TOSHIBA CORPORATION, and
`THE GILLETTE COMPANY,
`Petitioners,
`
`v.
`
`ZOND, LLC,
`Patent Owner
`________________
`
`IPR2014-008071
`Patent 7,604,716 B2
`
`________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`1 Cases IPR 2014-00846, IPR 2014-0974, and IPR 2014-01065 have been joined
`
`with the instant proceeding.
`
`

`

`
`Petitioner’s Reply to Patent Owner’s Response
`
`IPR2014-00807
` Patent No. 7,604,716
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ............................................................................................... 1
`
`II. CLAIM CONSTRUCTION ................................................................................ 1
`
`III. RESPONSE TO ARGUMENTS ......................................................................... 2
`
`A. A skilled person would have found it obvious to combine Wang and
`Kudryavtsev. ................................................................................................. 2
`
`B. Wang in view of Kudryavtsev teaches generating/forming “a strongly-
`ionized plasma without developing an electrical breakdown condition
`in the chamber” (Claims 14 and 26). ............................................................ 6
`
`C. Wang in view of Kudryavtsev teaches “a cathode that is positioned
`adjacent to the anode” (Claim 26). ............................................................. 11
`
`D. Wang in view of Kudryavtsev teaches “wherein the anode and the
`cathode form a gap there between” (Claim 28). ......................................... 15
`
`E. Wang in view of Kudryavtsev teaches “wherein a dimension of the gap
`between the anode and the cathode is chosen to increase an ionization
`rate of the excited atoms in the weakly-ionized plasma” (Claim 29). ....... 16
`
`F. Wang in view of Kudryavtsev teaches “at least one of a rise time and
`magnitude of the electrical pulse … is selected to increase a density of
`the weakly-ionized plasma” (Claim 16). .................................................... 20
`
`G. Wang in view of Kudryavtsev teaches “at least one of a rise time and
`magnitude of the electrical pulse … is selected to excite atoms in the
`weakly-ionized plasma to generate secondary electrons that increase an
`ionization rate of the weakly-ionized plasma” (Claim 17) and “at least
`one of a rise time and an amplitude of the electric field is chosen to
`increase an ionization rate of the excited atoms in the weakly-ionized
`plasma” (Claim 30). .................................................................................... 23
`
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`Petitioner’s Reply to Patent Owner’s Response
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`IPR2014-00807
` Patent No. 7,604,716
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`H. Wang in view of Kudryavtsev render obvious Claims 15, 18, 25, 27,
`31, and 32. ................................................................................................... 25
`
`IV. CONCLUSION .................................................................................................. 25
`
`
`
`
`
`
`
`ii
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`Petitioner’s Reply to Patent Owner’s Response
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`IPR2014-00807
` Patent No. 7,604,716
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`TABLE OF AUTHORITIES
`
`CASES
`
`Ex parte Liebich,
`Appeal 2011-001343 (P.T.A.B. Sept. 3, 2013) ............................................. 18, 21
`
`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012) .............................................................................. 2
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ........................................................................................ 2, 15
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ............................................................................ 13
`
`REGULATIONS
`
`37 C.F.R. § 42.23 ....................................................................................................... 1
`
`
`
`
`
`
`
`iii
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`Petitioner’s Reply to Patent Owner’s Response
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`IPR2014-00807
` Patent No. 7,604,716
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`PETITIONER’S EXHIBIT LIST
`
`1207
`
`1208
`
`1209
`
`April 30, 2015
`Description
`Exhibit
`1201 U.S. Patent No. 7,604,716 (“’716 Patent”)
`1202 Kortshagen Declaration (“Kortshagen Decl.”)
`D.V. Mozgrin, et al, High-Current Low-Pressure Quasi-Stationary
`Discharge in a Magnetic Field: Experimental Research, Plasma Physics
`Reports, Vol. 21, No. 5, pp. 400-409, 1995 (“Mozgrin”)
`1203
`1204 U.S. Pat. No. 6,413,382 (“Wang”)
`A. A. Kudryavtsev and V.N. Skerbov, Ionization relaxation in a plasma
`produced by a pulsed inert-gas discharge, Sov. Phys. Tech. Phys. 28(1),
`pp. 30-35, January 1983 (“Kudryavtsev”)
`1205
`1206 U.S. Pat. No. 6,853,142 (“ ‘142 Patent”)
`File History for U.S. Pat. No. 7,604,716, Office Action dated March 27,
`2008 (“03/27/08 Office Action”)
`File History for U.S. Pat. No. 7,604,716, Response dated September 24,
`2008 (“09/24/08 Response”)
`File History for U.S. Pat. No. 7,604,716, Notice of Allowance dated
`June 11, 2009 (“06/11/09 Allowance”)
`European Patent Application 1560943, Response of April 21, 2008
`(“04/21/08 Response in EP 1560943”)
`1210
`1211 U.S. Patent No. 7,147,759 (“’759 Patent”)
`File History for U.S. Pat. No. 7,147,759, Response dated May 2, 2006
`(“05/02/06 Response of ‘759 Patent File History”)
`Plasma Etching: An Introduction, by Manos and Flamm, Academic
`Press (1989) (“Manos”)
`The Materials Science of Thin Films, by Ohring M., Academic Press
`(1992) (“Ohring”)
`
`1212
`
`1213
`
`1214
`
`iv
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`Petitioner’s Reply to Patent Owner’s Response
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`IPR2014-00807
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`Exhibit
`
`1215
`
`1216
`
`Description
`Claim Chart Based on Mozgrin and Kudryavtsev as used in 1:13-cv-
`11570-RGS (“Claim Chart based on Mozgrin and Kudryavtsev”)
`Claim Chart Based on Wang and Kudryavtsev as used in 1:13-cv-11570-
`RGS (“Claim Chart based on Wang and Kudryavtsev”)
`Affidavit of Anthony J. Fitzpatrick In Support of Petitioners’ Motion for
`Pro Hac Vice Admission
`1217
`Stipulation of Voluntary Dismissal (for petitioner TSMC)
`1218
`1219 Confidential – Board-Only – Zond TSMC Settlement Agreement
`Affidavit of Brett C. Rismiller In Support of Petitioner’s Motion for Pro
`Hac Vice Admission
`Supplemental Kortshagen Declaration (“Supp. Kortshagen Decl.”)
`Deposition Transcript of Larry D. Hartsough Ph.D. for U.S. Patent No.
`7,604,716 (IPRs 2014-00807, 2014-00808, 2014-01099, 2014-01100)
`dated April 8, 2015 (“’716 Dep. Tr.”)
`Deposition Transcript of Larry D. Hartsough Ph.D. for U.S. Patent No.
`6,896,775 (IPRs 2014-00578, 2014-00604, 2014-01482, 2014-01494)
`dated February 19, 2015 (“’775 Dep. Tr.”)
`Deposition Transcript of Larry D. Hartsough Ph.D. for U.S. Patent No.
`6,853,142 (IPRs 2014-00818, 2014-00819, 2014-00821, 2014-00827,
`2014-01098) dated February 26, 2015 (“’142 Dep. Tr.”)
`Deposition Transcript of Larry D. Hartsough Ph.D. for U.S. Patent No.
`8,125,155 (IPRs 2014-00477, 2014-00479) dated February 12, 2015
`(“’155 Dep. Tr.”)
`Deposition Transcript of Larry D. Hartsough Ph.D. for U.S. Patent No.
`7,808,184 (IPRs 2014-00803, 2014-00799) dated February 11, 2015
`(“’184 Dep. Tr.”)
`Ex parte Liebich, Appeal 2011-001343, *3 (P.T.A.B. Sept. 3, 2013)
`
`
`1220
`1221
`
`1222
`
`1223
`
`1224
`
`1225
`
`1226
`1227
`
`
`
`v
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`Petitioner’s Reply to Patent Owner’s Response
`
`IPR2014-00807
` Patent No. 7,604,716
`
`I.
`
`INTRODUCTION
`
`Petitioner submits this reply under 37 C.F.R. § 42.23 in response to Patent
`
`Owner Zond’s Response to Petition filed on January 12, 2015 (“Response,” Paper
`
`29). Zond’s arguments for patentability improperly import nonexistent limitations
`
`from the specification into the claims, mischaracterize the cited prior art, and rely
`
`on trivial limitations that are part of the admitted prior art. The evidence and
`
`arguments in this reply confirm that claims 14-18 and 25-32 of U.S. Patent No.
`
`7,604,716 (“the ’716 Patent”) are obvious over the combination of Wang (Ex.
`
`1204) and Kudryavtsev (Ex. 1205) and thus should be canceled.
`
`II. CLAIM CONSTRUCTION
`The Board construed the term “weakly-ionized plasma” as “a plasma with a
`
`relatively low peak density of ions,” and the term “strongly-ionized plasma” as “a
`
`plasma with a relatively high peak density of ions.” Institution of Inter Partes
`
`Review at 8 (Paper 10). These constructions do not specify a plasma density for
`
`either claim term. The Board also construed “weakly-ionized plasma that
`
`substantially eliminates the probability of developing an electrical breakdown
`
`condition” as “weakly-ionized plasma that substantially eliminates the probability
`
`of developing a breakdown condition when an electrical pulse is applied across the
`
`plasma to thereby generate a strongly-ionized plasma.” Id. at 10. Patent Owner
`
`does not dispute the Board’s constructions. Hartsough Decl. at ¶21-23 (Ex. 2004).
`
`1
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`Petitioner’s Reply to Patent Owner’s Response
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`IPR2014-00807
` Patent No. 7,604,716
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`Petitioner also agrees with these constructions and applies them below.
`
`III. RESPONSE TO ARGUMENTS
`A. A skilled person would have found it obvious to combine Wang
`and Kudryavtsev.
`
`Zond argues that a person of ordinary skill in the art would not combine
`
`Wang and Kudryavtsev. See Response at 31-33 (Paper 29). Zond’s arguments are
`
`based on nothing more than alleged differences between the physical systems of
`
`Wang and Kudryavtsev. Id. The law is clear that physical substitution is an
`
`improper test for determining obviousness. See, e.g., In re Mouttet, 686 F.3d 1322,
`
`1332 (Fed. Cir. 2012) (“It is well-established that a determination of obviousness
`
`based on teachings from multiple references does not require an actual, physical
`
`substitution of elements.”); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007)
`
`(“a person of ordinary skill will be able to fit the teachings of multiple patents
`
`together like pieces of a puzzle”). And Zond’s declarant, Dr. Hartsough, conceded
`
`that a person of ordinary skill in the art would have recognized how physical
`
`differences (such as pressure, chamber geometry, gap dimensions, magnetic field)
`
`would affect a system and understood how to adjust for such differences. ’142
`
`Dep. Tr. at 75:24-80:2 (Ex. 1224). As discussed in the Petition and noted by the
`
`Board in its institution decision, a person of ordinary skill in the art would have
`
`been motivated to combine the teachings of Wang and Kudryavtsev because it is
`
`2
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`Petitioner’s Reply to Patent Owner’s Response
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`IPR2014-00807
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`merely a predictable use of prior art elements according to their established
`
`functions yielding predictable results. Institution of Inter Partes Review at 22
`
`(combining Wang and Kudryavtsev “would have been a combination of known
`
`techniques yielding the predictable results of increasing the ionization rate and the
`
`degree of multi-step ionization”) (Paper 10); Petition for Inter Partes Review at
`
`44-45, 58-59 (Paper 1).
`
`Kudryavtsev discloses a general study and modeling of plasma behavior.
`
`Kortshagen Supp. Decl. at ¶47 (Ex. 1221). Kudryavtsev first derives his generally-
`
`applicable theory and then compares it to experimental data to test the accuracy of
`
`his derived model. Id. One of ordinary skill in the art would not understand
`
`Kudryavtsev’s theoretical framework to be limited in application to any specific
`
`type of apparatus within which plasma is discharged. Id. In fact, while
`
`Kudryavtsev may have utilized a particular test vehicle to verify the disclosed
`
`model and “show[] that the electron density increases explosively in time,” it
`
`explains that its general teachings are applicable “whenever a field is suddenly
`
`applied to a weakly ionized gas.” Id. at ¶52; see also, Kudryavtsev at 1
`
`(Abstract), 5 (right col.) (emphasis added) (Ex. 1205). Moreover, Kudryavtsev
`
`cites experiments regarding pulsed ionization of a pre-ionized gas conducted by
`
`other scientists (references 18 and 19) and confirmed that its disclosed “model
`
`accounts well for these experimental findings.” Kudryavtsev at 5 (right col.) (Ex.
`
`3
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`Petitioner’s Reply to Patent Owner’s Response
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`IPR2014-00807
` Patent No. 7,604,716
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`1205); Kortshagen Supp. Decl. at ¶47 (Ex. 1221). Thus, a person of ordinary skill
`
`in the art would understand that Kudryavtsev’s teaching was broadly applicable to
`
`plasma process behavior and not limited to its experimental setup. Indeed, the
`
`evidence before the Board demonstrates that persons of ordinary skill in the art did
`
`apply Kudryavtsev’s teaching to a pulsed plasma sputtering application. For
`
`example, Mozgrin looked to and applied the teachings of Kudryavtsev in designing
`
`sputtering systems similar to Wang’s. Kortshagen Supp. Decl. at ¶55 (Ex. 1221);
`
`Mozgrin at 2 (noting that the author “took into account” Kudryavtsev’s teaching in
`
`designing sputtering system) (Ex. 1203).2
`
`Wang is directed to a specific application of a plasma reactor—a pulsed
`
`sputtering reactor with a small rotating magnetron. Wang at Abstract (Ex. 1204);
`
`Kortshagen Supp. Decl. at ¶53 (Ex. 1221). Like Kudryavtsev, Wang discloses
`
`using a pulsed power supply to generate strongly-ionized plasma. Id. During peak
`
`power PP, Wang applies an electric field by way of a “negative voltage pulse” to
`
`“quickly cause[] the already existing [weakly ionized] plasma to spread and
`
`increase[] the density of the plasma.” Wang at 7:29-30; 7:62 (emphasis added)
`
`2 Petitioner does not rely on Mozgrin for any claim challenged in this Petition, but
`
`identifies Mozgrin as an example of a person of ordinary skill in the art looking to
`
`Kudryavtsev’s teachings in designing a plasma sputtering system.
`
`4
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`Petitioner’s Reply to Patent Owner’s Response
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`IPR2014-00807
` Patent No. 7,604,716
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`(Ex. 1204). As confirmed by Zond’s declarant, Dr. Hartsough, a person of ordinary
`
`skill in the art would recognize the benefits of increasing strongly-ionized plasma
`
`for sputtering applications. ’716 Dep. Tr. at 176:8-19 (Ex. 1222).
`
`Thus, a person of ordinary skill in the art reviewing Wang’s disclosure
`
`would have been motivated to investigate how its plasma is reacting to a quickly-
`
`applied electrical pulse, and how to maximize electron density while generating
`
`strongly ionized plasma to improve its sputtering and manufacturing process.
`
`Kortshagen Supp. Decl. at ¶53 (Ex. 1221). That skilled person would have
`
`understood that Kudryavtsev explains exactly that—how a pulse like the one
`
`disclosed by Wang affects plasma generation and how to adjust the amplitude and
`
`duration of that pulse in order to increase the ionization rate such that electron
`
`density would rapidly increase during the formation of a strongly-ionized plasma.
`
`Id. Thus, a person of ordinary skill in the art would find Kudryavtsev’s teaching
`
`on the generation of strongly-ionized plasma beneficial towards improving the
`
`sputtering and manufacturing processing disclosed by Wang. See id.
`
`The alleged differences between the systems of Wang and Kudryavtsev are
`
`inconsequential. Kortshagen Supp. Decl. at ¶54 (Ex. 1221). A person of ordinary
`
`skill in the art would have known how to apply the teachings of Kudryavtsev to
`
`systems such as Wang’s (i.e., for improving sputtering, irrespective of different
`
`pressures, different dimensions, different sizes, the presence of magnets, and/or
`
`5
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`Petitioner’s Reply to Patent Owner’s Response
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`IPR2014-00807
` Patent No. 7,604,716
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`other feature differences). See id. Differences in the setup and operating
`
`parameters between systems are typical; a person of ordinary skill in the art would
`
`have worked with such differences on a regular basis and considered it routine to
`
`make any necessary changes to accommodate for all such variables. Id.; see also,
`
`’142 Dep. Tr. at 75:24-80:2 (Ex. 1224). Thus, a person of ordinary skill in the art
`
`would have been motivated to combine the teachings of Wang and Kudryavtsev.
`
`B. Wang in view of Kudryavtsev teaches generating/forming “a
`strongly-ionized plasma without developing an electrical breakdown
`condition in the chamber” (Claims 14 and 26).
`
`Zond does not dispute that Wang teaches reducing the probability and
`
`amount of arcing, but argues it “does not solve the problem of arcing during
`
`plasma ignition.” Response at 28 (Paper 29). Zond’s argument is premised on a
`
`fundamental misreading of the claims. Claims 14 and 26 recite the application of
`
`an electrical pulse or an electric field to the weakly-ionized plasma, “thereby
`
`[generating/forming] a strongly-ionized plasma without developing an electrical
`
`breakdown condition in the chamber.” ’716 Patent at 21:7-11, 22:10-15 (emphasis
`
`added) (Ex. 1201). Thus, the claim limitation “without developing an electrical
`
`breakdown condition in the chamber” refers to the generation of a strongly-ionized
`
`plasma from a weakly-ionized plasma, not the creation of a weakly-ionized plasma
`
`from ground state feed gas (i.e., plasma ignition). See id. As such, Wang’s
`
`discussion of arcing during plasma ignition is irrelevant to whether arcing occurs
`
`6
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`Petitioner’s Reply to Patent Owner’s Response
`
`IPR2014-00807
` Patent No. 7,604,716
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`when Wang energizes its weakly-ionized plasma into a strongly-ionized plasma.
`
`Wang clearly discloses the claim limitation of “without developing an
`
`electrical breakdown condition in the chamber” when generating a strongly-ionized
`
`plasma. Supp. Kortshagen Decl. at ¶¶74-79, 82 (Ex. 1221). Wang discloses an
`
`embodiment that initially applies a background power PB for igniting the plasma
`
`and maintaining a weakly-ionized plasma throughout the process, then applies
`
`pulses of high-power PP to the weakly-ionized plasma for generating a strongly-
`
`ionized plasma. Wang at 7:47-51 (Ex. 1204); Supp. Kortshagen Decl. at ¶75 (Ex.
`
`1221). For this process, Wang discloses that “the chamber impedance changes
`
`relatively little between the two power levels PB, PP since a plasma always exist in
`
`the chamber.” Wang at 7:49-51 (Ex. 1204). From the disclosure that “impedance
`
`changes little,” a person of ordinary skill would understand that Wang’s strongly-
`
`ionized plasma is generated without forming an electrical breakdown condition
`
`since any arcing would cause a drastic change in chamber impedance as the plasma
`
`current short circuits. Supp. Kortshagen Decl. at ¶75 (Ex. 1221). Thus, Wang
`
`discloses “[generating/forming] a strongly-ionized plasma without developing an
`
`electrical breakdown condition in the chamber” as recited by Claims 14 and 26.
`
`Zond appears to argue that Wang does not disclose the “without developing
`
`an electrical breakdown condition …” limitation because it does not disclose a
`
`method that can guarantee elimination of all possibilities of arcing. Response at 30
`
`7
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`Petitioner’s Reply to Patent Owner’s Response
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`IPR2014-00807
` Patent No. 7,604,716
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`(Paper 29). This argument is flawed for several reasons. First, the plain language
`
`of the claims does not require elimination of all probabilities of arcing. Claim 14
`
`requires only a step of supplying “an electrical pulse … without developing a
`
`breakdown condition” and claim 26 requires simply a power supply capable of
`
`generating an electric field that can excite atoms “without developing a breakdown
`
`condition.” ’716 Patent at 21:1-11, 22:1-15 (emphasis added) (Ex. 1201). Neither
`
`claim requires a method or an apparatus wherein every applied pulse does not arc.
`
`Second, Claims 14 and 26 cannot be read to require the elimination of all
`
`arcing under all situations because no system—including the system disclosed in
`
`the ’716 patent—can ever completely eliminate arcing. Supp. Kortshagen Decl. at
`
`¶76 (Ex. 1221). This impossibility stems from the unpredictable nature of the
`
`electron density of a plasma. Id. There is always some chance that a local electron
`
`density fluctuation can become sufficiently high to create a short circuit and result
`
`in an arc discharge. Id. Thus system designers must attempt to reduce the
`
`likelihood of arcing. Id. at ¶77. Zond’s declarant Dr. Hartsough agrees, admitting
`
`that he has never seen a system where the probability of forming an arc was
`
`completely eliminated, that “you can’t say that an arc would never occur in a
`
`system,” and that interpreting a claim as requiring the elimination of all
`
`probabilities of arcing would require an impossibility and thus “eliminate the
`
`validity … of that claim.” ’155 Dep. Tr. at 188:14-189:3, 195:8-15 (Ex. 1225); see
`
`8
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`Petitioner’s Reply to Patent Owner’s Response
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`IPR2014-00807
` Patent No. 7,604,716
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`also, ’184 Dep. Tr. at 129:17-22 (Q. In your experience working with magnetron
`
`sputtering systems and the systems that you’ve worked with, have those systems
`
`all had some likelihood of arcing? A. Some likelihood, yes.”) (Ex. 1226).
`
`Knowing that the probability of arcing can never be eliminated, a person of
`
`ordinary skill in the art would not read Claims 14 and 26 as requiring an apparatus
`
`and method where there is absolutely no chance that an arc can occur when
`
`creating strongly-ionized plasma. Supp. Kortshagen Decl. at ¶78 (Ex. 1221).
`
`Rather, the broadest reasonable interpretation of these claims require a method that
`
`would allow one to supply an electric pulse across a weakly ionized plasma to
`
`create a strongly-ionized plasma without forming an arc (Claim 14), or an
`
`apparatus that includes a power supply capable of generating an electric field that
`
`forms a strongly-ionized plasma from the weakly-ionized plasma without arcing
`
`(Claim 26). A person of ordinary skill in the art would understand that Wang
`
`clearly discloses such a method and an apparatus—by maintaining a weakly-
`
`ionized plasma with background power PB and generating a strongly-ionized
`
`plasma through applying pulsed peak power PP, all while “the chamber impedance
`
`changes relatively little between the two power levels PB, PP.” Wang at 7:49-51
`
`(Ex. 1204). Thus, Wang discloses the “without developing an electrical
`
`breakdown condition in the chamber” of Claims 14 and 26. Supp. Kortshagen
`
`Decl. at ¶¶79, 83 (Ex. 1221).
`
`9
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`Petitioner’s Reply to Patent Owner’s Response
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`IPR2014-00807
` Patent No. 7,604,716
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`Third, Zond’s argument that Wang read in light of Kudryavtsev “would, at
`
`best, suggest techniques to reduce, but not eliminate, arcing” is based on Zond’s
`
`incorrect presumption that Kudryavtsev’s model is premised on forming an arc.
`
`Response at 22, 29 (Paper 29). Kudryavtsev analyzes his model independent of
`
`any particular physical system and recognizes the conditions that lead to arcing—
`
`the nature of the plasma as characterized by variable “A”—and teaches a person of
`
`ordinary skill in the art how to avoid such conditions. Supp. Kortshagen Decl. at
`
`¶¶38-47 (Ex. 1221). Zond incorrectly argues that Kudryavtsev is premised on
`
`arcing by myopically focusing on the tube apparatus used by Kudryavtsev to test
`
`its model and jumping to the conclusion that Kudryavtsev’s “flash tube
`
`experiments had results consistent with arcing” based on the voltage and current
`
`profiles in Kudryavtsev’s Fig. 2. Response at 29 (Paper 29). Zond’s argument is
`
`based on Dr. Hartsough’s conclusory and unsupported opinion that the voltage
`
`drop and rise in current are uncontrolled and that the light emission profiles (e) and
`
`(f) of Fig. 2 are consistent with an arc-based “flash tube.” See id. Dr. Hartsough
`
`and Zond conveniently ignore the facts that a person of ordinary skill in the art
`
`would have understood that the current and voltage profiles in Figure 2 of
`
`Kudryavtsev are typical of any ignition and extinguishing event of a plasma or that
`
`they are illustrating the application of a high power pulse being applied to a weakly
`
`ionized plasma for a certain pulse duration. Supp. Kortshagen Decl. at ¶¶48-49
`
`10
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`Petitioner’s Reply to Patent Owner’s Response
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`IPR2014-00807
` Patent No. 7,604,716
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`(Ex. 1221). Moreover, the light emission profiles (e) and (f) are actually typical of
`
`a pulsed glow discharge apparatus which emits light by creating a plasma that will
`
`glow when current is passed through it in the absence of any arcing. Id. at ¶50.
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`As a result, a person of ordinary skill in the art reading Wang in view of
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`Kudryavtsev would have understood that Wang seeks to eliminate arcing when
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`creating strongly-ionized plasma and that Kudryavtsev teaches that arcing in
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`pulsed plasma systems can be avoided by creating a system where the variable “A”
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`is less than zero. Supp. Kortshagen Decl. at ¶¶45-47, 85-86 (Ex. 1221). As such,
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`Wang in view of Kudryavtsev discloses creating strongly-ionized plasma “without
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`developing an electrical breakdown condition in the chamber” as claimed by
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`Claims 14 and 26.
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`C. Wang in view of Kudryavtsev teaches “a cathode that is
`positioned adjacent to the anode” (Claim 26).
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`Zond argues that neither Wang nor Kudryavtsev discloses “a cathode that is
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`positioned adjacent to the anode” as required by Claim 26. Response at 34-36
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`(Paper 29). Zond’s argument mischaracterizes the prior art and improperly imports
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`limitations from the specification into the claims.
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`First, Wang discloses a cathode adjacent to the anode. Zond argues that the
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`disclosure of a floating shield by Wang indicates that its cathode is not adjacent to
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`the anode. Response at 34-35 (Paper 29). This argument contradicts the plain
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`IPR2014-00807
` Patent No. 7,604,716
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`meaning of “adjacent” and is inconsistent with the prior art. Figure 1 of Wang
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`clearly illustrates an anode 24 in close proximity to a cathode 14. Wang at Fig. 1,
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`3:66-4:1 (Ex. 1204). Zond presents no support for arguing that placing a floating
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`shield 26 partially between the two electrodes would mean they are no longer
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`adjacent. Zond has never proposed a construction of “adjacent” requiring an
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`unobstructed line-of-sight between the two electrodes, and nor is such a
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`construction supported by the specification. Moreover, even if one were to
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`construe “adjacent” as requiring unobstructed space between the two electrodes,
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`the majority of the gap between Wang’s anode 24 and cathode 14 is not blocked
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`by the floating shield 26. Id. at Fig. 1. The annotated Figure 1 of Wang below
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`illustrates clear lines of sight (in dashed lines) between the two electrodes:
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`IPR2014-00807
` Patent No. 7,604,716
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`Supp. Kortshagen Decl. at ¶90-91 (Ex. 1221). Zond’s own declarant, Dr.
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`Hartsough, admitted that that even when an object partially blocks an anode and
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`cathode, the unblocked portions of the anode and cathode are still adjacent to each
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`other. ’716 Dep. Tr. at 83:12-84:18 (Ex. 1222); ’775 Dep. Tr. at 75:23-76:8 (Ex.
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`1223). Thus, Wang discloses an anode adjacent to a cathode.3
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`Second, Zond argues that the “adjacent” limitation is not met because Wang
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`and Kudryavtsev disclose anode-to-cathode gaps that allegedly differ in length
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`from the gap dimensions disclosed by the ’716 Patent. Response at 35-37 (Paper
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`29). This argument commits the “cardinal sin” of claim construction by “reading a
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`limitation from the written description into the claims.” Phillips v. AWH Corp.,
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`415 F.3d 1303, 1320 (Fed. Cir. 2005) (citation omitted). None of the challenged
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`claims recite a specific gap distance. And Zond provides no basis for importing
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`the exemplary gap distances of 0.3-10 cm into Claim 26. Moreover, even if one
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`were to construe “adjacent” as requiring a gap distance between 0.3 cm and 10 cm,
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`Zond admits that Wang discloses a gap distance of 10 cm (see Response at 36
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`(Paper 29)) that falls within this range. Thus, Zond’s argument relating to the
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`3 Zond does not argue that Kudryavtsev discloses any object between its cathode
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`and anode. Thus, Zond’s argument based on Wang’s floating shield cannot serve
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`as a basis for distinguishing Kudryavtsev.
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`IPR2014-00807
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`anode-cathode gap distance is entirely baseless.
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`Third, even if the Board finds that the prior art does not explicitly disclose
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`the “adjacent” limitation for any reason, it would have been obvious to arrange
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`Wang’s or Kudryavtsev’s cathode-anode geometry such that the electrodes are
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`“adjacent” to each other in a manner similar to that disclosed by the ’716 Patent.
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`Petition at 58 (citing Ex. 1202 at ¶174) (Paper 1); Supp. Kortshagen Decl. at ¶93
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`(Ex. 1221). The anode-cathode arrangement disclosed by the ’716 Patent is not
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`novel—the specification admits as prior art the placement of an “anode 130 …
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`proximate to the cathode 114” at a distance of 2-10 cm with no intervening objects,
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`which is within the preferred range of 0.3-10 cm. ’716 Patent at 2:41-42, 2:53-55,
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`8:41-42, Fig. 1 (Ex. 1201). And Zond’s declarant Dr. Hartsough admitted that
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`every prior art plasma system within his recollection had a cathode adjacent to the
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`anode, and he was unable to recall any design that would not meet this limitation:
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`Question: Have you ever worked on a tool where the cathode
`is not positioned adjacent to the anode?
`Dr. Hartsough: That’s what I don’t recall. So I would have to
`review specific designs.
`…
`Question: So as you sit -- as you sit here today, you can’t
`specifically recall any design that did not have the cathode
`adjacent to the anode?
`Dr. Hartsough: I just -- I can’t.
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`’716 Dep. Tr. at 54:22-55:8, 77:6-9; see also 76:9-11 (Ex. 1222). Thus, having “a
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`cathode that is positioned adjacent to the anode” is not only disclosed by Wang and
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`Kudryavtsev, it is also an element well known by persons of ordinary skill in the
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`art. As Dr. Hartsough admitted, the cathode-anode geometry is a common process
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`parameter that a person of ordinary skill would know how to adjust to optimize
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`plasma generation. See id. at 176:21-178:1. Thus, in light of this “background
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`knowledge possessed by a person having ordinary skill in the art,” the “adjacent”
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`limitation must be obvious. See KSR, 550 U.S. at 418.
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`Claim 26 cannot be patentable over prior art for requiring “a cathode that is
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`positioned adjacent to the anode” because it is beyond dispute that placing two
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`electrodes near each other to generate plasma is not inventive. See ’716 Dep. Tr. at
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`136:10-17 (Ex. 1222). Zond’s argument for patentability of Claim 26 is therefore
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`without merit, and Claim 26 is obvious in view of Wang and Kudryavtsev.
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`D. Wang in view of Kudryavtsev teaches “wherein the anode and the
`cathode form a gap there between” (Claim 28).
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`Zond’s argument that Claim 28 is patentable based on the limitation of
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`“wherein the anode and the cathode form a gap there between” (Response at 41
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`(Paper 29)) contradicts its own statements and defies common sense.
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`Every plasma tool includes a gap between its anode and cathode. When
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`asked during his deposition whether the prior art systems he had worked with
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`IPR2014-00807
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`included “a gap between the anode and the cathode,” Zond’s declarant Dr.
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`Hartsough testified: “Well, the anode wasn’t in contact with the cathode.
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`Otherwise, it would short out ….” ’716 Dep. Tr. at 102:9-15 (Ex. 1222). Further,
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`Dr. Hartsough admitted that “[h]aving a space between the anode and cathode was
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`well known to a person of ordinary skill in the art at the time of the ’716 Patent.”
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`Id. at 138:15-18. Thus, having a gap between the anode and cathode is a necessary
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`and inherent feature in every plasma system.
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`Indeed, Zond explicitly admits that Wang and Kudryavtsev disclose forming
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`a gap between the cathode and anode. Response at 36 (“the Kudryavtsev apparatus
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`operates using a gap more than five times the length of the gap specified in