IPR2014-00818
`U.S. Patent No. 6,853,142
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY,
`LTD., TSMC NORTH AMERICA CORP., FUJITSU
`SEMICONDUCTOR LIMITED, FUJITSU SEMICONDUCTOR
`AMERICA, INC., THE GILETTE COMPANY, 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., and TOSHIBA CORPORATION
`
`Petitioners
`
`v.
`
`ZOND, LLC
`Patent Owner
`__________________
`
`Case IPR2014-008181
`Patent 6,853,142
`__________________
`
`
`ZOND LLC’S PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`
`1 Cases IPR2014-00866, IPR2014-01012, and IPR2014-01075 have been joined
`with the instant proceeding.
`
`

`

`IPR2014-00818
`U.S. Patent No. 6,853,142
`
`TABLE OF CONTENTS
`
`I. INTRODUCTION .......................................................................................................................1
`
`II. TECHNOLOGY BACKGROUND ...........................................................................................6
`
`A.
`
`B.
`
`Overview Of Magnetron Sputtering Systems. ...............................................................6
`
`The ’142 patent: Dr. Chistyakov invents a new apparatus containing an
`ionization source to generate weakly ionized plasma, an electrical pulse
`applied to the weakly ionized plasma to create strongly ionized plasma and a
`gas line to supply feed gas to the strongly-ionized plasma to diffuse the
`strongly-ionized plasma, and allow additional power to be absorbed by the
`strongly ionized plasma. ................................................................................................8
`
`C.
`
`The Petitioners Mischaracterized The File History. ....................................................12
`
`III. SUMMARY OF THE PETITIONERS’ PROPOSED GROUNDS FOR REVIEW ..............16
`
`IV. CLAIM CONSTRUCTION. ..................................................................................................17
`
`A.
`
`The construction of “weakly ionized plasma” and “strongly ionized plasma” ...........18
`
`V. THE PETITIONERS CANNOT PREVAIL ON ANY CHALLENGED CLAIM OF
`THE ’142 PATENT. ...............................................................................................................18
`
`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 ’142 patent with a reasonable expectation of success
`or that combining the teachings of the prior art would have led to predictable
`results ...........................................................................................................................19
`
`1.
`
`Scope and content of prior art. ...............................................................................22
`
`a.
`
`b.
`
`Lantsman – U.S. Pat. No. 6,190,512 (Ex. 1004)..............................................23
`
`Mozgrin – 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 (Ex. 1003). ........24
`
`c.
`
`Wang – U.S. Patent No. 6,413,382 (Exhibit 1005)..........................................26
`
`2.
`
`The Petitioners Failed To Show That It Would Have Been Obvious To
`Combine Wang, Lantsman, and Mozgrin To Achieve the Claimed
`Invention With A Reasonable Expectation Of Success .........................................28
`
`B.
`
`The Petition failed to demonstrate how the alleged combinations teach every
`element of the challenged claims. ................................................................................34
`
`
`
`ii
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`

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`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
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`IPR2014-00818
`U.S. Patent No. 6,853,142
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`The cited references do not teach “a gas line that supplies feed gas to the
`strongly-ionized plasma, the feed gas diffusing the strongly-ionized
`plasma, thereby allowing additional power from the pulsed power supply
`to be absorbed by the strongly ionized plasma,” as recited in independent
`claim 1 and as similarly recited in independent claim 10. .....................................35
`
`The cited references do not teach “an electrical pulse having a magnitude
`and a rise-time that is sufficient to increase the density of the weakly-
`ionized plasma to generate a strongly-ionized plasma,” as recited in claim
`1 and as similarly recited in claim 10. ...................................................................41
`
`The cited references do not teach “selecting at least one of a pulse
`amplitude and a pulse width of the electrical pulse in order to cause the
`strongly-ionized plasma to be substantially uniform,” as recited in claim
`15............................................................................................................................42
`
`The cited references do not teach that “the gas line supplies additional feed
`gas that exchanges the weakly-ionized plasma while applying the
`electrical pulse across,” as recited in claim 3 and as similarly recited in
`claim 12. .................................................................................................................43
`
`The cited references do not teach a “a power supply that supplies power to
`the weakly-ionized plasma though an electrical pulse applied across the
`weakly-ionized plasma,” and “the power supply generates a constant
`power,” as required by dependent claim 4. ............................................................45
`
`The cited references do not teach that “the power supply generates a
`constant voltage,” as required by dependent claim 5. ............................................49
`
`The cited references do not teach that “the ionization source is chosen
`from the group comprising an electrode coupled to a DC power supply
`…,” as required by dependent claim 6. ..................................................................53
`
`C.
`
`The Petition failed to set forth a proper obviousness analysis. ....................................55
`
`VI. CONCLUSION.......................................................................................................................57
`
`
`
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`IPR2014-00818
`U.S. Patent No. 6,853,142
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`
`
`Exhibit List
`
`Exhibit
`No.
`Ex. 2004 U.S. Patent 6,398,929 to Chiang
`
`Description
`
`Ex. 2005 Declaration of Dr. Hartsough, Patent Owner’s expert.
`
`Ex. 2006 Sinha, Naresh, K., Control Systems, Holt, Rinehart and Winston,
`1986.
`
`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.
`
`Ex. 2010 Transcript of deposition of Dr. Kortshagen, Petitioners’ expert, for
`the ‘759 Patent
`
`Ex. 2011 Transcript of deposition of Dr. Kortshagen, Petitioners’ expert, for
`the ‘142 Patent
`
`
`
`
`
`iv
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`IPR2014-00818
`U.S. Patent No. 6,853,142
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`I. INTRODUCTION
`
`The Petitioners’ arguments hinge on fanciful misreadings of the prior art
`
`by their proffered expert, Dr. Uwe Kortshagen. As will be shown below,
`
`neither Wang nor Lantsman teaches supplying “feed gas to the strongly-
`
`ionized plasma, the feed gas diffusing the strongly-ionized plasma, thereby
`
`allowing additional power from the pulsed power supply to be absorbed by the
`
`strongly ionized plasma” as required by independent claims 1 and 10 of the
`
`’142 patent. Once the Board recognizes that Dr. Kortshagen essentially
`
`invented some of the alleged “teachings” in Wang and Lantsman to suit the
`
`Petitioners’ objectives, the Board should agree to confirm the challenged
`
`claims.
`
`The ’142 patent discloses and illustrates in FIG. 2C feed gas entering a
`
`chamber in a gap 220 between a cathode 204 and an anode 216 in the vicinity
`
`of the strongly ionized plasma so that it can diffuse the plasma, thereby
`
`allowing additional power from the pulsed power supply to be absorbed by the
`
`strongly ionized plasma.2
`
`Wang, in contrast, does not teach feed gas diffusing the strongly-ionized
`
`plasma to thereby allow additional power from the pulsed power supply to be
`
`
`2 Exhibit 1001, ‘142 patent, FIG. 2C, col. 9, ll. 48-57.
`
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`IPR2014-00818
`U.S. Patent No. 6,853,142
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`absorbed by the strongly ionized plasma. Indeed, Petitioners’ own expert, Dr.
`
`Kortshagen, admitted in his deposition that he could not find any discussion of
`
`feed gas diffusing a strongly ionized plasma in Wang either at his deposition or
`
`when he prepared his declaration: “I think it is fair to say that if I had seen it in
`
`Wang I would have included it.”3 It is little wonder why Dr. Kortshagen made
`
`this admission because Wang discloses and illustrates in FIG. 1 that feed gas
`
`enters the lower right portion of the chamber, far from the area where plasma
`
`is generated at the top of the chamber near the cathode.4
`
`Moreover, Lantsman cannot possibly compensate for this deficiency in
`
`Wang because it does not even disclose a strongly-ionized plasma, let alone
`
`supplying a feed gas to diffuse a strongly-ionized plasma to allow the plasma to
`
`absorb additional power.5 In addition, Dr. Kortshagen testified that he
`
`understands the Board’s construction of the terms “strongly ionized plasma”
`
`and “weakly ionized plasma” to require a range of absolute magnitudes in
`
`
`3 Exhibit 2011, Kortshagen Deposition (12.4.14), p. 68, l. 24 – p. 69, l.2; see also
`
`p. 68 ll. 2-21.
`
`4 Exhibit 1005, Wang, FIG. 1.
`
`5 Declaration of Dr. Hartsough, Exhibit 2005, ¶94.
`
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`2
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`IPR2014-00818
`U.S. Patent No. 6,853,142
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`peak density of ions, (namely, equal to or greater than 1012 and equal to or less
`
`than 109, respectively).6 But Dr. Kortshagen acknowledges that neither Wang
`
`nor Kudryavtsev disclose a magnitude for the peak density of ions.7 Thus,
`
`according to Dr. Kortshagen’s interpretation, it is impossible to conclude that
`
`either Wang or Kudryavtsev teach a strongly ionized plasma at all.
`
`Dr. Kortshagen’s conclusory opinions are unsupported and should be
`
`disregarded by the Board. Once the prior art is properly understood, the Board
`
`will see that it is missing key claim limitations, not only the feed gas diffusing
`
`
`6 See Exhibit 2010, Kortshagen Deposition, p. 44, l. 13 – p. 58, l. 12
`
`(Interestingly, this opinion conflicts with that of Mr. Devito—Petitioner’s other
`
`expert—who requires that a strongly-ionized plasma have a peak density of
`
`ions that is 3-4 orders of magnitude greater than a weakly ionized plasma.
`
`IPR2014-00799, Exhibit 2014, DeVito Deposition, p. 169, l. 10 – p. 170, l. 25;
`
`p. 225, l, 23 – p. 226, l. 3).
`
`7 Exhibit 2010, Kortshagen Deposition, p. 212, ll. 20-22; p. 216, l. 2 – p. 217, l.
`
`21; p. 154, l. 23 – p. 155, l. 15.
`
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`3
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`IPR2014-00818
`U.S. Patent No. 6,853,142
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`the strongly ionized plasma but also other limitations in the other claims of the
`
`‘142 patent as explained in detail below.8
`
`In addition to missing key limitations, the Petitioners’ obviousness
`
`rejections are all predicated on the false assumption that a skilled artisan could
`
`have achieved the combination of i) an ionization source generating a weakly-
`
`ionized plasma from feed gas, ii) an electrical pulse having a magnitude and a
`
`rise-time that is sufficient to increase the density of the weakly-ionized plasma
`
`to generate a strongly-ionized plasma, and iii) a gas line supplying feed gas to
`
`diffuse the strongly-ionized plasma to thereby allow additional power from the
`
`pulsed power supply to be absorbed by the strongly-ionized plasma, as required
`
`by independent claim 1 of the ’142 patent by combining the teachings of Wang
`
`with Lantsman.9 But these references disclose very different structures and
`
`processes. Wang discloses that a “target 14 is powered by narrow pulses of
`
`negative DC power supplied from a pulsed DC power supply 80, as illustrated
`
`in FIG. 1.”10 Lantsman did not describe a pulsed power supply; it instead
`
`
`8 Infra, § V.B.
`
`9 Petition at pp. 39-50.
`
`10 Wang, Ex. 1005, col. 5, ll. 18-22.
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`IPR2014-00818
`U.S. Patent No. 6,853,142
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`discloses two DC power supplies: “DC power supply 10,”11 and “secondary
`
`DC power supply 32.”12 Lantsman makes no mention of generating strongly
`
`ionized plasma.13
`
`And the Petitioner sets forth no evidence that the structure and process
`
`of Wang would produce the particular apparatus for generating strongly-
`
`ionized plasma having an ionization source, an electrical pulse and feed gas to
`
`diffuse the strongly-ionized plasma, as recited in independent claim 1 of the
`
`’142 patent if Wang were somehow modified by a structure that does not even
`
`apply an electrical pulse or generate strongly-ionized plasma, like the structure
`
`disclosed in Lantsman.14 That is, the Petitioner did not show that a “skilled
`
`artisan would have been motivated to combine the teachings of the prior art
`
`references to achieve the claimed invention, and that the skilled artisan would
`
`
`11 Lantsman, Ex. 1004 at col, 4, l. 11.
`
`12 Id. at col. 4, l. 11.
`
`13 See e.g., id. at col. 4.
`
`14 See e.g., Petition, pp. 14-60.
`
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`IPR2014-00818
`U.S. Patent No. 6,853,142
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`have had a reasonable expectation of success in doing so.”15 The Board has
`
`consistently rejected proposed grounds of rejection when the Petition fails to
`
`identify any objective evidence such as experimental data, tending to establish
`
`that two different structures or processes can be combined.16 For these reasons
`
`as expressed more fully below, none of the challenged claims of the ‘142 patent
`
`are obvious.
`
`
`
`II. TECHNOLOGY BACKGROUND
`
`A. Overview Of Magnetron Sputtering Systems.
`
`Sputtering systems generate and direct ions from plasma “to a target
`
`surface where the ions physically sputter target material atoms.”17 Then,
`
`“[T]he target material atoms ballistically flow to a substrate where they deposit
`
`
`15 OSRAM Sylvania, Inc. v. Am Induction Techs., Inc., 701 F.3d 698, 706 (Fed.
`
`Cir. 2012).
`
`16 Epistar, et al. v. Trustees Of Boston University, IPR2013-00298, Decision Not To
`
`Institute, Paper No. 18 (P.T.A.B. November 15, 2103).
`
`17 Ex. 1001, col. 1, ll. 9-11.
`
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`6
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`IPR2014-00818
`U.S. Patent No. 6,853,142
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`as a film of target material.18 “The plasma is replenished by electron-ion pairs
`
`formed by the collision of neutral molecules with secondary electrons
`
`generated at the target surface.”19
`
`A planar magnetron sputtering system is one type of sputtering system.20
`
`“Magnetron sputtering systems use magnetic fields that are shaped to trap and
`
`to concentrate secondary electrons, which are produced by ion bombardment
`
`of the target surface.”21 “The trapped electrons enhance the efficiency of the
`
`discharge and reduce the energy dissipated by electrons arriving at the
`
`substrate.”
`
`But prior art planar magnetron sputtering systems experienced “non-
`
`uniform erosion or wear of the target that results in poor target utilization.”22
`
`To address these problems, researchers increased the applied power and later
`
`
`18 Id. at col. 1, ll. 11-13.
`
`19Id. at col. 1, ll. 32-34.
`
`20 Id. at 1, ll. 36-54.
`
`21 Id. at col. 1, ll. 36-38.
`
`22 Id. at col. 2, ll. 57-59.
`
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`7
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`IPR2014-00818
`U.S. Patent No. 6,853,142
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`pulsed the applied power.23 But increasing the power increased “the
`
`probability of establishing an undesirable electrical discharge (an electrical arc)
`
`in the process chamber.”24 And “very large power pulses can still result in
`
`undesirable electrical discharges and undesirable target heating regardless of
`
`their duration.”25
`
`
`
`B. The ’142 patent: Dr. Chistyakov invents a new apparatus containing
`an ionization source to generate weakly ionized plasma, an electrical
`pulse applied to the weakly ionized plasma to create strongly ionized
`plasma and a gas line to supply feed gas to the strongly-ionized plasma
`to diffuse the strongly-ionized plasma, and allow additional power to
`be absorbed by the strongly ionized plasma.
`
`To overcome the problems of the prior art, Dr. Chistyakov invented an
`
`apparatus containing an ionization source to generate weakly ionized plasma,
`
`an electrical pulse applied to the weakly ionized plasma to create strongly
`
`ionized plasma and a gas line to supply feed gas to the strongly-ionized plasma
`
`to diffuse the strongly-ionized plasma, and allow additional power to be
`
`absorbed by the strongly ionized plasma as recited in independent claim 1 and
`
`as illustrated in Fig. 2A of the ’142 patent, reproduced below:
`
`
`23 Id. at col. 1, l. 60 to col. 2, l. 9.
`
`24 Id. at col. 2, ll. 63-67.
`
`25 Id. at col. 3, ll. 7-9.
`
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`8
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`IPR2014-00818
`U.S. Patent No. 6,853,142
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`
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`As illustrated by FIG. 2A, Dr. Chistyakov’s apparatus includes either a
`
`pulsed power supply 202 or a direct current (DC) power supply (not shown) as
`
`a component in an ionization source that generates a weakly ionized plasma
`
`232, an anode 216, a cathode 204, a pulsed power supply 202 that applies a
`
`high power pulse between the cathode 204 and the anode 216, and gas lines
`
`224 providing feed gas 226 from a feed gas source. “The anode 216 is
`
`positioned so as to form a gap 220 between the anode 216 and the cathode 204
`
`that is sufficient to allow current to flow through a region 222 between the
`
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`IPR2014-00818
`U.S. Patent No. 6,853,142
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`anode 216 and the cathode 204.”26 “The gap 220 and the total volume of the
`
`region 222 are parameters in the ionization process.”27 “In one embodiment,
`
`the pulsed power supply 202 is a component in an ionization source that
`
`generates a weakly ionized plasma 232.”28 “In another embodiment, a direct
`
`current (DC) power supply (not shown) is used in an ionization source to
`
`generate and maintain the weakly-ionized or pre-ionized plasma 232.”29
`
`“Forming the weakly-ionized or pre-ionized plasma 232 substantially
`
`eliminates the probability of establishing a breakdown condition in the
`
`chamber when high-power pulses are applied between the cathode 204 and the
`
`anode 216.”30 In addition, “the high-power pulses generate a highly-ionized or
`
`a strongly-ionized plasma 238 from the weakly-ionized plasma 232.”31
`
`
`26 Id. at col. 4, ll. 34-37.
`
`27 Id. at col. 4, ll. 40-41.
`
`28 Id. at col. 5, ll. 5-7.
`
`29 Id. at col. 5, ll. 45-48.
`
`30 Id. at col. 6, ll. 20-25.
`
`31 Id. at col. 7, ll. 23-25.
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`IPR2014-00818
`U.S. Patent No. 6,853,142
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`In one embodiment, additional feed gas is supplied to exchange the
`
`weakly-ionized plasma while applying the electrical pulse:
`
`Directly injecting the feed gas 226 between the cathode 204 and
`
`the anode 216 can increase the flow rate of the feed gas 226. This
`
`causes a rapid volume exchange in the region 222 between the
`
`cathode 204 and the anode 216, which permits a high-power pulse
`
`having a longer duration to be applied across the gap 220. The
`
`longer duration high-power pulse results in the formation of a
`
`higher density plasma.32
`
`Moreover, “[i]n one embodiment, the strongly-ionized plasma 238 is
`
`transported through the region 222 by a rapid volume exchange of feed gas
`
`226. As the feed gas 226 moves through the region 222, it interacts with the
`
`moving strongly-ionized plasma 238 and also becomes strongly ionized from
`
`the applied high-power electrical pulse.33 This technique of supplying feed gas
`
`to the strongly-ionized plasma diffuses the strongly-ionized plasma, and
`
`thereby allows additional power from the pulsed power supply to be absorbed
`
`by the strongly ionized plasma:
`
`
`32 Id. at col. 4, l. 64 – col. 5, l. 3.
`
`33 Id. at col. 9, l. 66 – col. 10, l. 4.
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`11
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`IPR2014-00818
`U.S. Patent No. 6,853,142
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`Transporting the strongly-ionized plasma 238 through the region
`
`222 by a rapid volume exchange of the feed gas 226 increases the
`
`level and the duration of the power that can be applied to the 10
`
`strongly-ionized plasma 238 and, thus, generates a higher density
`
`strongly-ionized plasma in the region 234.34
`
`Thus, Dr. Chistyakov accomplished his breakthrough of generating a
`
`strongly-ionized plasma while reducing the probability of electrical breakdown
`
`by inventing a particular apparatus and method comprising an ionization
`
`source for generating weakly-ionized plasma, a pulsed power supply for
`
`applying an electrical pulse to the weakly-ionized plasma to generate a
`
`strongly-ionized plasma, and a gas line for supplying feed gas to diffuse the
`
`strongly ionized plasma to allow the plasma to absorb additional power.
`
`
`
`C. The Petitioners Mischaracterized The File History.
`
`Although not directly relevant to the instituted grounds, Petitioners’
`
`mischaracterizations extend to its accusations about Zond's activities during
`
`prosecution of the application that led to the ‘142 patent. The Petitioners
`
`alleged that the claims of the ‘142 patent were allowed solely because the
`
`Applicant (i.e., now the Patent Owner) “amended every independent claim to
`
`
`34 Id. at col. 10, ll. 6-11.
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`IPR2014-00818
`U.S. Patent No. 6,853,142
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`require ‘the weakly-ionized plasma reducing the probability of developing an
`
`electrical breakdown condition in the chamber’ or similar limitations.”35 But
`
`this allegation is not true because the Applicant amended the claims to include
`
`additional limitations beyond those mentioned by the Petitioners including a
`
`limitation specifying that a power supply “supplies power to the weakly-
`
`ionized plasma through an electrical pulse … the electrical pulse having a
`
`magnitude and a rise-time that is sufficient to increase the density of the
`
`weakly-ionized plasma.”36 The Applicant also added a limitation specifying
`
`that a “gas line supplies feed gas to the strongly-ionized plasma, the feed gas
`
`diffusing the strongly-ionized plasma, thereby allowing additional power from
`
`the pulsed power supply to be absorbed by the strongly ionized plasma.”37
`
`That is, the claims of the ‘142 patent were allowed because of many claim
`
`limitations and not just because of the single limitation identified by the
`
`Petitioners.
`
`
`35 Petition, p. 7.
`
`36 Exhibit 1008, Response to Office Action, March 8, 2004, p. 2 of 14.
`
`37 Id.
`
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`IPR2014-00818
`U.S. Patent No. 6,853,142
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`In addition, the Petitioners also mischaracterized the file history of
`
`another patent that is related to the ‘142 patent, U.S. Patent 7,147,759, by
`
`alleging that the Patent Owner was wrong in stating that “Mozgrin does not
`
`teach ‘without forming an arc.’”38 But this allegation is just not true for two
`
`main reasons. First, the Examiner stated that he allowed the ’759 patent —
`
`not just because of the arc limitation — but because of the combination of
`
`many claim limitations:
`
`Applicant's arguments filed May 2, 2006 have been fully
`
`considered and are deemed persuasive. Specifically, Claims 1-50
`
`are allowable over the prior art of record because … the applied
`
`prior art applied in the previous office action does not teach the
`
`claimed apparatus or method wherein an ionization source
`
`generates a weakly-ionized plasma proximate to the anode and
`
`cathode assembly and a power supply generating a voltage pulse
`
`that produces an electric field between the cathode assembly and
`
`the anode, the power supply being configured to generate the
`
`voltage pulse with an amplitude and a rise time that increases an
`
`excitation rate of ground state atoms that are present in the
`
`weakly-ionized plasma to create a multi-step ionization process
`
`that generates a strongly-ionized plasma, from the weakly ionized
`
`plasma, the multi-step ionization process comprising exciting the
`
`
`38 Petition, pp. 17-18.
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`IPR2014-00818
`U.S. Patent No. 6,853,142
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`ground state atoms to generate excited atoms, and then ionizing
`
`the excited atoms within the weakly-ionized plasma without
`
`forming an arc discharge.39
`
`Second, the Patent Owner (i.e., the Applicant at that time), did not argue, as
`
`alleged by the Petitioner, that the claims were allowable solely because of the
`
`“without forming an arc” limitation; it instead argued, inter alia, that “there is
`
`no description in Mozgrin of a multi-step ionization process that first excites
`
`ground state atoms to generate excited atoms, and then ionizes the excited
`
`atoms without forming an arc discharge.”40 That is, the Patent Owner argued
`
`that Mozgrin did not teach avoidance of an arc discharge during a particular
`
`process: the multi-step ionization process. In other words, the Petitioner
`
`mischaracterized the Patent Owner’s argument to the Examiner by truncating
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`it and quoting only a small portion of it in the Petition.
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`Moreover, contrary to Petitioner’s allegation, the Patent Owner did not
`
`mischaracterize Mozgrin because Mozgrin does not, in fact, teach that there is
`
`
`39 IPR2014-00447, Exhibit 1415, Notice of Allowance, September 29, 2006, pp.
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`2-3.
`
`40 IPR2014-00447, Exhibit 1413, Response to Office Action, May 2, 2006, p.
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`13 (emphasis omitted).
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`U.S. Patent No. 6,853,142
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`no arcing during the multi-stage ionization process (e.g., while ionizing the
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`excited atoms within the weakly-ionized plasma).41 That is, Mozgrin does not
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`teach the avoidance of all arcing during execution of the particular process that
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`is identified in the claim.42
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`
`
`
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`III. SUMMARY OF THE PETITIONERS’ PROPOSED GROUNDS FOR
`REVIEW
`
`For the Board’s convenience, below is a summary of the proposed
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`grounds of rejection that are pending in this IPR proceeding:
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`1. Claims 1, 3–7, 9, 10, 12, 15, 19, 20, and 42: obvious in view of the
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`combination of Wang and Lantsman;
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`2. Claims 8, 17, and 18: obvious in view of the combination of
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`Wang, Lantsman, and Mozgrin.
`
`
`
`
`41 IPR2014-00447, Patent Owner’s Preliminary Response, Paper No. 11, §
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`V.C.2.
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`42 Id.
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`U.S. Patent No. 6,853,142
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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.”43 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
`
`art in the context of the entire patent disclosure.44 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.45 Any
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`term not construed below should be given its ordinary and customary meaning
`
`as would be understood by one of ordinary skill in the art.
`
`
`43 37 C.F.R. § 42.100(b).
`
`44 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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`45 See Phillips, 415 F.3d at 1316 (“[T]he specification may reveal a special
`
`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
`
`governs.”).
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`IPR2014-00818
`U.S. Patent No. 6,853,142
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`A. The construction of “weakly ionized plasma” and “strongly ionized
`plasma”
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`The Board construed “strongly ionized plasma” as “a plasma with a
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`relatively high peak density of ions.”46 The Board construed “weakly ionized
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`plasma” as “a plasma with a relatively low peak density of ions.”47
`
`
`
`V. THE PETITIONERS CANNOT PREVAIL ON ANY CHALLENGED
`CLAIM OF THE ’142 PATENT.
`
`Differences between the challenged claims and the prior art are critical
`
`factual inquiries for any obviousness analysis and must be explicitly set forth
`
`by the Petitioners.48 The bases for rejection under 35 U.S.C. § 103 must be
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`made explicit.49 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
`
`the skilled artisan would have had a reasonable expectation of success in doing
`
`
`46 Institution Decision, Paper No. 9, p. 7.
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`47 Id.
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`48 See Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17 (1966).
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`49 MPEP § 2143.
`
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`IPR2014-00818
`U.S. Patent No. 6,853,142
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`so.”50 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 decline to cancel any of the challenged claims
`
`because (i) 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 ’142 patent, and that the skilled artisan would
`
`have had a reasonable expectation of success in doing so or that combining the
`
`teachings of the prior art would have led to predictable results, and (ii) the
`
`Petition failed to demonstrate that the prior art teaches every element of the
`
`challenged claims.
`
`
`
`
`
`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 ’142 patent with a reasonable
`expectation of success or that combining the teachings of the prior art
`would have led to predictable results
`
`The Petitioners cannot prevail on any of the two grounds of rejection
`
`pending in this IPR because the Petitioners failed to demonstrat