IPR2014-00827
`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 IPR2014-008271
`Patent 6,853,142
`__________________
`
`
`ZOND LLC’S PATENT OWNER RESPONSE
`
`
`
`
`
`
`
`
`1 Cases IPR2014-00865, IPR2014-01015, and IPR2014-01063 have been joined
`with the instance proceeding.
`
`

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`IPR2014-00827
`U.S. Patent No. 6,853,142
`
`TABLE OF CONTENTS
`
`I. INTRODUCTION .......................................................................................................................1
`
`II. TECHNOLOGY BACKGROUND ...........................................................................................7
`
`A.
`
`B.
`
`Overview Of Magnetron Sputtering Systems. ...............................................................7
`
`The ’142 patent: Dr. Chistyakov invents a new apparatus containing an anode;
`a cathode positioned adjacent to the anode to form a gap there between; an
`ionization source for generating weakly-ionized plasma, and a pulsed power
`supply that produces an electric field across the gap to generate excited atoms
`in the weakly-ionized plasma and secondary electrons from the cathode, the
`secondary electrons ionizing the excited atoms, thereby creating the strongly
`ionized plasma. ..............................................................................................................8
`
`C.
`
`The Petitioners Mischaracterized The File History. ....................................................12
`
`III. SUMMARY OF THE PETITIONERS’ PROPOSED GROUNDS FOR REVIEW ..............15
`
`IV. PATENT OWNER’S CLAIM CONSTRUCTIONS. .............................................................16
`
`A.
`
`The construction of “weakly ionized plasma” and “strongly ionized plasma.” ..........17
`
`V. THE PETTIONERS CANNOT PREVAIL ON ANY CHALLENGED CLAIM OF
`THE ’142 PATENT. ...............................................................................................................17
`
`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. ..........................................................................................................................18
`
`1.
`
`Scope and content of prior art. ...............................................................................21
`
`a.
`
`Kudryavtsev – 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 (Ex. 1304). .......................21
`
`b.
`
`Wang – U.S. Patent No. 6,413,382 (Exhibit 1305)..........................................24
`
`2.
`
`The Petitioner Failed To Show That It Would Have Been Obvious To
`Combine The Cylindrical Tube Laser Without A Magnet Of Kudryavtsev
`With The Wang Magnetron Sputtering System. ....................................................25
`
`B.
`
`The Petition fails to demonstrate how the alleged combinations teach every
`element of the challenged claims. ................................................................................34
`
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`IPR2014-00827
`U.S. Patent No. 6,853,142
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`The cited references do not teach “a cathode that is positioned adjacent to
`the anode and forming a gap there between,” as recited in independent
`claim 21. .................................................................................................................35
`
`The cited references do not teach that “the power supply generates a
`constant power,” as recited in dependent claim 22. ...............................................40
`
`The cited references do not teach “applying the electric field at a constant
`power,” as recited in dependent claim 33. .............................................................41
`
`The cited references do not teach that “the power supply generates a
`constant voltage,” as recited in claim 23, and as similarly recited in claim
`34............................................................................................................................43
`
`The cited references do not teach “a pulsed electric field,” as recited in
`claim 25. .................................................................................................................46
`
`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 29. ................................................................47
`
`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 increase an
`ionization rate of the strongly-ionized plasma,” as required by dependent
`claim 36. .................................................................................................................50
`
`VI. CONCLUSION.......................................................................................................................51
`
`
`
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`IPR2014-00827
`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 Kudryavtsev teach “a cathode that is positioned adjacent to
`
`the anode and forming a gap there between” as required by independent claim
`
`21 of the ’142 patent. Once the Board recognizes that Dr. Kortshagen
`
`essentially invented some of the alleged “teachings” in Wang and Kudryavtsev
`
`to suit the Petitioners’ objectives, the Board should agree to confirm the
`
`challenged claims.
`
`The ’142 patent discloses and illustrates in FIG. 2A a cathode 204
`
`positioned adjacent to an anode 216 and a gap labeled 220 as an area formed
`
`between the cathode 204 and the anode 216.2 The ‘142 patent requires the
`
`generation of a weakly-ionized plasma between this gap and the application of
`
`an electric field across the gap and the weakly-ionized plasma, which then
`
`creates a strongly-ionized plasma.3 Importantly, this gap is not the area
`
`between the target cathode and the substrate, which is the traditional
`
`positioning of the plasma in a magnetron sputtering system and is not claimed
`
`
`2 Exhibit 1301, ’142 patent, FIG. 2A, col. 4, ll. 34-42.
`
`3 Id. at claim 21.
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`IPR2014-00827
`U.S. Patent No. 6,853,142
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`by the ‘142 patent. Wang does not teach the claimed gap. In fact, the only
`
`area disclosed in Wang in which any plasma is created is the traditional area
`
`between the target and substrate. Unlike the ‘142 patent, Wang contains no
`
`teaching for creating a plasma in the claimed gap.
`
`In fact, both the Petitioners and their expert, Dr. Kortshagen, initially
`
`agreed that Wang does not teach the claimed gap. Petitioners admitted that
`
`Wang does not disclose the ‘142 claim limitations regarding a gap: “[i]n
`
`Wang, the cathode 14 and anode 24 are not positioned so as to form a gap, as
`
`shown in the ’142 Patent.”4 Dr. Kortshagen took the position in his
`
`Declaration that one of ordinary skill in the art could have added and/or
`
`rearranged components in Wang’s device to achieve the claimed invention of
`
`the ‘142 patent: “it would have been obvious to either add a separate anode
`
`electrode in Wang’s chamber between the cathode and the grounded shield 24
`
`and to position the separate anode electrode adjacent to the cathode or to
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`move the grounded shield 24 so as to form a gap, as shown in the ‘142
`
`Patent.”5
`
`Later at his deposition, however, Dr. Kortshagen did an about-face and
`
`took an entirely different position by stating that the traditional area between the
`
`
`4 Petition, p. 40; Exhibit 1302, Kortshagen Declaration, ¶ 110.
`
`5 Exhibit 1302, Kortshagen Declaration, ¶ 110.
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`2
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`IPR2014-00827
`U.S. Patent No. 6,853,142
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`cathode 14 (target) at the top of the chamber and the anode 24 on the opposite
`
`end of the chamber at the bottom is the claimed gap: “[i]f you would be
`
`interested in seeing a gap which has a parallel arrangement of electrodes, then
`
`you could, for instance, look at the gap between the cathode, 14, and what
`
`looks like the bottom of the anode, 24, that part of the anode, 24, which is
`
`actually parallel to the cathode, 14.”6 Indeed, when asked why he took a
`
`different position in his declaration than at his deposition Dr. Kortshagen
`
`stated: “I don't recall why we made -- I made the case as -- as it is reflected
`
`here in paragraph 110.”7 However, this traditional area is not the claimed gap
`
`of the ‘142 patent.
`
`Moreover, 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 peak density of ions,
`
`(namely, equal to or greater than 1012 and equal to or less than 109,
`
`
`6 Exhibit 2011, Kortshagen Deposition (12.4.14), p. 130, ll. 9-15.
`
`7 Id. at p. 137, ll. 14-16.
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`IPR2014-00827
`U.S. Patent No. 6,853,142
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`respectively).8 But Dr. Kortshagen acknowledges that neither Wang nor
`
`Kudryavtsev disclose a magnitude for the peak density of ions.9 Thus,
`
`according to Dr. Kortshagen’s interpretation, it is impossible to conclude that
`
`either Wang or Kudryavtsev teach a strongly ionized plasma at all.
`
`The Board should disregard Dr. Kortshagen’s changing and unsupported
`
`opinions and confirm the challenged claims. Once the prior art is properly
`
`understood, the Board will see that it is missing key claim limitations, not only
`
`the anode, cathode and gap arrangement recited in claim 21 but also other
`
`limitations in the other claims of the ‘142 patent as explained in detail below.10
`
`
`8 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).
`
`9 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.
`
`10 Infra, § V.B.
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`IPR2014-00827
`U.S. Patent No. 6,853,142
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`In addition to missing key limitations, the Petitioner’s obviousness
`
`rejections are all predicated on the false assumption that a skilled artisan could
`
`have achieved the particular type of magnetically enhanced sputtering source
`
`structure and voltage pulse to achieve the multi-step ionization process as
`
`recited in the challenged claims of the ’142 patent by combining the teachings
`
`of Wang and Kudryavtsev.11 But these references disclose very different
`
`structures and processes. Wang teaches a “small magnetron of area less than
`
`20% of the target area rotating about the target center.”12 Kudryavtsev teaches
`
`a different type of discharge device configuration for lasers in which the
`
`“discharge occurred inside a cylindrical tube of diameter 2R = 2.5 cm and the
`
`distance between the electrodes was L = 52 cm.”13 Kudryavtsev’s system does
`
`not even have a magnet or a sputtering source.14
`
`And the Petitioners set forth no evidence that the structure and process
`
`of Wang would produce the particular multi-step ionization process and
`
`
`11 Petition, pp. 39-56.
`
`12 Wang, Exhibit 1305, Abstract.
`
`13 Kudryavtsev, Ex. 1304 at 32, right col. ¶5.
`
`14 Id.
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`IPR2014-00827
`U.S. Patent No. 6,853,142
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`magnetically enhanced sputtering source of the ’142 patent if it were somehow
`
`modified by the teachings of a laser having a very different structure and
`
`process in Kudryavtsev.15 That is, the Petitioners 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
`
`have had a reasonable expectation of success in doing so.”16 The Board has
`
`consistently rejected grounds of rejections in IPR proceedings 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.17 For these reasons as expressed more fully below, none of the
`
`claims of the ’142 patent are obvious.
`
`
`
`
`15 See e.g., Petition, pp. 39-56.
`
`16 OSRAM Sylvania, Inc. v. Am Induction Techs., Inc., 701 F.3d 698, 706 (Fed.
`
`Cir. 2012).
`
`17 Epistar, et al. v. Trustees Of Boston University, IPR2013-00298, Decision Not To
`
`Institute, Paper No. 18 (P.T.A.B. November 15, 2103).
`
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`IPR2014-00827
`U.S. Patent No. 6,853,142
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`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.”18 Then,
`
`“[T]he target material atoms ballistically flow to a substrate where they deposit
`
`as a film of target material.19 “The plasma is replenished by electron-ion pairs
`
`formed by the collision of neutral molecules with secondary electrons
`
`generated at the target surface.”20
`
`A planar magnetron sputtering system is one type of sputtering system.21
`
`“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.”22 “The trapped electrons enhance the efficiency of the
`
`
`18 Exhibit 1301, col. 1, ll. 9-11.
`
`19 Id. at col. 1, ll. 11-13.
`
`20Id. at col. 1, ll. 32-34.
`
`21 Id. at 1, ll. 36-54.
`
`22 Id. at col. 1, ll. 36-38.
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`IPR2014-00827
`U.S. Patent No. 6,853,142
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`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.”23
`
`To address these problems, researchers increased the applied power and later
`
`pulsed the applied power.24 But increasing the power increased “the
`
`probability of establishing an undesirable electrical discharge (an electrical arc)
`
`in the process chamber.”25 And “very large power pulses can still result in
`
`undesirable electrical discharges and undesirable target heating regardless of
`
`their duration.”26
`
`B. The ’142 patent: Dr. Chistyakov invents a new apparatus containing an
`anode; a cathode positioned adjacent to the anode to form a gap there
`between; an ionization source for generating weakly-ionized plasma,
`and a pulsed power supply that produces an electric field across the gap
`to generate excited atoms in the weakly-ionized plasma and secondary
`
`
`23 Id. at col. 2, ll. 57-59.
`
`24 Id. at col. 1, l. 60 to col. 2, l. 9.
`
`25 Id. at col. 2, ll. 63-67.
`
`26 Id. at col. 3, ll. 7-9.
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`IPR2014-00827
`U.S. Patent No. 6,853,142
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`electrons from the cathode, the secondary electrons ionizing the excited
`atoms, thereby creating the strongly ionized plasma.
`
`To overcome the problems of the prior art, Dr. Chistyakov invented an
`
`apparatus containing an anode, a cathode that is positioned adjacent to the
`
`anode and forming a gap there between, an ionization source generating a
`
`weakly-ionized plasma proximate to the cathode, and a power supply that
`
`generates an electric field across the gap to produce a highly-ionized plasma as
`
`recited in independent claim 21 and as illustrated in Fig. 2A of the ’142 patent,
`
`reproduced below:
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`9
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`IPR2014-00827
`U.S. Patent No. 6,853,142
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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
`
`anode 216 and the cathode 204.”27 “The gap 220 and the total volume of the
`
`region 222 are parameters in the ionization process.”28 “In one embodiment,
`
`the pulsed power supply 202 is a component in an ionization source that
`
`generates a weakly ionized plasma 232.”29 “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.”30
`
`
`27 Id. at col. 4, ll. 34-37.
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`28 Id. at col. 4, ll. 40-41.
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`29 Id. at col. 5, ll. 5-7.
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`30 Id. at col. 5, ll. 45-48.
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`IPR2014-00827
`U.S. Patent No. 6,853,142
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`“Forming the weakly-ionized or pre-ionized plasma 232 substantially
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`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.”31 In addition, “the high-power pulses generate a highly-ionized or
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`a strongly-ionized plasma 238 from the weakly-ionized plasma 232.”32
`
`In one embodiment, additional feed gas is supplied to exchange the
`
`weakly-ionized plasma while applying the electrical pulse:
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`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
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`longer duration high-power pulse results in the formation of a
`
`higher density plasma.33
`
`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 anode; a
`
`cathode positioned adjacent to the anode to form a gap there between; an
`
`
`31 Id. at col. 6, ll. 20-25.
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`32 Id. at col. 7, ll. 23-25.
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`33 Id. at col. 4, l. 64 – col. 5, l. 3.
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`IPR2014-00827
`U.S. Patent No. 6,853,142
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`ionization source for generating weakly-ionized plasma, and a pulsed power
`
`supply that produces an electric field across the gap, the electric field
`
`generating excited atoms in the weakly-ionized plasma and generating
`
`secondary electrons from the cathode, the secondary electrons ionizing the
`
`excited atoms, thereby creating the strongly ionized plasma.
`
`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
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`Applicant (i.e., now the Patent Owner) “amended every independent claim to
`
`require ‘the weakly-ionized plasma reducing the probability of developing an
`
`electrical breakdown condition in the chamber’ or similar limitations.”34 But
`
`this allegation is not true because the Examiner identified additional reasons
`
`for allowing the claims beyond the one mentioned by the Petitioners: “The
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`prior art neither discloses nor suggests an ionization source or a means that
`
`generates a weakly-ionized plasma from a feed gas … such as required by
`
`
`34 Petition, p. 7.
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`IPR2014-00827
`U.S. Patent No. 6,853,142
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`claims 1, 22, 43, 44; a step of a method of ionizing a feed gas to form a weakly-
`
`ionized plasma … such as required by claims 10 and 33.”35 Moreover, each of
`
`the independent claims of the ‘142 patent contain many claim limitations
`
`beyond the one mentioned by the Petitioners and therefore, each was allowed
`
`because of many claim limitations, not just one as alleged by the Petitioners.
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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.’”36 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
`
`
`35 Exhibit 1308, Notice of Allowability, March 29, 2004, p. 2.
`
`36 Petition, p. 19.
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`IPR2014-00827
`U.S. Patent No. 6,853,142
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`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
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`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
`
`ground state atoms to generate excited atoms, and then ionizing
`
`the excited atoms within the weakly-ionized plasma without
`
`forming an arc discharge.37
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`Second, the Patent Owner (i.e., the Applicant at that time), did not argue, as
`
`alleged by the Petitioners, 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
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`ground state atoms to generate excited atoms, and then ionizes the excited
`
`atoms without forming an arc discharge.”38 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 Petitioners
`
`
`37 IPR2014-00447, Exhibit 1415, Notice of Allowance, September 29, 2006, pp.
`
`2-3.
`
`38 IPR2014-00447, Exhibit 1413, Response to Office Action, May 2, 2006, p.
`
`13 (emphasis omitted).
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`IPR2014-00827
`U.S. Patent No. 6,853,142
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`mischaracterized the Patent Owner’s argument to the Examiner by truncating
`
`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
`
`no arcing during the multi-stage ionization process (e.g., while ionizing the
`
`excited atoms within the weakly-ionized plasma).39 That is, Mozgrin does not
`
`teach the avoidance of all arcing during execution of the particular process that
`
`is identified in the claim.40
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`
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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
`
`ground of rejection that is pending in this IPR proceeding:
`
`1. Claims 22, 23, 25, 29, 30, 33-36, 39 and 43: obvious in view of the
`
`combination of Wang and Kudryavtsev.
`
`
`
`
`39 IPR2014-00447, Patent Owner’s Preliminary Response, Paper No. 11, §
`
`V.C.2.
`
`40 Id.
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`IPR2014-00827
`U.S. Patent No. 6,853,142
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`IV. PATENT OWNER’S CLAIM CONSTRUCTIONS.
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`Under the Board’s rules, any unexpired claim “shall be given its broadest
`
`reasonable construction in light of the specification of the patent in which it
`
`appears.”41 Under that construction, claim terms are to be given their ordinary
`
`and customary meaning as would be understood by one of ordinary skill in the
`
`art in the context of the entire patent disclosure.42 The customary meaning
`
`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.43
`
`
`41 37 C.F.R. § 42.100(b).
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`42 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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`43 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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`
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`16
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`IPR2014-00827
`U.S. Patent No. 6,853,142
`
`A. The construction of “weakly ionized plasma” and “strongly ionized
`plasma.”
`
`The Board construed “strongly ionized plasma” as “a plasma with a
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`relatively high peak density of ions.”44 The Board construed “weakly ionized
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`plasma” as “a plasma with a relatively low peak density of ions.”45
`
`
`
`V. THE PETTIONERS 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.46 The bases for rejection under 35 U.S.C. § 103 must be
`
`made explicit.47 Thus, a Petition seeking to invalidate a patent as obvious must
`
`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
`
`
`44 Institution Decision, Paper No. 9, p. 8.
`
`45 Id.
`
`46 See Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17 (1966).
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`47 MPEP § 2143.
`
`
`
`17
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`IPR2014-00827
`U.S. Patent No. 6,853,142
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`so.”48 The Petition’s evidence must also address every limitation of every
`
`challenged claim.
`
`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 Wang and Kudryavtsev 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 grounds of rejection
`
`pending in this IPR because the Petitioner failed to demonstrate that any of the
`
`challenged claims are obvious. Generally, a party seeking to invalidate a
`
`
`48 OSRAM Sylvania, Inc. v. Am. Induction Techs., Inc., 701 F.3d 698, 706 (Fed.
`
`Cir. 2012).
`
`
`
`18
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`IPR2014-00827
`U.S. Patent No. 6,853,142
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`patent as obvious must 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 so.”49 This is determined at the time the
`
`invention was made.50 This temporal requirement prevents the “forbidden use
`
`of hindsight.”51 Rejections for obviousness cannot be sustained by mere
`
`
`49 See Proctor & Gamble Co. v. Teva Pharm. USA, Inc., 566 F.3d 989, 995 (Fed.
`
`Cir. 2009) (“To decide whether risedronate was obvious in light of the prior
`
`art, a court must determine whether, at the time of invention, a person having
`
`ordinary skill in the art would have had ‘reason to attempt to make the
`
`composition’ known as risedronate and ‘a reasonable expectation of success in
`
`doing so.’”) (emphasis added).
`
`50 Id.
`
`51 See Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1379 (Fed. Cir. 2012)
`
`(“Indeed, where the invention is less technologically complex, the need for
`
`Graham findings can be important to ward against falling into the forbidden
`
`use of hindsight.”).
`
`
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`19
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`IPR2014-00827
`U.S. Patent No. 6,853,142
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`conclusory statements.52 “Petitioner[s] must show some reason why a person of
`
`ordinary skill in the art would have thought to combine particular available
`
`elements of knowledge, as evidenced by the prior art, to reach the claimed
`
`invention.”53 Inventions are often deemed nonobvious (and thus patentable