IPR2014-00828
`U.S. Patent No. 6,805,779
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY,LTD.,
`TSMC NORTH AMERICA CORPORATION, FUJITSU
`SEMICONDUCTOR LIMITED, FUJITSU SEMICONDUCTOR
`AMERICA, INC., ADVANCED MICRO DEVICES, INC., RENESAS
`ELECTRONICS CORPORATION, RENESAS ELECTRONICS
`AMERICA, INC., GLOBAL FOUNDRIES 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
`__________________
`
`Case IPR2014-008281
`Patent 6,805,779
`__________________
`
`
`
`ZOND LLC’S PATENT OWNER RESPONSE
`
`
`1 Cases IPR2014-00856, IPR2014-01070, and IPR2014-01022 have been joined
`
`with the instant proceeding.
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`

`
`IPR2014-00828
`U.S. Patent No. 6,805,779
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`
`
`TABLE OF CONTENTS
`
`I. INTRODUCTION .......................................................................................................................1
`
`II. TECHNOLOGY BACKGROUND ...........................................................................................7
`
`A.
`
`B.
`
`Overview Of Plasma Generation ...................................................................................7
`
`The ’779 patent: Dr. Chistyakov invents a new plasma generating process
`comprising the steps of generating a magnetic field trapping electrons near
`ground state atoms, generating metastable atoms from the ground state atoms,
`and ionizing the metastable atoms in a multi-step ionization process. ..........................9
`
`C.
`
`The Petitioner Mischaracterized The File History. ......................................................13
`
`III. SUMMARY OF THE INSTITUTED GROUNDS FOR REVIEW .......................................14
`
`IV. CLAIM CONSTRUCTION. ..................................................................................................15
`
`A.
`
`The construction of “metastable atoms,” “multi step ionization,” and “excited
`atoms.” .........................................................................................................................16
`
`V. THE PETITIONERS CANNOT PREVAIL ON ANY CHALLENGED CLAIM OF
`THE ’779 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 ’779 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. ...............................................................................20
`
`a.
`
`b.
`
`Iwamura ...........................................................................................................21
`
`Pinsley and Angelbeck .....................................................................................23
`
`2.
`
`The Petitioner Failed To Show That It Would Have Been Obvious To
`Combine The Laser Of Angelbeck Or Pinsley With The Plasma Treatment
`Apparatus Of Iwamura With A Reasonable Expectation Of Success. ..................24
`
`B.
`
`The Petition failed to demonstrate how the alleged combinations teach every
`element of the challenged claims. ................................................................................27
`
`
`
`ii
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`

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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
`
`7.
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`IPR2014-00828
`U.S. Patent No. 6,805,779
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`The combination of Iwamura, Angelbeck and Pinsley does not teach
`“generating a magnetic field proximate to a volume of ground state atoms
`to substantially trap electrons proximate to the volume of ground state
`atoms” as recited in independent claim 30, and as similarly recited in
`independent claim 40. ............................................................................................27
`
`The combination of Iwamura and Angelbeck Does Not Teach “generating
`a volume of metastable atoms from the volume of ground state atoms,” As
`Recited In Claim 30, And As Similarly Recited in Claim 40. ...............................31
`
`The combination of Iwamura, Angelbeck, and Pinsley Does Not Teach
`“raising an energy of the metastable atoms so that at least
a portion of the
`volume of metastable atoms is ionized,” As Recited In Claim 30, and as
`similarly recited in claim 40. .................................................................................35
`
`The combination of Iwamura, Angelbeck, and Pinsley Does Not Teach
`“generating the volume of metastable atoms comprises generating a
`discharge that excites at least a portion of the ground state atoms in the
`volume of ground state atoms to a metastable state,” As Recited In Claim
`32............................................................................................................................37
`
`The combination of Iwamura, Angelbeck, and Pinsley Does Not Teach
`That “generating the magnetic field proximate to the volume of ground
`state atoms increases excitation of at least a portion of the ground state
`atoms in the volume of ground state atoms to a metastable state,” as
`recited in claim 33. .................................................................................................41
`
`The combination of Iwamura, Angelbeck, and Pinsley Does Not Teach
`That “the raising the energy of the metastable atoms comprises exposing
`the metastable atoms to an electric field,” as recited in claim 35, and as
`similarly recited in claim 37. .................................................................................44
`
`The Combination Of Iwamura, Angelbeck, Pinsley And Wells Does Not
`Teach That “generating the volume of metastable atoms comprises
`generating an electron beam that excites at least a portion of the ground
`state atoms in the volume of ground state atoms to a metastable state,” As
`Recited In Dependent Claim 34, And As Similarly Recited In Dependent
`Claim 39. ................................................................................................................47
`
`VI. CONCLUSION.......................................................................................................................50
`
`
`
`
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`iii
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`IPR2014-00828
`U.S. Patent No. 6,805,779
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`
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`Exhibit List
`
`Description
`
`Exhibit
`No.
`Ex. 2004 Transcript of deposition of Dr. Kortshagen, Petitioners’ expert, for
`the ’779 Patent, 1/16/2015.
`
`Ex. 2005 Declaration of Dr. Hartsough, Patent Owner’s expert.
`
`
`
`iv
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`

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`IPR2014-00828
`U.S. Patent No. 6,805,779
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`I. INTRODUCTION
`
`The Petitioners’ arguments hinge on fanciful misreadings of the prior art
`
`by their proffered expert, Dr. Kortshagen. As will be shown below, neither
`
`Iwamura, Angelbeck nor Pinsley teaches a “generating a magnetic field
`
`proximate to a volume of ground state atoms to substantially trap electrons
`
`proximate to the volume of ground state atoms, [and] generating a volume of
`
`metastable atoms from the volume of ground state atoms,” as recited in claim
`
`30, and as similarly recite in claim 40. Once the Board recognizes that Dr.
`
`Kortshagen essentially invented some of the alleged “teachings” in Iwamura,
`
`Angelbeck, or Pinsley to suit the Petitioners’ objectives, the Board should agree
`
`to confirm the challenged claims.
`
`The ’779 patent discloses and illustrates in FIG. 6 (reproduced on the
`
`next page below) a metastable atom source 500 including a chamber 502, first
`
`504a, b and second magnets 506a, b that create magnetic fields 508a, b through
`
`the chamber 502. A power supply 510 is coupled to the metastable atom
`
`source 500. A gas line 528 is coupled to an input 530 of the chamber 502. An
`
`output 532 of the chamber 502 is coupled to an input 534 of an electron/ion
`
`absorber 536. In operation, ground state atoms 208 from the gas source (not
`
`shown) flow to the metastable atom source 500 through the input 530 of the
`
`chamber 502. The ground state atoms 208 flow between the first electrode 524
`
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`1
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`IPR2014-00828
`U.S. Patent No. 6,805,779
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`and the second electrode 526. The first 524 and the second electrodes 526 are
`
`energized by the power supply 510, such that an electric field is created that
`
`generates a discharge in a discharge region 544 between the first 524 and the
`
`second electrodes 526. The ground state atoms 208 that are injected through
`
`the discharge region 540 are energized to a metastable state.
`
`
`
`
`
`In one embodiment, ions in the chamber 502 impact the more negatively
`
`biased electrode (either the first 524 or the second electrode 526) and generate
`
`secondary electrons (not shown) from that electrode. The magnetic fields 508a,
`
`
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`2
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`IPR2014-00828
`U.S. Patent No. 6,805,779
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`508b confine many of the electrons 426 and the secondary electrons in the
`
`chamber 502 thereby improving the efficiency of the excitation process in the
`
`chamber 502.
`
` Iwamura, in contrast, does not mention a magnet nor metastable
`
`atoms. Indeed, the Petitioner’s own expert, Dr. Kortshagen, admitted in his
`
`deposition that he could not find any mention of either a magnet or metastable
`
`atoms in Iwamura:
`
`Q. In your opinion, is there any explicit reference to metastable
`
`atoms in the Iwamura patent?
`
`A. Explicit in the term that it -- it says metastable atom, I don't
`
`think there is; that is correct.2
`
`…
`
`A. No, Iwamura actually does not disclose a magnet, and this is
`
`why in the declaration referring to claim 18, which maybe you
`
`could hand me a little later, we're invoking obviousness over
`
`Iwamura and Angelbeck and Pinsley.3
`
`But Angelbeck and Pinsley cannot possibly compensate for the deficiencies of
`
`Iwamura because as explained by the Patent Owner’s expert Dr. Hartsough,
`
`
`2 Exhibit 2004, Kortshagen Deposition (1.16.15), p. 105, ll. 4-9.
`
`3 Id. at p. 161, ll. 6-11.
`
`
`
`3
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`

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`IPR2014-00828
`U.S. Patent No. 6,805,779
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`“Angelbeck’s system produces a plasma, not excited/metastable atoms as
`
`claimed. Specifically, Angelbeck teaches, ‘[t]he current-excited discharge
`
`passed through the gas within tube 10 creates a plasma in which the atoms are
`
`ionized and electrons are freed.’”4 Moreover, as further explained by Dr.
`
`Hartsough, the magnetic fields disclosed in Angelbeck and Pinsley would
`
`create a transverse magnetic field increasing the loss of electrons to the tube
`
`walls, instead of trapping electrons proximate to the ground state atoms as
`
`claimed in the ‘779 patent.5
`
`Thus, 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 “generating a
`
`magnetic field proximate to a volume of ground state atoms to substantially
`
`trap electrons proximate to the volume of ground state atoms, [and] generating
`
`a volume of metastable atoms from the volume of ground state atoms,” but
`
`
`4 Exhibit 2005, Dr. Hartsough’s Declaration, ¶ 58, quoting Angelbeck, col.
`
`2:55-57.
`
`5 Id. at ¶ 60.
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`4
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`IPR2014-00828
`U.S. Patent No. 6,805,779
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`also many other limitations in the other claims of the ’779 patent as explained
`
`in detail below.6
`
`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 combination of (i) generating a magnetic field proximate to
`
`a volume of ground state atoms to substantially trap electrons proximate to the
`
`volume of ground state atoms; (ii) generating a volume of metastable atoms
`
`from the volume of ground state atoms; and (iii) raising an energy of the
`
`metastable atoms so that at least a portion of the volume of metastable atoms is
`
`ionized, thereby generating a plasma with a multi-step ionization process, as
`
`required by independent claims 30 and 40 of the ’779 patent by combining the
`
`teachings of Iwamura, Angelbeck, and Pinsley.7
`
`But these three references disclose very different structures and
`
`processes. As explained by Dr. Hartsough, the claimed invention of the ’779
`
`patent confines the excited atoms after they are transformed from ground state
`
`atoms so that they can later be ionized while the excited atoms in Angelbeck’s
`
`
`6 Infra, § V.B.
`
`7 Petition at pp. 18-40.
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`5
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`IPR2014-00828
`U.S. Patent No. 6,805,779
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`laser or Pinsley’s laser must return to their ground state to release energy so
`
`that the laser will operate according to its intended purpose: to emit light.8
`
`And the Petitioner sets forth no evidence that the structure and process
`
`of Iwamura would produce the particular plasma generation method required
`
`by independent claims 30 and 40 of the ’779 patent if Iwamura were somehow
`
`modified by a structure that uses a laser to generate light like Angelbeck or
`
`Pinsley.9 Indeed, a laser emits light with the release of energy when electrons
`
`in atoms move to a lower energy state. Because higher energy atoms in
`
`Angelbeck and Pinsley’s laser are used to make light, they would not be
`
`available for the plasma generation process of Iwamura.
`
`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 have had a reasonable
`
`expectation of success in doing so.”10 The Board has consistently declined to
`
`
`8 Exhibit 2005, Dr. Hartsough’s Declaration, ¶ 48.
`
`9 See e.g., Petition, pp. 18-40.
`
`10 OSRAM Sylvania, Inc. v. Am Induction Techs., Inc., 701 F.3d 698, 706 (Fed.
`
`Cir. 2012).
`
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`6
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`IPR2014-00828
`U.S. Patent No. 6,805,779
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`institute proposed 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.11 Here,
`
`the Petitioner did not set forth any such objective evidence.12
`
`For these reasons as expressed more fully below, none of the challenged
`
`claims of the ‘779 patent are obvious.
`
`
`
`II. TECHNOLOGY BACKGROUND
`
`A. Overview Of Plasma Generation
`
`“A plasma is a collection of charged particles that move in random
`
`directions.”13 “For example, a plasma can be generated by applying a
`
`potential of several kilovolts between two parallel conducting electrodes in an
`
`inert gas atmosphere (e.g., argon) at a pressure that is between about 10-1 and
`
`
`11 Epistar, et al. v. Trustees Of Boston University, IPR2013-00298, Decision Not To
`
`Institute, Paper No. 18 (P.T.A.B. November 15, 2103).
`
`12 See e.g., Petition, pp. 14-60.
`
`13Exhibit 1201, ‘779 patent col. 1, ll. 7-9.
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`7
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`10-2 Torr.”14 Plasma is generated for use in sputtering systems, which deposit
`
`films on substrates:
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`IPR2014-00828
`U.S. Patent No. 6,805,779
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`Ions, such as argon ions, are generated and are then drawn out of
`
`the plasma and accelerated across a cathode dark space. The target
`
`surface has a lower potential than the region in which the plasma
`
`is formed. Therefore, the target surface attracts positive ions.
`
`Positive ions move towards the target with a high velocity and
`
`then impact the target and cause atoms to physically dislodge or
`
`sputter from the target surface. The sputtered atoms then
`
`propagate to a substrate or other work piece where they deposit a
`
`film of sputtered target material.15
`
`Magnets can be used in sputtering systems to increase the deposition rate:
`
`Magnetron sputtering systems use magnetic fields that are shaped
`
`to trap and concentrate secondary electrons proximate to the target
`
`surface. The magnetic fields increase the density of electrons and,
`
`therefore, increase the plasma density in a region that is proximate
`
`to the target surface. The increased plasma density increases the
`
`sputter deposition rate.16
`
`
`14 Id. at col. 1, ll. 14-16.
`
`15 Id. col. 1, ll. 30-42.
`
`16 Id. at col. 1, ll. 50-57.
`
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`8
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`IPR2014-00828
`U.S. Patent No. 6,805,779
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`These magnetron sputtering systems, however, have “undesirable non-
`
`uniform erosion of target material.”17 To address these problems, researchers
`
`increased the applied power and later pulsed the applied power.18 But
`
`increasing the power increased “the probability of establishing an electrical
`
`breakdown condition leading to an undesirable electrical discharge (an
`
`electrical arc) in the chamber.”19 And “very large power pulses can still result
`
`in undesirable electrical discharges and undesirable target heating regardless of
`
`their duration.”20
`
`B. The ’779 patent: Dr. Chistyakov invents a new plasma generating
`process comprising the steps of generating a magnetic field trapping
`electrons near ground state atoms, generating metastable atoms from
`the ground state atoms, and ionizing the metastable atoms in a multi-
`step ionization process.
`
`To overcome the problems of the prior art, Dr. Chistyakov invented a
`
`plasma generating process comprising the steps of: (i) generating a magnetic
`
`field proximate to a volume of ground state atoms to substantially trap
`
`electrons proximate to the volume of ground state atoms; (ii) generating a
`
`
`17 Id. at col. 4, ll. 64-65.
`
`18 Id. at col. 4, ll. 3-20.
`
`19 Id. at col. 4, ll. 7-9.
`
`20 Id. at col. 4, ll. 18-20.
`
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`9
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`IPR2014-00828
`U.S. Patent No. 6,805,779
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`volume of metastable atoms from the volume of ground state atoms; and (iii)
`
`raising an energy of the metastable atoms so that some of the metastable atoms
`
`are ionized, thereby generating a plasma with a multi-step ionization process
`
`as recited in independent claims 30 and 40 and as illustrated in Fig. 2 of the
`
`’779 patent, reproduced below:
`
`
`
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`10
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`

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`IPR2014-00828
`U.S. Patent No. 6,805,779
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`
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`As illustrated by FIG. 2, Dr. Chistyakov’s plasma generation apparatus
`
`includes “an excited atom source that generates excited atoms from ground
`
`state atoms from a feed gas source 206.”21 In one embodiment, “the excited
`
`atom source is a metastable atom source 204.”22 “The feed gas source 206
`
`provides a volume of ground state atoms 208 to the metastable atom source
`
`204.”23 “The plasma generator of the present invention can use any type of
`
`metastable atom source 204. Skilled artisans will appreciate that there are
`
`many methods of exciting ground state atoms 208 to a metastable state.”24
`
`Dr. Chistyakov’s plasma generation apparatus then moves the excited or
`
`metastable atoms toward a chamber:
`
`The plasma chamber 230 confines the volume of metastable atoms
`
`218. In one embodiment, the output of the metastable atom source
`
`204 is positioned so as to direct the volume of metastable atoms
`
`218 towards the cathode assembly 114. In one embodiment, the
`
`
`21 Id. at col. 4, ll. 30-31.
`
`22 Id. at col. 4, ll. 31-34.
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`23 Id. at col. 4, ll. 34-36.
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`24 Id. at col. 5, ll. 1-5.
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`11
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`IPR2014-00828
`U.S. Patent No. 6,805,779
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`geometry of the plasma chamber 230 and the cathode assembly
`
`114 is chosen so that the metastable atoms reach the cathode
`
`assembly 114 at a time that is much less than an average transition
`
`time of the metastable atoms to ground state atoms.25
`
`The plasma generator also includes a magnet to increase the plasma density
`
`near the cathode:
`
`In one embodiment, a magnet (not shown) is disposed proximate
`
`to the cathode assembly 114. The magnet generates a magnetic
`
`field that traps electrons in the plasma proximate to the cathode
`
`assembly 114 and, therefore, increases the plasma density. In the
`
`region proximate to the cathode assembly 114.26
`
`“The plasma generator 200 of FIG. 2 uses a multi-step or stepwise
`
`ionization process to generate the plasma 202.”27 A “multi-step ionization
`
`process according to the present invention includes a first step where atoms are
`
`excited from a ground state to an excited state and a second step where atoms
`
`in the excited state are ionized.”28
`
`
`25 Id. at col. 6, ll. 48-56.
`
`26 Id. at col. 6, ll. 34-39.
`
`27 Id. at col. 6, ll. 60-61.
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`28 Id. at col. 7, ll. 4-7.
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`12
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`IPR2014-00828
`U.S. Patent No. 6,805,779
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`Dr. Chistyakov’s “multi-step ionization process … substantially
`
`increases the rate at which the plasma 202 is formed and therefore, generates a
`
`relatively dense plasma.”29 “Once a plasma having the desired characteristics
`
`is generated, the plasma 202 can be used in the processing of the workpiece
`
`138. … In a plasma sputtering application, ions in the plasma can be used to
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`sputter material from the target 116. The sputtered material is deposited on the
`
`workpiece 138 to form a thin film.”30
`
`Thus, Dr. Chistyakov accomplished his breakthrough of improved
`
`plasma generation by inventing a particular plasma generating process
`
`comprising the steps of: (i) generating a magnetic field proximate to a volume
`
`of ground state atoms to substantially trap electrons proximate to the volume
`
`of ground state atoms; (ii) generating a volume of metastable atoms from the
`
`volume of ground state atoms; and (iii) raising an energy of the metastable
`
`atoms so that some of the metastable atoms are ionized, thereby generating a
`
`plasma with a multi-step ionization process.
`
`C. The Petitioner Mischaracterized The File History.
`
`The Petitioner alleged that the claims of the ’779 patent were allowed
`
`solely because the Applicant (i.e., now the Patent Owner) “amended the
`
`
`29 Id. at col. 8, ll. 65-67.
`
`30 Id. at col. 9, ll. 42-50.
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`13
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`IPR2014-00828
`U.S. Patent No. 6,805,779
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`independent claims at issue here to require that the distinct source further
`
`includes ‘generating a magnetic field proximate to a volume of ground state
`
`atoms [molecules] to substantially trap electrons proximate to the ground state
`
`atoms [molecules].’”31
`
`But this allegation is not true because the Applicant amended the claims
`
`at the suggestion of the Examiner to include the limitations from a dependent
`
`claim, as applicants frequently do.32 That is, the independent claims were
`
`allowed because of all the steps recited within them (e.g., generating a volume
`
`of metastable atoms from the volume of ground state atoms; and raising an
`
`energy of the metastable atoms so that some of the metastable atoms are
`
`ionized, thereby generating a plasma with a multi-step ionization process) and
`
`not solely because of one of the claim amendments made prior to allowance of
`
`the patent.
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`
`
`
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`III. SUMMARY OF THE INSTITUTED GROUNDS FOR REVIEW
`
`For the Board’s convenience below is a summary of the proposed
`
`grounds of rejections that were instituted in this IPR proceeding:
`
`
`31 Petition, p. 10 (citing Ex. 1209, 05/06/04 Resp. at 2, 4, 6, 8 and 10).
`
`32 Id. at 11.
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`14
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`1. Claims 30-33, 35, 37, and 40: obvious in view of the combination
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`IPR2014-00828
`U.S. Patent No. 6,805,779
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`of Iwamura, Angelbeck, and Pinsley;
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`2. Claims 34 and 39: obvious in view of the combination of
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`Iwamura, Angelbeck, Pinsley, and Wells; and
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`3. Claim 36: obvious in view of the combination of Iwamura,
`
`Angelbeck, Pinsley, and Lovelock.
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`
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`IV. CLAIM CONSTRUCTION.
`
`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.”33 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.34 The customary meaning
`
`
`33 37 C.F.R. § 42.100(b).
`
`34 Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc);
`
`Research in Motion v. Wi-Lan, Case IPR2013-00126, Paper 10 at 7 (P.T.A.B.
`
`June 20, 2013).
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`15
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`IPR2014-00828
`U.S. Patent No. 6,805,779
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`applies unless the specification reveals a special definition given to the claim
`
`term by the patentee, in which case the inventor’s lexicography governs.35
`
`A. The construction of “metastable atoms,” “multi step ionization,” and
`“excited atoms.”
`
`The Board construed “metastable atoms” as “excited atoms having
`
`energy levels from which dipole radiation is theoretically forbidden.”36 The
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`Board also construed the claim term “multi-step ionization” as “an ionization
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`process having at least two distinct steps.”37 The Board construed the claim
`
`term “excited atoms” as “atoms that have one or more electrons in a state that
`
`is higher than its lowest possible state.”38
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`
`
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`35 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.”).
`
`36 IPR2014-00828, Institution Decision, Paper No. 9, p. 8.
`
`37 Id. at 10.
`
`38 IPR2014-00829, Institution Decision, Paper No. 9, p. 7.
`
`
`
`16
`
`

`
`IPR2014-00828
`U.S. Patent No. 6,805,779
`
`V. THE PETITIONERS CANNOT PREVAIL ON ANY CHALLENGED
`CLAIM OF THE ’779 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 Petitioner.39 The bases for rejection under 35 U.S.C. § 103 must be
`
`made explicit.40 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
`
`so.”41 The petition’s evidence must also address every limitation of every
`
`challenged claim.
`
`Here, the Board should confirm 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 ’779 patent, and that the skilled artisan would have had a
`
`reasonable expectation of success in doing so or that combining the teachings
`
`
`39 See Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17 (1966).
`
`40 MPEP § 2143.
`
`41 OSRAM Sylvania, Inc. v. Am. Induction Techs., Inc., 701 F.3d 698, 706 (Fed.
`
`Cir. 2012).
`
`
`
`17
`
`

`
`of the prior art would have led to predictable results, (ii) the Petition failed to
`
`demonstrate that the prior art teaches every element of the challenged claims.
`
`IPR2014-00828
`U.S. Patent No. 6,805,779
`
`
`
`
`
`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 ’779 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 the sole ground of rejection pending in
`
`this IPR because the Petitioners failed to demonstrate that any of the
`
`challenged claims are obvious. Generally, a party 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 so.”42 This is determined at the time the
`
`
`42 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
`
`
`
`18
`
`

`
`IPR2014-00828
`U.S. Patent No. 6,805,779
`
`invention was made.43 This temporal requirement prevents the “forbidden use
`
`of hindsight.”44 Rejections for obviousness cannot be sustained by mere
`
`conclusory statements.45 “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
`
`
`composition’ known as risedronate and ‘a reasonable expectation of success in
`
`doing so.’”) (emphasis added).
`
`43 Id.
`
`44 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.”).
`
`45 See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[R]ejections on
`
`obviousness grounds cannot be sustained by mere conclusory statements;
`
`instead, there must be some articulated reasoning with some rational
`
`underpinning to support the legal conclusion of obviousness”).
`
`
`
`19
`
`

`
`IPR2014-00828
`U.S. Patent No. 6,805,779
`
`invention.”46 Inventions are often deemed nonobvious (and thus patentable)
`
`even when all of the claim elements are individually found in the prior art
`
`because an “invention may be a combination of old elements.”47 The
`
`motivation to combine inquiry focuses heavily on “scope and content of the
`
`prior art” and the “level of ordinary skill in the pertinent art” aspects of the
`
`Graham factors.48 The Petition did not address either factor.
`
`1.
`
`Scope and content of prior art.
`
`Any obviousness analysis requires a consideration of the scope and
`
`content of the prior art and the differences between the prior art and the
`
`
`46