UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________________
`
`FUJITSU SEMICONDUCTOR LIMITED,
`FUJITSU SEMICONDUCTOR AMERICA, INC.,
`ADVANCED MICRO DEVICES, INC., RENESAS ELECTRONICS
`CORPORATION, RENESAS ELECTRONICS AMERICA, INC.,
`GLOBALFOUNDRIES U.S., INC., GLOBALFOUNDRIES DRESDEN
`MODULE ONE LLC & CO. KG, GLOBALFOUNDRIES DRESDEN
`MODULE TWO LLC & CO. KG, TOSHIBA AMERICA ELECTRONIC
`COMPONENTS, INC., TOSHIBA AMERICA INC., TOSHIBA
`AMERICA INFORMATION SYSTEMS, INC.,
`TOSHIBA CORPORATION, and
`THE GILLETTE COMPANY,
`Petitioners,
`
`
`
`v.
`
`Zond, LLC.
`Patent Owner of U.S. Patent No. 6,805,779
`Trial No. IPR2014-008281
`
`
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION FOR
`OBSERVATION ON CROSS-EXAMINATION OF PETITIONER’S REPLY
`WITNESS DR. UWE KORTSHAGEN
`
`
`1 Cases IPR2014-00856, IPR2014-01022, and IPR2014-01070 have been joined
`with the instant proceeding.
`
`
`
`
`
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________________
`
`FUJITSU SEMICONDUCTOR LIMITED,
`FUJITSU SEMICONDUCTOR AMERICA, INC.,
`ADVANCED MICRO DEVICES, INC., RENESAS ELECTRONICS
`CORPORATION, RENESAS ELECTRONICS AMERICA, INC.,
`GLOBALFOUNDRIES U.S., INC., GLOBALFOUNDRIES DRESDEN
`MODULE ONE LLC & CO. KG, GLOBALFOUNDRIES DRESDEN
`MODULE TWO LLC & CO. KG, TOSHIBA AMERICA ELECTRONIC
`COMPONENTS, INC., TOSHIBA AMERICA INC., TOSHIBA
`AMERICA INFORMATION SYSTEMS, INC.,
`TOSHIBA CORPORATION, and
`THE GILLETTE COMPANY,
`Petitioners,
`
`
`
`v.
`
`Zond, LLC.
`Patent Owner of U.S. Patent No. 6,805,779
`Trial No. IPR2014-008281
`
`
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION FOR
`OBSERVATION ON CROSS-EXAMINATION OF PETITIONER’S REPLY
`WITNESS DR. UWE KORTSHAGEN
`
`
`1 Cases IPR2014-00856, IPR2014-01022, and IPR2014-01070 have been joined
`with the instant proceeding.
`
`
`
`
`
`Trial No. IPR2014-00828
`Petitioner’s Response to Patent Owner’s Motion for Observation
`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`RESPONSES TO OBSERVATIONS ON DR. KORTSHAGEN’S
`TESTIMONY .................................................................................................. 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`Response to Observation 1 .................................................................... 1
`
`Response to Observation 2 .................................................................... 2
`
`Response to Observation 3 .................................................................... 5
`
`Response to Observation 4 .................................................................... 6
`
`
`
`i
`
`
`I.
`
`II.
`
`
`
`
`
`
`
`Trial No. IPR2014-00828
`Petitioner’s Response to Patent Owner’s Motion for Observation
`
`
`INTRODUCTION
`
`I.
`
`Petitioner submits this response to Patent Owner Zond’s Observations on
`
`Cross-Examination of Dr. Kortshagen, Paper No. 46 (“Observation”). Patent
`
`Owner presents four observations on Dr. Kortshagen’s testimony. While Petitioner
`
`believes that the testimony will be appropriately viewed and weighed by the Board,
`
`the specific observations presented by Patent Owner are irrelevant and
`
`mischaracterize the testimony of Dr. Kortshagen, as specified below, and therefore
`
`are not probative of any material issue before the Board.
`
`II. RESPONSES TO OBSERVATIONS ON DR. KORTSHAGEN’S
`TESTIMONY
`A. Response to Observation 1
`Patent Owner contends that Dr. Kortshagen’s testimony indicates “Iwamura
`
`does not teach a magnetic field.” Observation at 2. More specifically, the Patent
`
`Owner contends that “many of the claims of U.S. patent 6,805,779 (‘the ‘779
`
`patent’) recite limitations requiring a magnetic field and therefore, the testimony
`
`indicates that Iwamura cannot possibly teach these limitations.” Observation at 2.
`
`Patent Owner’s observation is irrelevant to the proceeding.
`
`The questioning on whether Iwamura discloses a magnetic field is wholly
`
`irrelevant in light of the grounds of unpatentability relied upon by Petitioner and
`
`instituted by the Board. The instituted grounds are not based upon Iwamura alone
`
`to disclose the use of magnetic field, but rather upon the combined teachings of
`
`1
`
`
`
`Trial No. IPR2014-00828
`Petitioner’s Response to Patent Owner’s Motion for Observation
`
`
`Iwamura in view of Angelbeck and Pinsley. See, e.g., IPR2014-00828 Petition for
`
`Inter Partes Review at 47-50 (Paper No. 2); IPR2014-00828 Institution Decision at
`
`15-19 (Paper No. 11). Thus, Dr. Kortshagen’s testimony is consistent with the
`
`grounds instituted in this proceeding. Accordingly, Patent Owner’s observation is
`
`irrelevant to the instant proceeding.
`
`B. Response to Observation 2
`Patent Owner contends that Dr. Kortshagen’s testimony indicates that the
`
`magnetic field in Pinsley “would not have any effect on the motion of any ground
`
`state atoms in the absence of a discharge.” Observation at 3. More specifically,
`
`the Patent Owner contends that “the magnetic field in Pinsley does not effect [sic]
`
`the volume of ground state atoms and therefore, does not teach many of the claim
`
`limitations of the ‘779 patent that require generating a magnetic field proximate to
`
`a volume of ground state atoms.” Observation at 3. Patent Owner’s observation
`
`mischaracterizes the claim language and is irrelevant to the proceeding.
`
`The questioning on whether Pinsley discloses a magnetic field affecting
`
`ground state atoms is irrelevant in light of both the claim language of the ’779
`
`patent and the grounds of unpatentability relied upon by Petitioner and instituted
`
`by the Board. All claims of the ’779 patent that refer to the use of a magnetic field
`
`require that the magnetic field “substantially trap[] electrons proximate to the
`
`ground state atoms.” See ’779 Patent at claims 1, 18, 30, and 41 (emphasis added).
`
`2
`
`
`
`Trial No. IPR2014-00828
`Petitioner’s Response to Patent Owner’s Motion for Observation
`
`
`Put another way, the claims require that the magnetic field affect the electrons,
`
`but there is no requirement that the magnetic field affect the ground state
`
`atoms as Zond suggests. This is the proper read of the claims that Dr. Kortshagen
`
`applied when asked questions regarding the magnetic field’s effect on electrons
`
`and ground state atoms.
`
`Q: So now let's consider the case where there is a current, and it's still
`
`true that ground state atoms would exist from the source 12; is that right?
`
`A. That is correct, yes.
`
`Q. And in the case where there is a current, the plasma would
`
`exist between the anode and the cathode, correct?
`
`A. Yeah, roughly between the anode and the cathode. Yes, that
`
`is correct.
`
`Q. And there may still be ground state atoms present in that
`
`situation, correct?
`
`A. There will certainly be some ground state atoms present in
`
`that situation, that is correct, yes.
`
`Q. So considering that situation, what if anything would be the
`
`effect of the magnetic field on the ground state atoms?
`
`A. So I believe you can actually distinguish between a direct
`
`effect and an indirect effect.
`
`3
`
`
`
`Trial No. IPR2014-00828
`Petitioner’s Response to Patent Owner’s Motion for Observation
`
`
`Direct effect in the sense that will the ground state atoms feel
`
`any kind of force due to the magnetic fields, the answer is still no, that
`
`they will not do that.
`
`Indirect effect in the sense that the magnetic field traps
`
`electrons and raises the electron density and thus leads to a higher
`
`probability of the grouped [sic] state atoms being excited and
`
`transformed into excited state atoms or metastable atoms, that
`
`indirect effect is there in the presence of a plasma.
`
`Kortshagen Dep. at 22:17 – 23:24 (emphasis added) (Ex. 2006).
`
`Accordingly, the Board should dismiss Patent Owner’s observation as
`
`irrelevant to the instant proceeding.
`
`
`
`Secondly, Zond’s conclusion that “the magnetic field in Pinsley does not
`
`effect [sic] the volume of ground state atoms and therefore, does not teach many of
`
`the claim limitations of the ‘779 patent that require generating a magnetic field
`
`proximate to a volume of ground state atoms” is wholly irrelevant in light of the
`
`grounds of unpatentability relied upon by Petitioner and instituted by the Board.
`
`The instituted grounds are not based upon Pinsley alone to disclose substantially
`
`trapping electrons proximate to the ground state atoms, but rather upon the
`
`combined teachings of Iwamura in view of Angelbeck and Pinsley. See, e.g.,
`
`IPR2014-00828 Petition for Inter Partes Review at 47-50 (Paper No. 2); IPR2014-
`
`4
`
`
`
`Trial No. IPR2014-00828
`Petitioner’s Response to Patent Owner’s Motion for Observation
`
`
`00828 Institution Decision at 15-19 (Paper No. 11). Thus, Dr. Kortshagen’s
`
`testimony is consistent with the grounds instituted in this proceeding.
`
`Accordingly, Patent Owner’s observation is irrelevant to the instant proceeding.
`
`C. Response to Observation 3
`Patent Owner contends that Dr. Kortshagen’s testimony indicates
`
`“Angelbeck does not teach a feed gas.” Observation at 4. More specifically, the
`
`Patent Owner contends that “many of the claims of the ‘779 patent recite
`
`limitations requiring a feed gas and therefore, the testimony indicates that
`
`Angelbeck cannot possibly teach these limitations.” Observation at 4. Patent
`
`Owner’s observation is irrelevant to the proceeding.
`
`The questioning on whether Angelbeck discloses use of a feed gas is wholly
`
`irrelevant in light of the grounds of unpatentability relied upon by Petitioner and
`
`instituted by the Board. The instituted grounds are not based upon Angelbeck
`
`alone to disclose use of a feed gas, but rather upon the combined teachings of
`
`Iwamura in view of Angelbeck and Pinsley. See IPR2014-00828 Petition for Inter
`
`Partes Review at 46 (Paper No. 2); IPR2014-00828 Institution Decision at 12
`
`(Paper No. 11). Thus, Dr. Kortshagen’s testimony is consistent with the grounds
`
`instituted in this proceeding. Accordingly, Patent Owner’s observation is
`
`irrelevant to the instant proceeding.
`
`5
`
`
`
`Trial No. IPR2014-00828
`Petitioner’s Response to Patent Owner’s Motion for Observation
`
`
`D. Response to Observation 4
`Patent Owner contends that Dr. Kortshagen’s testimony indicates that the
`
`magnetic field in Angelbeck “would not have any effect on the motion of any
`
`ground state atoms in the absence of a current flow.” Observation at 5. More
`
`specifically, the Patent Owner contends that “the magnetic field in Angelbeck does
`
`not effect [sic] the volume of ground state atoms and therefore, does not teach
`
`many of the claim limitations of the ‘779 patent that require generating a magnetic
`
`field proximate to a volume of ground state atoms.” Observation at 5. Patent
`
`Owner’s observation mischaracterizes the claim language and is irrelevant to the
`
`proceeding.
`
`Similar to Patent Owner’s Observation 2, above, the questioning on whether
`
`Angelbeck discloses a magnetic field affecting ground state atoms is irrelevant in
`
`light of both the claim language of the ’779 patent and the grounds of
`
`unpatentability relied upon by Petitioner and instituted by the Board. All claims of
`
`the ’779 patent referring to use of a magnetic field require that the magnetic field
`
`affect the electrons – not the ground state atoms – by substantially trapping
`
`them proximate to the ground state atoms. This is the proper read of the claims
`
`that Dr. Kortshagen applied when asked questions regarding the magnetic field’s
`
`effect on electrons and ground state atoms.
`
`6
`
`
`
`Trial No. IPR2014-00828
`Petitioner’s Response to Patent Owner’s Motion for Observation
`
`
`Q: So now let's consider the case where there is a current, and it's still
`
`true that ground state atoms would exist from the source 12; is that right?
`
`A. That is correct, yes.
`
`Q. And in the case where there is a current, the plasma would
`
`exist between the anode and the cathode, correct?
`
`A. Yeah, roughly between the anode and the cathode. Yes, that
`
`is correct.
`
`Q. And there may still be ground state atoms present in that
`
`situation, correct?
`
`A. There will certainly be some ground state atoms present in
`
`that situation, that is correct, yes.
`
`Q. So considering that situation, what if anything would be the
`
`effect of the magnetic field on the ground state atoms?
`
`A. So I believe you can actually distinguish between a direct
`
`effect and an indirect effect.
`
`Direct effect in the sense that will the ground state atoms feel
`
`any kind of force due to the magnetic fields, the answer is still no, that
`
`they will not do that.
`
`Indirect effect in the sense that the magnetic field traps
`
`electrons and raises the electron density and thus leads to a higher
`
`7
`
`
`
`Trial No. IPR2014-00828
`Petitioner’s Response to Patent Owner’s Motion for Observation
`
`
`probability of the grouped state atoms being excited and
`
`transformed into excited state atoms or metastable atoms, that
`
`indirect effect is there in the presence of a plasma.
`
`Kortshagen Dep. at 22:17 – 23:24 (emphasis added) (Ex. 2006).
`
`Accordingly, the Board should dismiss Patent Owner’s observation as
`
`irrelevant to the instant proceeding.
`
`
`
`Secondly, Zond’s conclusion that “the magnetic field in Angelbeck does not
`
`effect [sic] the volume of ground state atoms and therefore, does not teach many of
`
`the claim limitations of the ‘779 patent that require generating a magnetic field
`
`proximate to a volume of ground state atoms” is wholly irrelevant in light of the
`
`grounds of unpatentability relied upon by Petitioner and instituted by the Board..
`
`The instituted grounds are not based upon Angelbeck alone to disclose
`
`substantially trapping electrons proximate to the ground state atoms, but rather
`
`upon the combined teachings of Iwamura in view of Angelbeck and Pinsley. See,
`
`e.g., IPR2014-00828 Petition for Inter Partes Review at 47-50 (Paper No. 2);
`
`IPR2014-00828 Institution Decision at 15-19 (Paper No. 11). Thus, Dr.
`
`Kortshagen’s testimony is consistent with the grounds instituted in this proceeding.
`
`Accordingly, Patent Owner’s observation is irrelevant to the instant proceeding.
`
`
`
`
`
`
`
`8
`
`
`
`Trial No. IPR2014-00828
`Petitioner’s Response to Patent Owner’s Motion for Observation
`
`
`Dated: May 22, 2015
`
`Respectfully Submitted,
`
`
`
`/s/ David M. Tennant
`David M. Tennant
`Lead Counsel for Petitioner
`GlobalFoundries
`Registration No. 48,362
`
`
`
`
`
`
`
`9
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`Pursuant to 37 C.F.R. § 42.6(e), this is to certify that I caused to be served a
`
`true and correct copy of the foregoing “PETITIONER’S REQUEST FOR ORAL
`
`ARGUMENT” as detailed below:
`
`Date of service May 22, 2015
`
`Manner of service Email: gonsalves@gonsalveslawfirm.com;
`bbarker@chsblaw.com; tarek.fahmi@ascendalaw.com;
`kurt@rauschenbach.com
`
`Documents served PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON CROSS-
`EXAMINATION OF PETITIONER’S REPLY WITNESS
`DR. UWE KORTSHAGEN
`
`Persons Served Dr. Gregory J. Gonsalves
`2216 Beacon Lane
`Falls Church, Virginia 22043
`
`Bruce Barker
`Chao Hadidi Stark & Barker LLP
`176 East Mail Street, Suite 6
`Westborough, MA 01581
`
`Tarek Fahmi
`333 W. San Carlos Street, Suite 200
`San Jose, CA 95110
`
`
`
`
`/s/ Anna Goodall
`Anna Goodall
`White & Case LLP
`3000 El Camino Real
`Five Palo Alto Square, 9th Floor
`Palo Alto, CA 94306
`Tel: (650) 213-0367
`Email: agoodall@whitecase.com
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