`
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________________
`
`GLOBALFOUNDRIES U.S., INC., GLOBALFOUNDRIES DRESDEN
`MODULE ONE LLC & CO. KG, GLOBALFOUNDRIES DRESDEN
`MODULE TWO LLC & CO. KG, and
`THE GILLETTE COMPANY,
`Petitioners,
`
`
`
`v.
`
`Zond, LLC.
`U.S. Patent No. 7,147,7591
`IPR Case No. IPR2014-01083
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`
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`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION FOR
`OBSERVATION ON CROSS-EXAMINATION OF
`PETITIONER’S REPLY WITNESS
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`1 Case No. IPR2014-00988 has been joined with this proceeding.
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`I.
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`II.
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`Trial No. IPR2014-01083
`Petitioner’s Response to Patent Owner’s Motion for Observation
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 1
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`RESPONSES TO OBSERVATIONS ON DR. OVERZET’S
`TESTIMONY .................................................................................................. 1
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`A.
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`B.
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`C.
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`D.
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`E.
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`F.
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`G.
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`H.
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`I.
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`Response to Observation 1 .................................................................... 1
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`Response to Observation 2 .................................................................... 3
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`Response to Observation 3 .................................................................... 4
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`Response to Observation 4 .................................................................... 5
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`Response to Observation 5 .................................................................... 6
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`Response to Observation 6 .................................................................... 9
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`Response to Observation 7 .................................................................. 10
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`Response to Observation 8 .................................................................. 11
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`Response to Observation 9 .................................................................. 13
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`Trial No. IPR2014-01083
`Petitioner’s Response to Patent Owner’s Motion for Observation
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`INTRODUCTION
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`I.
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`Petitioner submits this response to Patent Owner Zond’s Observations on
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`Cross-Examination of Dr. Overzet, Paper No. 29 (“Observation”). Patent Owner
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`presents nine observations on Dr. Overzet’s testimony. While Petitioner believes
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`that the testimony will be appropriately viewed and weighed by the Board, the
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`specific observations presented by Patent Owner are irrelevant and mischaracterize
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`the testimony of Dr. Overzet, as specified below, and therefore are not probative of
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`any material issue before the Board.
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`II. RESPONSES TO OBSERVATIONS ON DR. OVERZET’S
`TESTIMONY
`A. Response to Observation 1
`Patent Owner contends that Dr. Overzet’s testimony indicates that his field
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`of expertise is inadequate to support Petitioner’s positions with respect to “gas
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`laser references” such as Müller-Horsche. Observation at 2. Patent Owner
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`misdirects the proper inquiry. Dr. Overzet’s testimony demonstrates his expertise
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`in the relevant field of plasma generation.
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`The testimony cited by Patent Owner merely indicates that Dr. Overzet is
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`not an expert in all aspects of “gas laser design.” On the other hand, Dr. Overzet
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`testified that “I am an expert in the generation of plasma; furthermore all of the
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`articles that we've gone through with respect to the '759 patent involve the
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`generation of plasma.” Overzet Dep. at 109:14-18 (Ex. 2012). In other words, Dr.
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`Petitioner’s Response to Patent Owner’s Motion for Observation
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`Overzet is an expert in the relevant field for the patent at issue and he applies his
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`expert opinion when concluding that it would be obvious to substitute a well-
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`known UV radiation source – such as that disclosed in Müller-Horsche – for the
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`electrodes of Wang to perform Wang’s preionization step. See Overzet Dec. at ¶¶
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`104-105 (Ex. 1421).
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`Dr. Overzet testified that aspects of Müller-Horsche that do not relate to
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`preionization are irrelevant to his opinion regarding the combination of Müller-
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`Horsche’s UV source with Wang’s system:
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`A. In a pulsed -- in a gas laser, in a pulsed gas laser, Müller-
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`Horsche -- actually I believe this is also covered in my declaration. In
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`paragraph 106, page 63 where I write, "To be clear, I have referred to
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`Müller-Horsche with respect to preionization. Whether the main
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`electrode at Müller-Horsche (which is not used for preionization) has
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`advantages directed to erosion does not change the fact that it would
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`be obvious to use a UV source for preionization."
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`Overzet Dep. at 106:11-21. (Ex. 2012); Overzet Dec. at ¶106 (Ex. 1421). Dr.
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`Overzet relies on aspects of Müller-Horsche that are directly in his field of
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`expertise. As a result, it is irrelevant whether Dr. Overzet considers himself to be
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`an expert in “gas laser design.”
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`Petitioner’s Response to Patent Owner’s Motion for Observation
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`B. Response to Observation 2
`Patent Owner contends that Dr. Overzet’s testimony related to Kudryavtsev
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`establishes that he does not understand Kudryavtsev because “Dr. Overzet stated
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`that Kudryatsev did not disclose a gas laser even though Kudryavsev explicitly
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`does so.” Observation at 2. Patent Owner mischaracterizes Dr. Overzet’s
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`testimony, which demonstrates the opposite.
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`In fact, Dr. Overzet specifically testified that Kudryavtsev mentions gas
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`lasers, gas breakdown and laser sparks. Dr. Overzet further testified that
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`Kudryavtsev’s model can be used to study emission mechanisms in those devices.
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`Dr. Overzet never testified that Kudryavtsev fails to disclose gas lasers. Instead,
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`he testified that Kudryavtsev does not expressly disclose the mechanisms of
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`emission in those devices.
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`Q. Earlier you answered a question in the negative, and I'll read
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`you the question: "Is it your opinion that Kudryavtsev discloses
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`emission mechanisms in pulsed gas lasers, gas breakdown and laser
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`sparks." Do you recall answering that question?
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`A. I do.
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`Q. Can you explain your answer to that question, please?
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`Petitioner’s Response to Patent Owner’s Motion for Observation
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`A. Kudryavtsev explains that his model can be used for
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`studying emission mechanisms in those environments, but he does not
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`disclose the various mechanisms of emission, save at most one.
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`Overzet Dep. at 107:16 – 108:5 (Ex. 2012). As a result, Zond’s observation
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`mischaracterizes Dr. Overzet’s testimony and is irrelevant to the instituted grounds
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`for which Dr. Overzet has offered his expert opinion.
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`C. Response to Observation 3
`Observation 3 merely repeats Observation 1 and reiterates Patent Owner’s
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`contention the Dr. Overzet’s testimony cannot support Petitioner’s position with
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`respect to Müller-Horsche.
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`Again, Dr. Overzet explained that Müller-Horsche discloses a gas laser and
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`clarified that his opinions rely on the plasma generation in Müller-Horsche, which
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`“is very similar to Wang in that it teaches a two-step ionization process, and those
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`two stages are determined by two sets -- two sets of electrodes.” Overzet Dep. at
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`103:25 – 104:4 (Ex. 2012); Overzet Dec. at ¶¶ 104-105 (Ex. 1421). Thus, Dr.
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`Overzet relies on aspects of Müller-Horsche that are directly in his field of
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`expertise – plasma generation. As a result, the fact that Müller-Horsche discloses
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`plasma generation in the context of a gas laser is irrelevant to the instant
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`proceedings.
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`D. Response to Observation 4
`Patent Owner claims that Dr. Overzet testified that Fig. 5 of Kudryavtsev
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`only applies to devices having a radius which precludes predictable results when
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`combined with Wang whose system does not have a radius. Observation at 4. Dr.
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`Overzet’s testimony demonstrates that Patent Owner’s argument based on an
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`isolated quotation is simply wrong.
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` Right after the testimony that Patent Owner quotes in its observation, Dr.
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`Overzet testified that Fig. 5 of Kudryavtsev applies to devices having a
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`“normalized” radius. Overzet Dep. at 29:7-11 (Ex. 2012). Dr. Overzet then
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`further explained that Kudryavtsev’s model has wide applicability to systems other
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`than Kudryavtsev’s particular cylindrical apparatus, including those that do not
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`have a radius:
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`A. Since Kudryavtsev has a model that is widely applicable, he
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`could, and one of ordinary skill in the art -- let me rephrase that. He
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`could choose to apply his model in various volumes. His model would
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`not simply be limited to things having a simple radius, cylindrical or
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`spherical.
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`Q. But my question was with respect to Figure 5.
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`A. Figure 5 discloses one kind of an environment that has a
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`radius.
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`Q. So Figure 5 would be limited to only those types of shapes
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`that have a radius; is that correct?
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`MR. TENNANT: Objection, form. Asked and answered.
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`A. My understanding is that Figure 5 would be most readily
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`applied to that kind of a system, but still could have application
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`outside.
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`Overzet Dep. at 29:19 – 30:15 (Ex. 2012) (emphasis added).
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`A. Figure 5 is a single example of utilizing Kudryavtsev and
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`Skrebov's widely applicable model to understand a single
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`circumstance and set of parameters.
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`Overzet Dep. at 37:7 – 10 (Ex. 2012) (emphasis added). When Dr.
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`Overzet’s testimony is considered in its full context, Patent Owner’s
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`observation is incorrect and ultimately irrelevant to Dr. Overzet’s opinion –
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`both expressed in his declaration and confirmed in his deposition – that a
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`person of ordinary skill in the art would be motivated to combine
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`Kudryavtsev’s teaching with Wang’s system.
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`E. Response to Observation 5
`Observation 5 cites to selected portions of Dr. Overzet’s testimony relating
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`to differences between Wang and Kudryavtsev. Based on that testimony, Patent
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`Owner contends that “there is no objective evidence tending to establish that the
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`teachings of the very different devices of Wang and Kudryavtsev would have led
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`to predictable results.” Observation at 5. Patent Owner’s argument is misplaced
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`because it mischaracterizes Dr. Overzet’s testimony about combining Wang and
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`Kudryavtsev and is irrelevant to the grounds instituted in this proceeding.
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`First, the testimony cited by Patent Owner refers only to isolated questions
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`regarding the physical apparatus used by Kudryavtsev and Wang and ignores the
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`fact that Dr. Overzet’s answers were not in the context of combining the two
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`references. In fact, during his deposition, Dr. Overzet explained in detail how his
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`declaration shows that a person of ordinary skill in the art would be motivated to
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`apply the teachings of Kudryavtsev to the system of Wang:
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`In short, Kudryavtsev is useful for describing how a voltage
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`pulse such as Wang's voltage pulse operates and how to adjust
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`voltage amplitude and duration in order to increase the ionization rate
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`so that a rapid increase in electron density and the formation of a
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`strongly-ionized plasma occurs for the benefit of improved sputtering
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`and manufacturing processing capabilities.
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`Beginning, again, in paragraph 57, bottom of page 29:
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`"Moreover, a person of ordinary skill in the art would understand that
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`Kudryavtsev intended that its derived model can be applied over a
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`range of pressures as evidenced by Figure 3 of Kudryavtsev, which
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`Petitioner’s Response to Patent Owner’s Motion for Observation
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`accurately models the duration of the slow growth stage tau sub s for
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`argon discharges."
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`Overzet Dep. at 39:4-21 (Ex. 2012). Patent Owner’s observation attempts to twist
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`Dr. Overzet’s testimony regarding the physical apparatuses of Wang and
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`Kudryavtsev by unilaterally concluding that a person of ordinary skill in the art
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`would not combine the references despite the fact that Dr. Overzet never testified
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`as such.
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`Secondly, Patent Owner’s reliance on the physical differences between
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`Wang and Kudryavtsev is irrelevant as the Board considered this argument when
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`Patent Owner initially made it in its Preliminary Response and instituted inter
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`partes review because “a determination of obviousness based on teachings from
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`multiple references does not require an actual, physical substitution of elements.”
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`IPR2014-01083 Institution Decision at 21 (Paper No. 9); see also IPR2014-01083
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`Patent Owner Preliminary Response at 39-44 (Paper No. 7). Because of this, the
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`instant proceeding is instituted on the ground that a person of ordinary skill in the
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`art would combine the teaching of Kudryavtsev to Wang irrespective of any
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`physical differences between the apparatuses disclosed in the references. Thus,
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`Patent Owner’s observation regarding physical differences between the
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`apparatuses of Wang and Kudryavtsev are irrelevant to the instant proceeding.
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`F. Response to Observation 6
`The Patent Owner contends that Dr. Overzet’s testimony demonstrates that
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`the requirement for a plasma density to be “substantially uniform” in claims 9, 26
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`and 31 of the ’759 Patent would not have been obvious in view of Kudryavtsev.
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`Observation at 8. Patent Owner incorrectly reads the claims of the ’759 Patent and
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`attempts to shoehorn portions of Dr. Overzet’s testimony in order to support its
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`erroneous construction.
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`The testimony cited by Patent Owner merely indicates that the plasma
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`density in Figure 5 of Kudryavtsev is larger in the center than at some value away
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`from the center. Observation at 8-11. Patent Owner fails to consider the claim
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`language calling for the plasma to be “substantially uniform.” ’759 Patent at 22:1-
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`3, 23:13-17, 23:30-32 (Ex. 1401) (emphasis added). Indeed, right after the
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`testimony cited by Patent Owner, Dr. Overzet testified that Kudryavtsev meets the
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`“substantially uniform” limitation:
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`Q. Figure 5 shows that the plasma density is not uniform;
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`correct?
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`MR. TENNANT: Objection, form, relevance.
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`A. One of ordinary skill in the art would always understand that
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`plasmas, when incoming close to any kind of a surface, will decrease
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`in plasma density. So the uniformity would never be considered from
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`Petitioner’s Response to Patent Owner’s Motion for Observation
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`0 to 1 in that fashion, as the question has examined it. Therefore, one
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`of ordinary skill in the art would understand this plasma to be
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`relatively uniform.
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`Overzet Dep. at 35:23 – 36:7 (Ex. 2012). When Dr. Overzet’s testimony is
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`considered in its full context, Patent Owner’s observation is incorrect and
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`ultimately irrelevant to Dr. Overzet’s opinion – both expressed in his declaration
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`and confirmed in his deposition – that a person of ordinary skill in the art would
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`understand that Kudryavtsev discloses a substantially uniform plasma.
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`G. Response to Observation 7
`Patent Owner contends that Dr. Overzet’s testimony that Figures 4 and 6 of
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`Wang disclose idealized power pulses undermines Petitioner’s position that Wang
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`teaches choosing an amplitude and rise time of a voltage pulse to increase an
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`excitation rate as claimed in the ‘759 patent. This is an incorrect characterization
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`of Dr. Overzet’s opinion.
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`Petitioner’s unfounded conclusion is based solely on Dr. Overzet’s
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`confirmation that Figures 4 and 6 of Wang disclose idealized pulses. Dr. Overzet’s
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`opinion – expressed in his declaration and confirmed at his deposition – recognizes
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`that the pulses are idealized and relies on various passages from Wang when
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`concluding that “Wang describes controlling both the magnitude and rise time of
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`the voltage pulse at the power supply such that electrical pulse is sufficient to
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`increase the density of the weakly ionized plasma to generate strongly-ionized
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`plasma”2. Overzet Dec. at ¶ 66 (Ex. 1421). After confirming with Dr. Overzet that
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`Figures 4 and 6 of Wang are idealized, Patent Owner consciously chose not to
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`question Dr. Overzet about his opinion regarding Wang’s disclosure of the claimed
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`pulse amplitude and rise time. As a result, Zond’s observation does nothing more
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`than repeat a small portion of Dr. Overzet’s opinion and tack on a baseless
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`conclusion that Wang does not disclose the claim limitation. Unfounded
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`conclusions provide no insight regarding the prior art’s disclosure and are
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`irrelevant to these proceedings.
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`H. Response to Observation 8
`Patent Owner contends that Dr. Overzet’s testimony shows that Wang’s
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`Figure 6 does not teach applying a voltage pulse to ionize excited atoms without
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`forming an arc discharge. Observation at 12. Patent Owner’s contention is
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`premised on an incorrect reading of Dr. Overzet’s deposition testimony which
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`clearly indicates that Wang’s Figure 6 reduces the particulates produced by arcing
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`2 See Wang at 9:30-40 (calling for an adjustable DC power supply delivering a
`negative voltage and a pulsed power supply delivering pulses of negative voltage);
`7:19-22 (calling for a background power level chosen to exceed the minimum
`power necessary to support a plasma and a peak power at least 100 times the
`background power); 7:65-8:1 (calling for the time constant of the high-pass filter to
`fall between the pulse width and the pulse repetition period of the negative voltage
`pulses) and Fig. 7 (Ex. 1405)
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`Petitioner’s Response to Patent Owner’s Motion for Observation
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`during ignition and that there is no arcing during subsequent applications of high
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`power pulses.
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` In its observation, Patent Owner points to an excerpt from Dr. Overzet’s
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`testimony as support for its conclusion that Figure 6 of Wang only discloses that
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`particulates from arcing are reduced and that Figure 6 does not teach applying a
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`pulse “without forming an arc discharge.” Observation at 12. However, Patent
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`Owner wholly misreads the cited testimony. When asked whether Wang’s Figure
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`6 reduces particulates produced by arcing, Dr. Overzet confirmed that it does and
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`further stated that the chamber impedance changes relatively little between the two
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`power levels, which is indicative that no arc is occurring:3
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`Q. My question is whether Wang states that particulates
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`produced by arcing are much reduced in the embodiment of Figure 6.
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`MR. TENNANT: Objection to form.
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`A. The statement -- direct statement in Wang's column 7 is that
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`the initial plasma ignition needs to be performed only once and at
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`much lower power levels so that particulates produced by arcing are
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`3 Dr. Overzet testified that “Further, the chamber impedance changes relatively
`little between the two power levels P sub v [sic] and P sub p since a plasma always
`exists in the chamber.” Overzet Dep. at 102:19-22 (Ex. 2012). This relatively
`small change in impedance between PB and PP indicates that there is no arcing
`because an arc would cause the chamber impedance to vary drastically. See
`Overzet Declaration at ¶ 75 (Ex. 1421).
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`much reduced. Further, the chamber impedence [sic] changes
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`relatively little between the two power levels P sub v and P sub p
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`since a plasma always exists in the chamber.
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`Q. Does the passage that you just read from, Wang, pertain to
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`the embodiments of Figure 6?
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`A. That is my -- that is my understanding that it pertains to
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`Figure 6.
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`Overzet Dep. at p. 102, l. 11 – p. 103, l. 3 (Exhibit 2012) (emphasis added).
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`Thus, Dr. Overzet’s testimony supports his opinion that Wang’s Figure 6
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`discloses application of a pulse “without forming an arc discharge.”
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`Response to Observation 9
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`I.
`Observation 9 is repetitious of Observations 1, 3, and 5. Patent Owner
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`contends that Dr. Overzet’s testimony demonstrates that because the devices of
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`Müller-Horsche and Wang are different, there is no objective evidence tending to
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`establish that their teachings would lead to predictable results. Observation at 13.
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`Patent Owner’s argument is misplaced because it mischaracterizes Dr. Overzet’s
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`opinion about combining Wang and Müller-Horsche and is irrelevant to the
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`grounds instituted in this proceeding.
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`Consistent with his expertise in the field of plasma generation, Dr. Overzet
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`testified that Müller-Horsche and Wang are very similar regarding their process for
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`generating a plasma. Overzet Dec. at ¶ 105 (Ex. 1421). It is Dr. Overzet’s opinion
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`that, since Wang is also directed to preionization to avoid arcing, it would be
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`obvious to use a well-known UV radiation source such as taught by Müller-
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`Horsche to preionize the gas of Wang. Overzet Dec. at ¶ 105 (Ex. 1421). Similar
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`to Observation 5, Patent Owner’s reliance on the physical differences between
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`Wang and Müller-Horsche is irrelevant as the Board has already rejected such an
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`argument when instituting inter partes review. IPR2014-01083 Institution
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`Decision at 21 (Paper No. 9). Because of this, the instant proceeding is instituted
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`on the ground that a person of ordinary skill in the art would combine the teaching
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`of Müller-Horsche to Wang irrespective of any physical differences between the
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`overall apparatuses disclosed in the references. Thus, Patent Owner’s observation
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`regarding physical differences between the apparatuses of Wang and Müller-
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`Horsche are irrelevant to the instant proceeding.
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`Respectfully Submitted,
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`/s/ David. M. Tennant
`David M. Tennant
`Lead Counsel for Petitioner
`GlobalFoundries
`Registration No. 48,362
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`Dated: May 26, 2015
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), this is to certify that I caused to be served a
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`true and correct copy of the foregoing “PETITIONER’S RESPONSE TO
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`PATENT OWNER’S MOTION FOR OBSERVATION ON CROSS-
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`EXAMINATION OF PETITIONER’S REPLY WITNESS” as detailed below:
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`Date of service May 26, 2015
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`Manner of service Email: bbarker@chsblaw.com;
`gonsalves@gonsalveslawfirm.com; kurt@rauschenbach.com
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`Documents served PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON CROSS-
`EXAMINATION OF PETITIONER’S REPLY WITNESS
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`Persons Served Bruce Barker
`Chao Hadidi Stark & Barker LLP
`176 East Mail Street, Suite 6
`Westborough, MA 01581
`
`Dr. Gregory J. Gonsalves
`2216 Beacon Lane
`Falls Church, Virginia 22043
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`
`
`/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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