UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`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,
`Patent Owner
`________________
`
`IPR2014-011001
`Patent 7,604,716 B2
`
`________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`1 Case IPR2014-00973 has been joined with the instant proceeding.
`
`
`
`
`________________
`
`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,
`Patent Owner
`________________
`
`IPR2014-011001
`Patent 7,604,716 B2
`
`________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`1 Case IPR2014-00973 has been joined with the instant proceeding.
`
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`
`IPR2014-01100
` Patent No. 7,604,716
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ............................................................................................... 1
`
`II. CLAIM CONSTRUCTION ................................................................................ 1
`
`III. RESPONSE TO ARGUMENTS ......................................................................... 2
`
`A. Wang teaches transforming weakly-ionized plasma to a strongly-
`ionized plasma “without developing an electrical breakdown condition
`in the chamber” (Claim 1). ........................................................................... 2
`
`B. A person of ordinary skill in the art would have found it obvious to
`combine Wang and Lantsman (Claims 12 and 13). ..................................... 6
`
`IV. CONCLUSION .................................................................................................. 10
`
`
`
`
`
`i
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`Petitioner’s Reply to Patent Owner’s Response
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`IPR2014-01100
` Patent No. 7,604,716
`
`TABLE OF AUTHORITIES
`
`CASES
`
`In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) ................................................ 6
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) .......................................... 7
`
`REGULATIONS
`
`37 C.F.R. § 42.23 ....................................................................................................... 1
`
`
`
`
`
`ii
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`Petitioner’s Reply to Patent Owner’s Response
`
`IPR2014-01100
` Patent No. 7,604,716
`
`PETITIONER’S EXHIBIT LIST
`
`April 30, 2015
`
`Exhibit Description
`1101 U.S. Patent No. 7,604,716 (“’716 Patent”)
`
`1102 Kortshagen Declaration (“Kortshagen Decl.”)
`
`1103 D.V. Mozgrin, et al, High-Current Low-Pressure Quasi-Stationary
`Discharge in a Magnetic Field: Experimental Research, Plasma Physics
`Reports, Vol. 21, No. 5, pp. 400-409, 1995 (“Mozgrin”)
`
`1104 U.S. Pat. No. 6,413,382 (“Wang”)
`
`1105 US 6,190,512 (“Lantsman”)
`
`1106 U.S. Pat. No. 6,853,142 (“ ‘142 Patent”)
`
`1107
`
`1108
`
`1109
`
`1110
`
`File History for U.S. Pat. No. 7,604,716, Office Action dated March 27,
`2008 (“03/27/08 Office Action”)
`
`File History for U.S. Pat. No. 7,604,716, Response dated September 24,
`2008 (“09/24/08 Response”)
`
`File History for U.S. Pat. No. 7,604,716, Notice of Allowance dated
`June 11, 2009 (“06/11/09 Allowance”)
`
`European Patent Application 1560943, Response of April 21, 2008
`(“04/21/08 Response in EP 1560943”)
`
`1111 U.S. Patent No. 7,147,759 (“’759 Patent”)
`
`1112
`
`1113
`
`1114
`
`File History for U.S. Pat. No. 7,147,759, Response dated May 2, 2006
`(“05/02/06 Response of ‘759 Patent File History”)
`
`Plasma Etching: An Introduction, by Manos and Flamm, Academic
`Press (1989) (“Manos”)
`
`The Materials Science of Thin Films, by Ohring M., Academic Press
`(1992) (“Ohring”)
`
`iii
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`Petitioner’s Reply to Patent Owner’s Response
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`IPR2014-01100
` Patent No. 7,604,716
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`1115
`
`Thin-Film Deposition: Principles & Practice by Smith, D.L., McGraw
`Hill (1995) (“Smith”)
`
`1116 Claim Chart Based on Mozgrin as used in 1:13-cv-11570-RGS (“Claim
`Chart based on Mozgrin and Lantsman”)
`
`1117 Claim Chart Based on Wang as used in 1:13-cv-11570-RGS (“Claim
`Chart based on Wang and Lantsman”)
`
`1118
`
`List of Related Litigations
`
`1119 Affidavit of Brett C. Rismiller in Support of Petitioner’s Motion for Pro
`Hac Vice Admission
`
`1120
`
`1121
`
`1122
`
`1123
`
`1124
`
`
`
`Supplemental Kortshagen Declaration (“Supp. Kortshagen Decl.”)
`Deposition Transcript of Larry D. Hartsough Ph.D. for U.S. Patent No.
`7,604,716 (IPRs 2014-00807, 2014-00808, 2014-01099, 2014-01100)
`dated April 8, 2015 (“’716 Dep. Tr.”)
`Deposition Transcript of Larry D. Hartsough Ph.D. for U.S. Patent No.
`6,853,142 (IPRs 2014-00818, 2014-00819, 2014-00821, 2014-00827,
`2014-01098) dated February 26, 2015 (“’142 Dep. Tr.”)
`Deposition Transcript of Larry D. Hartsough Ph.D. for U.S. Patent No.
`8,125,155 (IPRs 2014-00477, 2014-00479) dated February 12, 2015
`(“’155 Dep. Tr.”)
`Deposition Transcript of Larry D. Hartsough Ph.D. for U.S. Patent No.
`7,808,184 (IPRs 2014-00803, 2014-00799) dated February 11, 2015
`(“’184 Dep. Tr.”)
`
`
`iv
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`Petitioner’s Reply to Patent Owner’s Response
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`IPR2014-01100
` Patent No. 7,604,716
`
`I.
`
`INTRODUCTION
`
`Petitioner submits this reply under 37 C.F.R. § 42.23 in response to Patent
`
`Owner Zond’s Response to Petition filed on January 12, 2015 (“Response,” Paper
`
`24). Zond’s arguments for patentability improperly import nonexistent limitations
`
`from the specification into the claims, mischaracterize the cited prior art, and rely
`
`on trivial limitations that are part of the admitted prior art. The evidence and
`
`arguments in this reply confirm that claims 12 and 13 of U.S. Patent No. 7,604,716
`
`(“the ’716 Patent”) are obvious in light of the prior art of record and thus should be
`
`canceled.
`
`II. CLAIM CONSTRUCTION
`The Board construed the term “weakly-ionized plasma” as “a plasma with a
`
`relatively low peak density of ions,” and the term “strongly-ionized plasma” as “a
`
`plasma with a relatively high peak density of ions.” Institution of Inter Partes
`
`Review at 8 (Paper No. 9). These constructions do not specify a plasma density for
`
`either claim term. The Board also construed “weakly-ionized plasma that
`
`substantially eliminates the probability of developing an electrical breakdown
`
`condition” as “weakly-ionized plasma that substantially eliminates the probability
`
`of developing a breakdown condition when an electrical pulse is applied across the
`
`plasma to thereby generate a strongly-ionized plasma.” Id. at 10. Zond did not
`
`explicitly address the Board’s constructions, however Zond’s expert, Dr.
`
`1
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`Petitioner’s Reply to Patent Owner’s Response
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`IPR2014-01100
` Patent No. 7,604,716
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`Hartsough, does not dispute the constructions. Hartsough Decl. at ¶21-23 (Ex.
`
`2004). Petitioner also agrees with these constructions and applies them in the
`
`analysis below.
`
`III. RESPONSE TO ARGUMENTS
`A. Wang teaches transforming weakly-ionized plasma to a strongly-
`ionized plasma “without developing an electrical breakdown condition
`in the chamber” (Claim 1).
`
`Zond does not dispute that Wang teaches reducing the probability and
`
`amount of arcing, but argues it “does not solve the problem of arcing during
`
`plasma ignition.” Response at 26 (Paper 24). Zond’s argument is premised on a
`
`fundamental misreading of the claims. Claim 1 recites the application of an
`
`electrical pulse to the weakly-ionized plasma, “thereby generating a strongly-
`
`ionized plasma without developing an electrical breakdown condition in the
`
`chamber.” ’716 Patent at 20:21-27 (emphasis added) (Ex. 1101). Thus, the claim
`
`limitation “without developing an electrical breakdown condition in the chamber”
`
`refers to the generation of a strongly-ionized plasma from a weakly-ionized
`
`plasma, not the creation of a weakly-ionized plasma from ground state feed gas
`
`(i.e., plasma ignition). See id. As such, Wang’s discussion of arcing during
`
`plasma ignition is irrelevant to whether arcing occurs when Wang energizes its
`
`weakly-ionized plasma into a strongly-ionized plasma.
`
`Wang clearly discloses the claim limitation of “without developing an
`
`2
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`Petitioner’s Reply to Patent Owner’s Response
`
`IPR2014-01100
` Patent No. 7,604,716
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`electrical breakdown condition in the chamber” when generating a strongly-ionized
`
`plasma. Supp. Kortshagen Decl. at ¶¶ 75-80 (Ex. 1120). Wang discloses an
`
`embodiment that initially applies a background power PB for igniting the plasma
`
`and maintaining a weakly-ionized plasma throughout the process, then applies
`
`pulses of high-power PP to the weakly-ionized plasma for generating a strongly-
`
`ionized plasma. Wang at 7:47-51 (Ex. 1104); Supp. Kortshagen Decl. at ¶ 76 (Ex.
`
`1120). For this process, Wang discloses that “the chamber impedance changes
`
`relatively little between the two power levels PB, PP since a plasma always exist in
`
`the chamber.” Wang at 7:49-51 (Ex. 1104). From the disclosure that “impedance
`
`changes little,” a person of ordinary skill would understand that Wang’s strongly-
`
`ionized plasma is generated without forming an electrical breakdown condition
`
`since any arcing would cause a drastic change in chamber impedance as the plasma
`
`current short circuits. Supp. Kortshagen Decl. at ¶76 (Ex. 1120). Thus, Wang
`
`discloses generating a strongly-ionized plasma “without developing an electrical
`
`breakdown condition in the chamber” as recited by Claim 1.
`
`Zond appears to argue that Wang does not disclose the “without developing
`
`an electrical breakdown condition …” limitation because it does not disclose a
`
`system that can guarantee elimination of all possibilities of arcing. Response at p.
`
`26 (Paper No. 24). This argument is flawed for several reasons. First, the plain
`
`language of the claims does not require elimination of all probabilities of arcing.
`
`3
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`Petitioner’s Reply to Patent Owner’s Response
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`IPR2014-01100
` Patent No. 7,604,716
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`Claim 1 requires application of “an electrical pulse … without developing a
`
`breakdown condition.” ’716 Patent at 20:21-27; 22:47-50 (emphasis added) (Ex.
`
`1101). This claim does not require a system wherein every applied pulse does not
`
`arc.
`
`Second, Claim 1 cannot be read to require the elimination of all arcing under
`
`all situations because no system—including the system disclosed in the ’716
`
`patent—can ever completely eliminate arcing. Supp. Kortshagen Decl. at ¶ 77 (Ex.
`
`1120). This impossibility stems from the unpredictable nature of the electron
`
`density of a plasma. Id. (Ex. 1120). There is always some chance that a local
`
`electron density fluctuation can become sufficiently high to create a short circuit
`
`and result in an arc discharge. Id. (Ex. 1120). Thus system designers must
`
`attempt to reduce the likelihood of arcing. Id. at ¶78 (Ex. 1120). Zond’s
`
`declarant Dr. Hartsough agrees, admitting that he has never seen a system where
`
`the probability of forming an arc was completely eliminated, that “you can’t say
`
`that an arc would never occur in a system,” and that interpreting a claim as
`
`requiring the elimination of all probabilities of arcing would require an
`
`impossibility and thus “eliminate the validity … of that claim.” ’155 Dep. Tr. at
`
`188:14-189:3, 195:8-15 (Ex. 1123); see also, ’184 Dep. Tr. at 75:24-80:2 (Q. In
`
`your experience working with magnetron sputtering systems and the systems that
`
`you’ve worked with, have those systems all had some likelihood of arcing? A.
`
`4
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`Petitioner’s Reply to Patent Owner’s Response
`
`IPR2014-01100
` Patent No. 7,604,716
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`Some likelihood, yes.”) (Ex. 1124).
`
`Knowing that the probability of arcing can never be eliminated, a person of
`
`ordinary skill in the art would not read Claim 1 as requiring a system where there
`
`is absolutely no chance that an arc can occur when creating strongly-ionized
`
`plasma. Supp. Kortshagen Decl. at ¶ 79 (Ex. 1120). Rather, the broadest
`
`reasonable interpretation of the claim requires a system that would allow one to
`
`supply an electric pulse across weakly ionized plasma to create a strongly-ionized
`
`plasma without forming an arc. A person of ordinary skill in the art would
`
`understand that Wang clearly discloses such an apparatus—by maintaining a
`
`weakly-ionized plasma with background power PB and generating a strongly-
`
`ionized plasma through applying pulsed peak power PP, all while “the chamber
`
`impedance changes relatively little between the two power levels PB, PP.” Wang at
`
`7:49-51 (Ex. 1104); Supp. Kortshagen Decl. at ¶ 80 (Ex. 1120). Thus, Wang
`
`discloses the “without developing an electrical breakdown condition in the
`
`chamber” of Claims 1 and 33. Supp. Kortshagen Decl. at ¶ 80 (Ex. 1120).
`
`This conclusion is not changed by the fact that Wang refers to the energy
`
`supplied to the plasma in terms of power, not voltage. In its response, Zond
`
`attacks Wang’s power supply for controlling the power setpoint in place of voltage,
`
`concluding that Wang does not control the voltage rise time and that the voltage
`
`can be driven extremely high when the current is near zero. Response at p. 25
`
`5
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`Petitioner’s Reply to Patent Owner’s Response
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`IPR2014-01100
` Patent No. 7,604,716
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`(Paper No. 24). These arguments are inapplicable to Claim 1 is the claim requires
`
`application of an “electrical pulse,” not a voltage pulse as Zond seems to imply.
`
`Zond’s expert, Dr. Hartsough, admits that a power pulse is a form of an electrical
`
`pulse. ’142 Dep. Tr. at 43:11-15 (“Q. The claimed electrical pulse can be a
`
`voltage pulse; correct? A. Yes. Q. It can be a power pulse; correct? A. Yes.”)
`
`(Ex. 1122). Moreover, Zond contends the voltage will spike “when the current is
`
`near zero (e.g., before plasma ignition or when the plasma density is low).”
`
`Response at p. 25 (Paper 24). However, as stated above, Claims 1 claims an
`
`electrical pulse that is applied after the weakly-ionize plasma as formed (e.g.
`
`after ignition). Regarding the alleged near-zero current when the plasma density is
`
`low, Wang discloses that there is always appreciable current in its weakly-ionized
`
`plasma as “the chamber impedance changes relatively little” when the high power
`
`pulse is applied. Supp. Kortshagen Decl. at ¶ 35 (Ex. 1120).
`
`B. A person of ordinary skill in the art would have found it obvious
`to combine Wang and Lantsman (Claims 12 and 13).
`
`Zond does not dispute that the combination of Wang and Lantsman discloses
`
`the additional limitations recited by Claims 12 and 13. Response at 27-29 (Paper
`
`No. 24). For these claims, Zond does not identify any limitation missing from the
`
`prior art, but argues only that a person of ordinary skill in the art would not have
`
`found it obvious to combine the cited prior art. Zond’s argument is based on an
`
`6
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`Petitioner’s Reply to Patent Owner’s Response
`
`IPR2014-01100
` Patent No. 7,604,716
`
`erroneous application of the legal standard for obviousness and an incorrect
`
`understanding of the prior art. For reasons explained below, such a person of
`
`ordinary skill in the art would have been motivated to combine Lantsman with
`
`Wang.
`
`Zond’s arguments are based on nothing more than alleged differences
`
`between the physical systems of Wang and Lantsman. Id. The law is clear that
`
`physical substitution is an improper test for determining obviousness. See, e.g., In
`
`re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“It is well-established that a
`
`determination of obviousness based on teachings from multiple references does not
`
`require an actual, physical substitution of elements.”); KSR Int’l Co. v. Teleflex
`
`Inc., 550 U.S. 398, 420 (2007) (“a person of ordinary skill will be able to fit the
`
`teachings of multiple patents together like pieces of a puzzle”). And Zond’s
`
`declarant, Dr. Hartsough, conceded that a person of ordinary skill in the art would
`
`have recognized how physical differences (such as pressure, chamber geometry,
`
`gap dimensions, magnetic field) would affect a system and understood how to
`
`adjust for such differences. ’142 Dep. Tr. at 75:24-80:2 (Ex. 1122). A person of
`
`ordinary skill in the art would have been motivated to combine the teachings of
`
`Wang and Lantsman because it is merely a predictable use of prior art elements
`
`according to their established functions yielding predictable results. Petition for
`
`Inter Partes Review at 44 (Paper No. 1).
`
`7
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`Petitioner’s Reply to Patent Owner’s Response
`
`IPR2014-01100
` Patent No. 7,604,716
`
`As described in the original petition, there are multiple reasons to combine
`
`Lantsman and Wang. Petition for Inter Partes Review at 40-44 (“Petition,” Paper
`
`No. 2); Kortshagen Decl. at ¶¶ 107-112 (Ex. 1102). First, Wang and Lantsman are
`
`very similar. As Zond’s declarant Dr. Hartsough admitted, both references
`
`describe plasma sputtering systems, both teach the use of two power supplies (one
`
`at lower power to ignite the plasma and a second to increase plasma density during
`
`deposition), both are concerned with reducing arcing, and both use a feed gas.
`
`’716 Dep. Tr. at 190:3-191:20, 193:17-194:23, 195:23-197:7 (Ex. 1121); see also,
`
`Supp. Kortshagen Decl. at ¶ 57 (Ex. 1120). And both references are in the same
`
`field of art as the ’716 Patent as described by Zond’s declarant. Hartsough Decl. at
`
`¶ 20 (describing field of relevant experience for one of skill in the art for the ’716
`
`Patent as “development of plasma-based processing equipment”) (Ex. 2004).
`
`Second, it would be obvious to combine Lantsman’s teaching of a
`
`continuous feed gas with Wang’s system, which also uses a feed gas. As Zond’s
`
`declarant Dr. Hartsough has admitted, Lantsman teaches the use of continuous feed
`
`gas. ’142 Dep. Tr. at 71:22-25 (Ex. 1122). Lantsman also explains that its
`
`teachings can be applied to any plasma process, including plasma sputtering.
`
`Lantsman at 6:14-17 (Ex. 1105). Thus, because Wang also uses a feed gas, it
`
`would be obvious to apply the feed gas method of Lantsman to Wang’s sputtering
`
`process to achieve the result of improved sputtering. Kortshagen Decl. at ¶135
`
`8
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`Petitioner’s Reply to Patent Owner’s Response
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`IPR2014-01100
` Patent No. 7,604,716
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`(Ex. 1102); Supp. Kortshagen Decl. at ¶ 59 (Ex. 1120).
`
`Zond points to two alleged differences between Lantsman and Wang: (1)
`
`Lantsman uses a DC power supply while Wang uses a pulsed DC power supply for
`
`generating an electrical pulse, and (2) Lantsman purportedly lacks a strongly-
`
`ionized plasma. Response at pp. 27-28 (Paper No. 24). But Zond’s declarant
`
`admitted during this deposition that the second difference is not true because
`
`Lantsman discloses generating a plasma that qualifies as a strongly-ionized plasma
`
`under the Board’s claim construction. ’142 Dep. Tr. at 66:20-67:11, 67:24-68:12,
`
`71:9-21 (Ex. 1122). And the use of different power supplies would not prevent
`
`one of ordinary skill in the art from applying the teachings of Lantsman to Wang
`
`because Lantsman expressly teaches that “the inventive techniques described can
`
`be applied to any plasma process, including without limitation to DC (magnetron
`
`or non-magnetron) sputtering, RF sputtering, and sputter etching.” Lantsman at
`
`6:14-17 (emphasis added) (Ex. 1105); Supp. Kortshagen Decl. at ¶ 57 (Ex. 1120).
`
`Finally, Zond’s argument that the combination of Wang and Lantsman
`
`“would still suffer from arcing upon application of power pulse, as taught by
`
`Wang” is likewise without merit as wholesale elimination of arcing is not required
`
`by Claim 1, from which Claims 12 and 13 ultimately depend. Response at pp. 28-
`
`29 (Paper No. 24). As discussed above in section III(A), a person of ordinary skill
`
`in the art reading Claim 1 would understand it to claim a system that is capable of
`
`9
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`Petitioner’s Reply to Patent Owner’s Response
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`IPR2014-01100
` Patent No. 7,604,716
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`creating a strongly-ionized plasma from weakly-ionized plasma without an
`
`occurrence of arcing. Supp. Kortshagen Decl. at ¶ 78 (Ex. 1120). Likewise,
`
`Wang’s disclosure that the chamber impedance has little variance between
`
`application of its background power PB and high power PP teaches a person of
`
`ordinary skill in the art that Wang’s strongly-ionized plasma can be generated
`
`without an arc since an arc would cause the chamber impedance to vary drastically.
`
`Wang at 7:49-51 (Ex. 1104); Supp. Kortshagen Decl. at ¶ 79 (Ex. 1120). Zond’s
`
`argument for patentability of Claims 12 and 13 is therefore without merit.
`
`Accordingly, Claims 12 and 13 are obvious in view of Wang, and Lantsman.
`
`IV. CONCLUSION
`For the reasons set forth in the Petition and above, the challenged claims of the
`
`’716 Patent are unpatentable and should be canceled.
`
`
`
`
`
`Respectfully submitted,
`
`
`
` /s/ David M. Tennant
`David M. Tennant
`Registration No. 48,362
`Lead Counsel for Petitioner
`GlobalFoundries
`
`10
`
`
`
`
`
`Dated: April 30, 2015
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies, in accordance with 37 C.F.R. § 42.105, that
`
`service was made on the Patent Owner as detailed below.
`
`Date of service April 30, 2015
`
`Manner of service Electronic Mail
`
`Documents served Petitioner’s Reply to Patent Owner’s Response;
`
`Exhibits 1120 - 1124; and
`
`Petitioner’s Exhibit List of April 16, 2015
`
`
`
`Dr. Gregory Gonsalves
`2216 Beacon Lane
`Falls Church, Virginia 22043
`
`Tarek Fahmi
`333 W. San Carlos Street, Suite 200
`San Jose, CA 95110
`
`
`/s/ Anna Goodall
`
`
`
`Persons served
`
`
`
`
`
`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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