By: Christopher Frerking (chris@ntknet.com)
`
`Reg. No. 42,557
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`LAM RESEARCH CORP.,
`
`Petitioner
`
`v.
`
`DANIEL L. FLAMM,
`
`Patent Owner
`
`CASE IPR2015-01759
`U.S. Patent No. RE40,264 E
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`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
`FIRST PETITION
`
`
`
`
`
`
`
`
`
`Mail Stop: PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`Reg. No. 42,557
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`LAM RESEARCH CORP.,
`
`Petitioner
`
`v.
`
`DANIEL L. FLAMM,
`
`Patent Owner
`
`CASE IPR2015-01759
`U.S. Patent No. RE40,264 E
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
`FIRST PETITION
`
`
`
`
`
`
`
`
`
`Mail Stop: PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`Patent Owner’s Preliminary Response under 37 C.F.R. § 42.107
`Inter Partes Review of U.S. Patent No. RE40,264 E
`IPR2015-01759
`
`
`TABLE OF CONTENTS
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`Page(s)
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`TABLE OF CONTENTS …………………………………………………………..ii
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`TABLE OF AUTHORITIES……………………………………………………...iii
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`EXHIBIT LIST…………………………………………………………………….iv
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`I.
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`II. Overview of the ‘264 Patent………………………………………………....2
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`III. Terms to be Construed………………………………………………………3
`
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`Introduction …………………………………………………………………1
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`A. Standard of Construction…………………………………………………….3
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`
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`B. “Selected Thermal Mass” and “Thermal Mass of the Substrate Holder is
`Selected”……………………………………………………………………..4
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`IV. The Petitioner Fails To Satisfy Its Burden………...………………………...5
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`A. Lam’s Prior Art is Cumulative……………………………………………....5
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`
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`B. Ground No. 1..………………………………………………………………7
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`1. Neither Tegal Nor Matsumura Teach the Ultimate Element
`of Claim 13……………………………………………………………….8
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`
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`2. Dependent Claims………………………………………………...…….15
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`C. Grounds 2-6………………………………………………………………...15
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`Conclusion………………………………………………………………….16
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`V.
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`APPENDIX A
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`CERTIFICATE OF SERVICE
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`
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`ii
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`Patent Owner’s Preliminary Response under 37 C.F.R. § 42.107
`Inter Partes Review of U.S. Patent No. RE40,264 E
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`TABLE OF AUTHORITIES
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`Statutes Page(s)
`35 U.S.C. § 102…………………………………………………………………….2
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`35 U.S.C. § 103…………………………..…………………………………….2, 16
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`35 U.S.C. § 316(a)(11)……………………………………………………………..3
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`37 C.F.R. § 42.107………………………………………………………………….1
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`MPEP at § 706.02………………………………………………………………….7
`
`
`Cases Page(s)
`Beckson Marine, Inc. v. NFM, Inc.,
`292 F.3d 718 (Fed. Cir. 2002)……………………………………………………..8
`
`Conopco, Inc. v. Procter & Gamble Co.,
`IPR2013-00510, Paper 9, at 8 (P.T.A.B. Feb. 12, 2014)………………………..…4
`
`Hartness Int’l Inc. v. Simplimatic Eng. Co.,
`819 F.2d 1100 (Fed. Cir. 1987)…………………………………………………...15
`
`In re Rambus, Inc.,
`753 F.3d 1253 (Fed. Cir. 2014)…………………………………………………….3
`
`Kimberly Clark Corp. v. Johnson & Johnson,
`745 F.2d 1437 (Fed. Cir. 1984)…………………………………………………...15
`
`Merck & Co. v. Teva Pharms. USA, Inc.,
`395 F.3d 1364 (Fed. Cir. 2005)…………………………………………………...15
`
`iii
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`Patent Owner’s Preliminary Response under 37 C.F.R. § 42.107
`Inter Partes Review of U.S. Patent No. RE40,264 E
`IPR2015-01759
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`
`EXHIBIT LIST
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`U.S Patent No. 5,294,778
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`U.S. Patent No. 5,320,982
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`U.S. Patent No. 5,939,831
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`U.S. Patent Application Publication No. 2001/0003676
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`Exhibit 2001
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`Exhibit 2002
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`Exhibit 2003
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`Exhibit 2004
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`
`
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`iv
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`Patent Owner’s Preliminary Response under 37 C.F.R. § 42.107
`Inter Partes Review of U.S. Patent No. RE40,264 E
`IPR2015-01759
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`Daniel L. Flamm, Sc.D., the sole inventor and owner of the U.S. Patent No.
`
`
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`RE40,264 (“the ‘264 patent”), through his counsel, submits this preliminary
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`response pursuant to 37 C.F.R. § 42.107 and asks that the Patent Trial and Appeals
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`Board decline to institute inter partes review on the instant petition because the
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`petition fails to show a reasonable likelihood that any claim is unpatentable.
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`I.
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`Introduction
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`Petitioner Lam Research Corp. has filed four petitions seeking to invalidate
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`the claims of the ‘264 patent. The instant petition, denominated by Lam as the
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`“First Petition,” is directed toward independent claim 13 and all of the claims that
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`depend from that claim. Independent claims 27 and 37 and the claims that depend
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`from those claims are the subject of both the Second Petition (IPR2015-01764) and
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`the Third Petition (IPR2015-01766). Independent claim 51 and the claims that
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`depend from that claim are the subject of both the Second Petition and the Fourth
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`Petition (IPR2015-01768). Independent claims 56 and 60 and the claims that
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`depend from those claims are also the subject of the Fourth Petition. 1 In all,
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`Petitioner asserts 17 separate grounds to invalidate the claims of the ‘264 patent
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`predicated on ten separate pieces of prior art in various combinations spread across
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`240 pages of argument.
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`1 A chart summarizing the claims of the ‘264 patent to which the four petitions are
`directed is attached hereto as Appendix A.
`
`
`
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` 1
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`Patent Owner’s Preliminary Response under 37 C.F.R. § 42.107
`Inter Partes Review of U.S. Patent No. RE40,264 E
`IPR2015-01759
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`As noted, the First Petition addresses independent claim 13 and all of its
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`dependent claims. There is no assertion of anticipation under 35 U.S.C. § 102.
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`Instead, the sole contention of invalidity of claim 13 under 35 U.S.C. § 103, is
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`based on two references, Tegal and Matsumura. Petitioner relies on five additional
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`references for the assertion of invalidity of the dependent claims.
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`As demonstrated below, Petitioner fails to identify any prior art that teaches
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`each of the elements of claim 13. For that reason, the Board should not institute
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`inter partes review with respect to that claim or any claim that depends from that
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`claim.
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`II. Overview of the ‘264 Patent
`
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`The invention set forth in the ‘264 patent is to provide a method “for etching
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`a substrate,” including “a chamber and a substrate holder,” the latter having “a
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`selected thermal mass to facilitate changing the temperature of the substrate to be
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`etched.” (Ex. 1001, Abstract.) Such change is “from a first temperature to a
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`second temperature within a characteristic time period.” (Id.) While methods
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`involving the use of various temperatures for manufacturing semiconductors were
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`known in the art prior to the ‘264 patent, none of the prior art discloses the
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`selection of the thermal mass of the substrate holder to provide for a predetermined
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`temperature change within a specific interval of time during processing.
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` 2
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`III. Terms to be Construed
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`
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`A.
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`Standard of Construction
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`
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`At the threshold, Lam relies on the wrong standard of construction. Lam
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`states that the broadest reasonable interpretation standard applies here. (Pet. at 9.)
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`That standard, however, is only applicable to unexpired patents. 37 C.F.R.
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`42.100(b) (“[a] claim in an unexpired patent shall be given its broadest reasonable
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`construction” (emphasis added)). When claims in post-grant proceedings are not
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`eligible for modification because they have expired, the broadest reasonable
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`interpretation standard does not apply. In re Rambus, Inc., 753 F.3d 1253, 1256
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`(Fed. Cir. 2014).
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`Here, the priority application for the ‘264 patent was filed on December 4,
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`1995, meaning that the patent is set to expire on December 4, 2015. As a result,
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`the ‘264 patent will expire substantially before the statutory deadline for rendering
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`a decision on the petition. 35 U.S.C. § 316(a)(11). Given this impending
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`expiration, the broadest reasonable interpretation standard should not apply to the
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`construction of the claims. To the extent the First Petition depends upon
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`construing claim elements pursuant to the broadest reasonable interpretation
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`standard, the petition is unfounded.
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`B.
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`“Selected Thermal Mass” and “Thermal Mass of the Substrate
`Holder Is Selected”
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`Lam proposes defining the terms “selected thermal mass” and “thermal mass
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`of the substrate holder is selected” as “selecting the mass of the substrate holder or
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`the material of the substrate holder, or both” based on the declaration of Dr.
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`Cecchi.2 (Pet. at 11.) Dr. Cecchi’s opinions, however, do not add up, and are
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`technically illogical.
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`Dr. Cecchi relies principally upon the equation Q = c m ΔT, where Q is heat,
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`T is temperature, m is mass, and c is specific heat. (Ex. 1009 ¶ 54, citing Ex. 1012
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`at 335.) Dr. Cecchi then rewrites the equation as Q/ΔT = c m. (Id. ¶ 55.) He then
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`explains the relationship between the thermal mass of an object and the heat
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`required to change the temperature of the object. (Id. ¶¶ 56-58.) From all of this,
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`Dr. Cecchi concludes that the proper construction of these terms is “selecting the
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`mass of the substrate holder or the material of the substrate holder, or both.” (Id. ¶
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`59.)
`
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`2 For support, Lam cites to ¶¶ 53-59 of Dr. Cecchi’s declaration, which Lam
`summarizes in a few sentences. (Id.) The Board should opt to ignore the
`information contained in Dr. Cecchi’s declaration that Lam has not discussed in the
`First Petition. See Conopco, Inc. v. Procter & Gamble Co., IPR2013-00510, Paper
`9, at 8 (P.T.A.B. Feb. 12, 2014) (“We decline to consider information presented in
`a supporting declaration, but not discussed in a petition, because, among other
`reasons, doing so would encourage the use of declarations to circumvent the page
`limits that apply to petitions”).
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`Not only is that conclusion a non sequitur, Dr. Cecchi’s proposed
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`construction reads the term “thermal” out of the subject elements. Indeed, under
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`Dr. Cecchi’s proposed construction, the selection of the “mass” or “material” of a
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`substrate holder could be made independent of the thermal properties thereof. Dr.
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`Cecchi’s proposed construction, therefore, improperly renders the term “thermal”
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`in these elements superfluous, and is technically illogical. See Merck & Co. v. Teva
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`Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005).
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`The plain and ordinary meaning of “thermal mass”—which is consistent
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`with the definition cited by Dr. Cecchi—is “the product of the specific heat
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`capacity of the material of the body and the mass of the body,” represented by the
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`equation C = (c)(m).3 Consistent with that plain meaning, “selected thermal mass”
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`means “the selected product of the specific heat capacity of the material of the
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`body and the mass of the body,” and “thermal mass of the substrate holder is
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`selected” means that “the specific heat capacity of the substrate holder and the
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`mass of the substrate holder is selected.”
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`IV. The Petitioner Fails To Satisfy Its Burden
`
`A. Lam’s Prior Art is Cumulative
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`At the threshold, Tegal, Matsumura, and the five additional references are
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`3 This definition is also consistent with U.S. Patent No. 7,993,460, owned by Lam.
`(See Ex. 2001 at 2:49-:51.)
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`cumulative of record of the art cited, and no more relevant than any of the art
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`already cited and considered by the USPTO in the reissue. Lam relies primarily on
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`Tegal which teaches the use of multiple temperatures in semiconductor fabrication.
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`But so did at least four of the references that were before the examiner in the
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`reissue examination. (See Ex. 1001 at 1.) U.S. Patent 5,294,778 to Carman et al.,
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`and assigned to Lam, teaches: “The novel heating means of the invention is able to
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`create this temperature profile or gradient because it comprises two or more
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`individual heating means for heating at least first and second portions of the platen
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`to predetermined temperatures.” (Ex. 2001 at 1:53-:57.) U.S. Patent 5,320,982 to
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`Tsubone et al. is an improvement on “Japanese Patent Laid-Open No. 76876/1984,
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`a conventional technology for vacuum-processing a sample by controlling it to
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`different temperatures . . . the substrate is etched by this discharge gas at two or
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`more different electrode temperatures. ” (Ex. 2002 at 1:13-:22.) U.S. Patent
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`5,939,831 to Fong et al. states: “The process may be carried out in a single step . . .
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`or in multiple steps (e.g., depositing the film on the wafer at temperatures less than
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`500° C. and then heating the film on the wafer after the film has been deposited).”
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`(Ex. 2003 at 7:58-:63.) Further, Fong teaches that the “processing is accomplished
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`without removing the wafer from the vacuum chamber.” (Id. at 7:65-“66.) Finally,
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`U.S. Patent Application 2001/0003676 filed by Marks et al. states: “Method and
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`apparatus for etching a silicide stack including etching the silicide layer at a
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`temperature elevated from that used to etch the rest of the layers in order to
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`accomplish anisotropic etch.” (Ex. 2004 at Abstract.) As stated in the MPEP at §
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`706.02: “Merely cumulative rejections, i.e., those which would clearly fall if the
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`primary rejection were not sustained, should be avoided.”
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`B. Ground No. 1
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`Claim 13 generally covers a “method of etching a substrate in the
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`manufacture” of semiconductors where there are two etching steps, each at a
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`different temperature, and where the “thermal mass of the substrate holder is
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`selected for a predetermined temperature change within a specific time interval.”
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`(Ex. 1001 at 20:50-51, 21:1-3.) In essence, the thermal mass of the substrate
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`holder, which controls the temperature of the substrate, is selected as a function of
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`the specific time interval between the first and second etching steps and the
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`temperature differential between the first and second etching steps.
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`The improvement over the prior art and some of the benefits of the patented
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`invention are recited in the specification. The invention:
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`overcomes serious disadvantages of the prior methods in which
`throughput and etching rate were lowered in order to avoid excessive
`device damage to the workpiece . . . [and] utilizes temperature
`changes to achieve high etch rates while simultaneously maintaining
`high etch selectivity between a layer which being pattered or removed
`other material layers [sic].
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`(Ex. 1001 at 2:11-14, 2:31-34.)
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`In a nutshell, Moore’s law is accommodated while maintaining high etch
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`selectivity of the horizontal layers.
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`1.
`
`Neither Tegal Nor Matsumura Teach the Ultimate Element
`of Claim 13
`
`Lam fails to identify any prior art that teaches the ultimate element of
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`independent claim 13. Accordingly, there is no basis to invalidate the claim or any
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`claim that depends from that claim. See Beckson Marine, Inc. v. NFM, Inc., 292
`
`F.3d 718, 727 (Fed. Cir. 2002) (holding that for claimed subject matter to be
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`obvious either the prior art references must expressly reach each claim element
`
`exactly or else the record must disclose a reason for a person of ordinary skill in
`
`the art to modify the prior art teachings to obtain the claimed invention).
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`Tegal provides a methodology for providing a “tapered profile . . . by
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`varying the temperature of the wafer during etch.” (Ex. 1002 at 1.) As Tegal
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`explained: “The etch is isotropic while the wafer is hot and is anisotropic when the
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`wafer is cool.” (Id.) Tegal teaches a first “isotropic” etch at a high temperature—
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`“etching both vertically into the wafer and laterally into the sidewall”—followed
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`by a second “anisotropic” etch at a reduced temperature “thereby increasing the
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`depth of the aperture” and obtaining a “tapered” sidewall. (Id. at 5:5-:16.) Tegal
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`was not directed toward increasing semiconductor throughput or maintaining
`
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`horizontal selectivity; Tegal was directed toward providing an improved method
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`for obtaining vertically tapered walls.
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`Matsumura addressed the problem of controlling the heating and cooling
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`during the “adhesion and baking processes” for applying a resist to semiconductor
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`wafers, not any etching or patterning. (Ex. 1003 at 1:15-:20, 4:56-:59, Figs. 1 &
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`4.) The crux of the solution was to heat the wafer “by means of a conductive thin
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`film in accordance with the information” from a stored recipe. (Id. at 3:10-:11,
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`2:66-3:16, 3:17-:51.) Matsumura teaches essentially nothing directed to “etching a
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`substrate in the manufacture” of semiconductors.
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`In further support, Matsumura teaches away from the invention of claim 13
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`by emphasizing adhesion and baking processes rather than etching. Adhesion and
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`baking of photoresist is a spreading and curing process, while etching can be a
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`combination of a chemical and/or bombardment process. Additionally, Matsumura
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`merely discloses the word “etching,” but never enables how any manner of etching
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`could or should be performed, and therefore is not prior art.
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`The ultimate element of claim 13 of Flamm reads:
`
`wherein the thermal mass of the substrate holder is selected for a
`predetermined temperature change within a specific interval of time
`during processing; the predetermined temperature change comprises
`the change from the selected first substrate holder temperature to the
`selected second substrate holder temperature, and the specified time
`interval comprises the time for changing from the selected first
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`substrate holder temperature to the selected second substrate holder
`temperature.
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`(Ex. 1001 at 21:1-:10.)
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`
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`Having no prior art that teaches that element of claim 13, Lam employs a
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`divide-and-conquer approach or a “kitchen sink” approach, dividing that element
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`into three separate sub-elements, and throwing in the kitchen sink of prior art:
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`[13.l] “wherein the thermal mass of the substrate holder is selected”
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`[13.m] “for a predetermined temperature change”
`
`the
`time during processing;
`interval of
`[13.n] “within a specific
`predetermined temperature change comprises the change from the
`selected first substrate holder temperature to the selected second
`substrate holder temperature, and the specified time interval
`comprises the time for changing from the selected first substrate
`holder
`temperature
`to
`the selected second substrate holder
`temperature.”
`
`(Pet. at 26.)
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`Lam’s strategy is transparent. Dividing a claim element into smaller
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`portions will expand, and potentially vastly expand, the pool of relevant prior art.4
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`Just as obvious, if Lam had any prior art that showed the entire claim element, it
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`would not have resorted to trisecting the language of the element.
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`But even under Lam’s divide-and-conquer approach, Lam still fails to
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`demonstrate that there is any combination of prior art that teaches or suggests this
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`4 Energy (E), mass (m), and the speed of light (c2) were all well known before
`Einstein.
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`ultimate claim element. Regarding segment [13.l]—“wherein the thermal mass of
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`the substrate holder is selected”—Lam relies on Tegal.5 The passage Lam cites,
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`however, says nothing about selecting the thermal mass of the substrate holder to
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`achieve the desired result.
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`Lam relies on the following passage from Tegal: “[a]t the time of switchover,
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`only conduits 46, 47, 43 and 44 and lower electrode 13 have to change temperature.
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`By reducing the mass of these means, the time for the temperature change is
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`reduced.” (Pet. at 24.) From that, Lam concludes that “Tegal teaches selecting the
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`thermal mass of the substrate holder (lower electrode 13) by selecting (reducing)
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`its mass.” (Id.at 17, 22) Apparently, Lam believes that the mass of electrode 13
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`itself can somehow be reduced, but there is no such teaching in Tegal. The entirety
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`of the paragraph from which Lam lifted this teaching reads as follows:
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`FIG 2 illustrates the alignment of the valves when the fluid from
`reservoir 21 is being used to control the temperature of electrode 13.
`At the time of switchover, only conduits 46, 47, 43 and 44 and lower
`electrode 13 have to change temperature. By reducing the mass of the
`means, the time for the temperature change is reduced. Conduits 33
`and 34, and valves 23 and 24, are already temperature stabilized
`thereby reducing the time for the system to stabilize.
`
`5 In addition to the requirement in claim element [13.l]—“wherein the thermal
`mass of the substrate holder is selected”—the claim element denominated by Lam
`as [13.d] requires “the substrate holder having a selected thermal mass.” (Pet. at
`24.) Lam relies on the same passage from Tegal to satisfy both claim elements.
`For the reasons set forth in the text above, the Tegal reference fails to satisfy either
`of those claim elements.
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`(Ex. 1002 at 4:42-:51.)
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`That the passage merely recites a well-known principal of physics: that
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`“reducing the mass of these means, the time for the temperature change is
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`reduced.” (Pet. at 24.) Tegal does not teach selection of the thermal mass of the
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`substrate holder.
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`Further, Lam equates “mass” with “thermal mass” in relying upon this
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`teaching from Tegal. This, in turn, evokes Lam’s construction of “thermal mass,”
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`which, as explained above, is erroneous. The “mass” of an object is not the same
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`as its “thermal mass.” Otherwise, the term “thermal” would be improperly
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`rendered superfluous.
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`
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`This passage regarding mass reduction from Tegal is the only one relied
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`upon by the Petitioner to satisfy element [13.l]—or claim element [13.d]. Given
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`that this passage does not truly teach this element and that Lam fails to meet its
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`burden to show how the combination of Tegal and some other prior art reference
`
`make that element obvious, the Board should reject this ground on this basis alone.
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`As parsed by Lam, segment [13.m]—“for a predetermined temperature
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`change”—is so stripped down that countless prior art references could be used to
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`show it. Lam relies on Tegal. (Pet. at 26.) In doing so, however, Lam simply
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`ignores the word “for.” Considering segments [13.l] and [13.m] together (as they
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`IPR2015-01759
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`were written)—“wherein the thermal mass of the substrate holder is selected for a
`
`predetermined temperature change” (emphasis added)—demonstrates the utter
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`folly of splitting this language into two separate segments. More salient, it
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`demonstrates that the cited language in Tegal (Ex. 1002 at 5:32-:41, 6:11-:13)
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`teaches absolutely nothing about selecting the thermal mass of the substrate holder
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`for a predetermined temperature change, which is precisely what the ultimate
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`element of claim 13 requires.
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`Lam’s argument for segment [13.n]—“within a specific interval of time
`
`during processing; the predetermined temperature change comprises the change
`
`from the selected first substrate holder temperature to the selected second substrate
`
`holder temperature, and the specified time interval comprises the time for changing
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`from the selected first substrate holder temperature to the selected second substrate
`
`holder temperature”— also fails. Lam contends that the “specific interval of time”
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`or “specified time interval” in etching is somehow taught by Matsumura’s resist
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`adhesion/backing process. (Pet. at 22-23, 26.) However, Matsumura does not
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`teach anything about an interval of time between two temperatures, let alone
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`anything related to substrate etching. Rather, as the passages and Figures cited by
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`Lam clearly demonstrate, Matsumura teaches control of the time for temperature
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`ramp up; the time to hold the desired temperature; and the time to cool down the
`
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` 13
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`Patent Owner’s Preliminary Response under 37 C.F.R. § 42.107
`Inter Partes Review of U.S. Patent No. RE40,264 E
`IPR2015-01759
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`temperature. Matsumura does not address or teach anything about a specific time
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`interval between two operative selected temperatures, as recited in claim 13.
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`Finally, Lam cites to the teachings in Matsumura that, in a “predetermined
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`recipe,” (for applying/baking resist) temperature changes occur at a particular rate,
`
`e.g., 100° C per minute. (Pet. at 26.) This teaching, however, relates nothing
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`about the temperatures at which a wafer is etched, the changes in temperature
`
`between etch steps, or the predetermined interval of time required for changing
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`from one etch temperature to another. In fact, the entirety of Matsumura’s
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`teachings directed to etching is as follows:
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`Still further, the present invention has been applied to the adhesion
`and baking processes for semiconductor wafers in the above-described
`embodiments, but it can also be applied to any of the ion implantation,
`CVD, etching and ashing processes.
`
`(Ex. 1003 10:3-:7.)
`
`This simply does not constitute a teaching of the element “the specified time
`
`interval comprises the time for changing from the selected first substrate holder
`
`temperature to the selected second substrate holder temperature,” where such
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`temperatures are those at which the claimed first and second etch portions take
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`place.
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`Quite clearly, the combination of Tegal and Matsumura does not teach the
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`ultimate element of independent claim 13 of the ‘264 patent.
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` 14
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`Patent Owner’s Preliminary Response under 37 C.F.R. § 42.107
`Inter Partes Review of U.S. Patent No. RE40,264 E
`IPR2015-01759
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`2.
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`Dependent Claims
`
`As shown above, Petitioner fails to demonstrate that claim 13 is obvious
`
`under Tegal in view of Matsumura. As a consequence, none of the claims that
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`depend from claim 13 can be obvious on those grounds. Hartness Int’l Inc. v.
`
`Simplimatic Eng. Co., 819 F.2d 1100, 1108 (Fed. Cir. 1987) (“A fortiori,
`
`dependent claim 3 was nonobvious (and novel) because it contained all of the
`
`limitations of claim 1 plus a further limitation.”); Kimberly Clark Corp. v. Johnson
`
`& Johnson, 745 F.2d 1437, 1448-49 (Fed. Cir. 1984) (“We need consider no other
`
`claim because if the invention of claim 1 would not have been obvious the same is
`
`true as to the remaining dependent claims.”). Thus, Lam has failed to demonstrate
`
`a basis for invalidating independent claim 13 or any of the claims that depend from
`
`that claim.
`
`C. Grounds 2-6
`
`Lam asserts a variety of additional grounds for invalidating claims that
`
`depend from independent claim 13, all of which involve some combination of
`
`Tegal and Matsumura and one additional reference: Thomas for Ground 2; Narita
`
`for Ground 3; Hwang for Ground 4; Collins for Ground 5; and Mahawili for
`
`Ground 6. (Pet. at 37-55.) None of those additional references, however, supply
`
`any of the missing elements discussed above. Because these elements remain
`
`
`
`
`
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` 15
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`Patent Owner’s Preliminary Response under 37 C.F.R. § 42.107
`Inter Partes Review of U.S. Patent No. RE40,264 E
`IPR2015-01759
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`missing in any such combination, such combinations do not render any claims of
`
`the ‘264 patents invalid as obvious under 35 U.S.C. § 103. Missing from all the art
`
`that Lam relies on is the final language of claim 13:
`
`wherein the thermal mass of the substrate holder is selected for a
`predetermined temperature change within a specific interval of time
`during processing; the predetermined temperature change comprises
`the change from the selected first substrate holder temperature to the
`selected second substrate holder temperature, and the specified time
`interval comprises the time for changing from the selected first
`substrate holder temperature to the selected second substrate holder
`temperature.
`
`(Ex. 1001 at 21:1-:10.)
`
`V. Conclusion
`
`
`
`For the foregoing reasons, the instant petition should be denied.
`
`
`
`Date: November 25, 2015
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`
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`
`
`Respectfully Submitted,
`
`By: /Christopher Frerking, reg. no. 42,557/
` Christopher Frerking, reg. no. 42,557
`
`174 Rumford Street
`Concord, New Hampshire 03301
`Telephone: (603) 706-3127
`Email: chris@ntknet.com
`
`Counsel for Daniel L. Flamm
`
`
`
`
`
` 16
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`Claim #
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`29
`30
`31
`32
`33
`34
`35
`36
`37
`38
`39
`40
`41
`42
`43
`44
`45
`46
`47
`48
`49
`50
`51
`52
`53
`54
`55
`56
`57
`58
`59
`60
`61
`62
`63
`64
`65
`66
`67
`68
`69
`70
`71
`
`First Petition
`
`Appendix A
`Second Petition
`
`Third Petition
`
`Fourth Petition
`
`(cid:23)
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`(cid:23)
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`(cid:23)
`(cid:23)
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`
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`Patent Owner’s Preliminary Response under 37 C.F.R. § 42.107
`Inter Partes Review of U.S. Patent No. RE40,264 E
`IPR2015-01759
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing Patent Owner’s
`
`
`
`Preliminary Response under 37 C.F.R. § 42.107 was served by electronic mail
`
`on this day, November 25, 2015, on the following individuals:
`
`Michael Fleming
`(mfleming@irell.com)
`Samuel K. Lu
`(slu@irell.com)
`Kamran Vakili
`(kvakili@irell.com)
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067-4276
`
`
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`
`/s/ Beata Ichou
`Beata Ichou
`
` 0
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