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 IPR2015-01764
`U.S. Patent No. RE40,264 E
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
`SECOND 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 IPR2015-01764
`U.S. Patent No. RE40,264 E
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
`SECOND 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
`IPR2015-01764
`
`
`TABLE OF CONTENTS
`
`Page(s)
`
`
`TABLE OF CONTENTS …………………………………………………………..ii
`
`TABLE OF AUTHORITIES……………………………………………………...iii
`
`EXHIBIT LIST…………………………………………………………………….iv
`
`I.
`
`II. Overview of the ‘264 Patent………………………………………………....2
`
`III. The Petitioner Fails To Satisfy Its Burden………...………………………...3
`
`
`Introduction …………………………………………………………………1
`
`A. Horizontal Redundancy……...……………………………………………....3
`
`
`
`
`
`B. Lam’s Prior Art is Cumulative……………………………………………....3
`
`C. Ground No. 1………………………………………………………………...5
`
`1. Independent Claim 27...………………………………………………….5
`
`2. Independent Claim 37...………………………………………………….8
`
`3. Independent Claim 51...………………………………………………….9
`
`4. Dependent Claims………………………………………………...……...9
`
`
`IV. Conclusion………………………………………………………………….10
`
`APPENDIX A
`
`CERTIFICATE OF SERVICE
`
`ii
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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
`IPR2015-01764
`
`
`TABLE OF AUTHORITIES
`
`Statutes Page(s)
`35 U.S.C. § 102 ……………………………………………………………………2
`
`35 U.S.C. § 103…………………………………………………………………….2
`
`
`37 C.F.R. § 42.107…………………………………………………………………1
`
`37 C.F.R. § 42.104(b)(4)…………………………………………………………..6
`
`MPEP at § 706.02………………………………………………………………..4, 5
`
`
`
`Cases Page(s)
`Beckson Marine, Inc. v. NFM, Inc.,
`292 F.3d 718 (Fed. Cir. 2002)……………………………………………………..5
`
`Hartness Int’l Inc. v. Simplimatic Eng. Co.,
`819 F.2d 1100 (Fed. Cir. 1987)…………………………………………………...10
`
`Kimberly Clark Corp. v. Johnson & Johnson,
`745 F.2d 1437 (Fed. Cir. 1984)…………………………………………………...10
`
`Liberty Mutual Ins. Co. v. Progressive Cas. Ins. Co.,
`CBM2012-0003, Paper No. 7 at 2 (P.T.A.B. Nov. 26, 2012)……………………..3
`
`
`
`iii
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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
`IPR2015-01764
`
`
`Exhibit 2001
`
`Exhibit 2002
`
`Exhibit 2003
`
`Exhibit 2004
`
`EXHIBIT LIST
`
`U.S Patent No. 5,294,778
`
`U.S. Patent No. 5,320,982
`
`U.S. Patent No. 5,939,831
`
`U.S. Patent Application Publication No. 2001/0003676
`
`
`iv
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response under 37 C.F.R. § 42.107
`Inter Partes Review of U.S. Patent No. RE40,264 E
`IPR2015-01764
`
`Daniel L. Flamm, Sc.D., the sole inventor and owner of the U.S. Patent No.
`
`
`
`RE40,264 (“the ‘264 patent”), through his counsel, submits this preliminary
`
`response pursuant to 37 C.F.R. § 42.107 and asks that the Patent Trial and Appeals
`
`Board decline to institute inter partes review on the instant petition because the
`
`petition fails to show a reasonable likelihood that any claim is unpatentable.
`
`I.
`
`Introduction
`
`Petitioner Lam Research Corp. has filed four petitions seeking to invalidate
`
`the claims of the ‘264 patent. The instant petition is denominated by Lam as the
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`“Second Petition.” The First Petition is directed toward independent claim 13 and
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`all of the claims that depend from that claim. Independent claims 27 and 37 and
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`the claims that depend from those claims are the subject of both the Second
`
`Petition (IPR2015-01764) and the Third Petition (IPR2015-01766). Independent
`
`claim 51 and the claims that depend from that claim are the subject of both the
`
`Second Petition and the Fourth Petition (IPR2015-01768). Independent claims 56
`
`and 60 and the claims that depend from those claims are also the subject of the
`
`Fourth Petition.1 In all, Petitioner asserts 17 separate grounds to invalidate the
`
`claims of the ‘264 patent predicated on ten separate pieces of prior art in various
`
`combinations spread across 240 pages of argument.
`
`
`1 A chart summarizing the claims of the ‘264 patent to which the four petitions are
`directed is attached hereto as Appendix A.
`
`
`
`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
`IPR2015-01764
`
`As noted, Lam’s Second Petition addresses independent claim 27 and most
`
`but not all of the claims that depend from it; independent claim 37 and most but
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`not all of the claims that depend from it; and independent claim 51 and most but
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`not all of the claims that depend from it. There is no assertion of anticipation
`
`under 35 U.S.C. § 102 regarding any of the claims that are the subject of the
`
`Second Petition. Instead, the sole contention of invalidity in the Second Petition is
`
`under 35 U.S.C. § 103.
`
`As demonstrated below, Petitioner fails to identify any prior art that teaches
`
`each of the elements of the claims that are the subject of this Second Petition. For
`
`that reason, the Board should not institute inter partes review of those claims.
`
`II. Overview of the ‘264 Patent
`
`
`The invention set forth in the ‘264 patent is to provide a method “for etching
`
`a substrate” including “a chamber and a substrate holder,” the latter having “a
`
`selected thermal mass to facilitate changing the temperature of the substrate to be
`
`etched.” (Ex. 1001 at Abstract.) Such change is “from a first temperature to a
`
`second temperature within a characteristic time period.” (Id.) None of the prior art
`
`discloses the selection of the thermal mass of the substrate holder to provide for a
`
`predetermined temperature change within a specific interval of time during plasma
`
`processing.
`
`
`
`2
`
`
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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
`IPR2015-01764
`
`
`III. The Petitioner Fails To Satisfy Its Burden
`
`A. Horizontal Redundancy
`
`At the threshold, in a number of instances, Lam relies on multiple prior art
`
`references to satisfy particular claim elements. (Pet. at 22 (relying on Tegal and
`
`Matsumura for claim element [27.c]), 24 (relying on Matsumura and Narita for
`
`claim element [27.j]), 37 (relying on Tegal, Matsumura, and Narita for claim
`
`element [37.f].) The assertion of “multiple grounds, which are presented in a
`
`redundant manner by a petitioner who makes no meaningful distinction between
`
`them, are contrary to the regulatory and statutory mandates, and therefore are not
`
`all entitled to consideration.” Liberty Mutual Ins. Co. v. Progressive Cas. Ins. Co.,
`
`CBM2012-0003, Paper No. 7 at 2 (P.T.A.B. Nov. 26, 2012). Petitioners must
`
`“explain why one reference more closely satisfies the claim limitation at issue in
`
`some respects than another reference and vice versa.” Id. at 3. The Board should
`
`not condone Lam’s reliance on redundant prior art references without the requisite
`
`explanation of the relative merits of each reference.
`
`B.
`
`Lam’s Prior Art is Cumulative
`
`At the threshold, Tegal, Matsumura, and the five additional references are
`
`cumulative of record of the art cited, and no more relevant than any of the art
`
`already cited and considered by the USPTO in the reissue. Lam relies primarily on
`
`Tegal which teaches the use of multiple temperatures in semiconductor fabrication.
`
`
`
`3
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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
`IPR2015-01764
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`But so did at least four of the references that were before the examiner in the
`
`reissue examination. (See Ex. 1001 at 1.) U.S. Patent 5,294,778 to Carman et al.,
`
`and assigned to Lam, teaches: “The novel heating means of the invention is able to
`
`create this temperature profile or gradient because it comprises two or more
`
`individual heating means for heating at least first and second portions of the platen
`
`to predetermined temperatures.” (Ex. 2001 at 1:53-:57.) U.S. Patent 5,320,982 to
`
`Tsubone et al. is an improvement on “Japanese Patent Laid-Open No. 76876/1984,
`
`a conventional technology for vacuum-processing a sample by controlling it to
`
`different temperatures . . . the substrate is etched by this discharge gas at two or
`
`more different electrode temperatures. ” (Ex. 2002 at 1:13-:22.) U.S. Patent
`
`5,939,831 to Fong et al. states: “The process may be carried out in a single step . . .
`
`or in multiple steps (e.g., depositing the film on the wafer at temperatures less than
`
`500° C. and then heating the film on the wafer after the film has been deposited).”
`
`(Ex. 2003 at 7:58-:63.) Further, Fong teaches that the “processing is accomplished
`
`without removing the wafer from the vacuum chamber.” (Id. at 7:65-“66.) Finally,
`
`U.S. Patent Application 2001/0003676 filed by Marks et al. states: “Method and
`
`apparatus for etching a silicide stack including etching the silicide layer at a
`
`temperature elevated from that used to etch the rest of the layers in order to
`
`accomplish anisotropic etch.” (Ex. 2004 at Abstract.) As stated in the MPEP at §
`
`
`
`4
`
`
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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
`IPR2015-01764
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`706.02: “Merely cumulative rejections, i.e., those which would clearly fall if the
`
`primary rejection were not sustained, should be avoided.”
`
`C. Ground No. 1
`
`Lam argues that independent claims 27, 37, and 51 and a number of their
`
`dependent claims—28, 30, 33, 35-36, 38-39, 42-43, 45-46, 49, 52-54, 66-67, and
`
`69 are rendered obvious by Tegal in view of Matsumura and Narita.2 Tegal and
`
`Matsumura are the two references on which Lam primarily relied in the First
`
`Petition. As with the First Petition, the prior art relied on by Lam fails to teach
`
`each of the elements recited in the claims that are the subject of this Second
`
`Petition. See Beckson Marine, Inc. v. NFM, Inc., 292 F.3d 718, 727 (Fed. Cir.
`
`2002) (holding that for claimed subject matter to be 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). Accordingly, Lam fails to show a
`
`reasonable likelihood that the subject claims are unpatentable.
`
`1. Independent Claim 27
`
`The first portion of the ultimate element of claim 27 reads:
`
`wherein substrate temperature is changed from the selected first
`
`
`2 Dependent claims 31-32, 34, 40-41, 47-48, 50, and 55 are not at issue in this
`Second Petition.
`
`
`
`5
`
`
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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
`IPR2015-01764
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`
`substrate temperature to the selected second substrate temperature,
`using a measured substrate temperature, within a preselected time
`interval for processing . . . .
`
`(Ex. 1001 at 22:22-:28.)
`
`Just as Lam did with respect to claim elements [13.l], [13.m], and [13.n] in
`
`its First Petition, Lam’s claim chart divides this language into three separate
`
`segments (Pet. at 24, denominated by Lam as [27.i], [27.j], and [27.k]) and
`
`variously relies on three different prior art references—Tegal, Matsumura and
`
`Narita—in its attempt to the meet its burden “to specify where each element of the
`
`claim is found in the prior art,” as required under 37 C.F.R. § 42.104(b)(4). In fact,
`
`there is no teaching in any of those three references of a “preselected time interval”
`
`between the first and second temperature.
`
`In Tegal, the “switchover” from the first temperature to the second
`
`temperature is a temperature continuum between the highest temperature, 80° C,
`
`and the lowest temperature, 10° C. (Ex 1002 at 4:42-:51, 5:12-:14.) Thus, unlike
`
`Flamm claim 27, Tegal does not teach terminating the etch employing the first
`
`temperature and then, after a preselected time interval, initiating the etch with a
`
`second temperature. Lam concedes as much by not relying on Tegal for this
`
`element.
`
`Instead, Lam relies on Matsumura for element [27.k], but Matsumura also
`
`
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`6
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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
`IPR2015-01764
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`does not teach a time interval between a first etch temperature and a second etch
`
`temperature. (Pet. at 24, element [27.l].) Indeed, Matsumura does not teach the
`
`use of etching with two different temperatures. Lam contends that the “preselected
`
`time interval” is taught by Matsumura in three cited passages from the reference.
`
`(Pet. at 24, element [27.k].) While those passages address the timing of certain
`
`events, those events are not the time interval between use of a first temperature and
`
`a second temperature. Rather, those events are the time for temperature ramp up;
`
`the time to hold the desired temperature; and the time to cool down the temperature.
`
`Matsumura does not teach or even discuss a time interval, much less a “preselected
`
`time interval” between two selected temperatures or anything related to substrate
`
`etching, as recited in claim 27 of the ‘264 patent.
`
`Indeed, as parsed by Lam, it is difficult to imagine what Matsumura would
`
`teach the skilled artisan on this point that he did not already know. Lam’s claim
`
`chart cites Matsumura for the element “within a preselected time interval for
`
`processing.” (See Pet. at 24, [27.k].) There must be thousands, if not millions, of
`
`teachings in a multitude of fields from semiconductor processing to cooking dinner
`
`for this truncated statement. Deconstructing the language for almost any invention
`
`
`
`7
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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
`IPR2015-01764
`
`
`or idea will yield plenty of prior art. 3
`
`Because neither Tegal, Matsumura, nor Narita teach a “preselected time
`
`interval,” independent claim 27 is not rendered obvious by those prior art
`
`references.
`
`2. Independent Claim 37
`
`By the same token, the prior art identified by Lam fails to teach an essential
`
`element of independent claim 37—i.e., a “preselected time period.” (Ex. 1001 at
`
`23:19-:20, denominated by Lam as element [37.r].) Lam relies on the same
`
`Matsumura disclosures it cited for element [27.k]. (Pet. at 39.) As also discussed
`
`above (see part III(B)(1)), Matsumura teaches nothing about a time interval, much
`
`less a “preselected time interval” between two selected temperatures, as recited in
`
`claims 27 and 37 of the ‘264 patent and Lam does not even attempt to rely on
`
`Tegal for this element.
`
`Because Lam fails to identify any prior art that teaches a “preselected time
`
`period,” Lam has failed to meet its burden to show a likelihood of unpatentability
`
`of claim 37.
`
`
`3 Energy (E), mass (m), and the speed of light (c2) were all well known before
`Einstein.
`
`
`
`8
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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
`IPR2015-01764
`
`
`3. Independent Claim 51
`
`Claim 51 also recites a “preselected time period” for the change from the
`
`first substrate temperature to the second substrate temperature, just as recited in
`
`claims 27 and 37. (Ex. 1001 24:24-:26; Pet. at 52 (denominating the element as
`
`[57.n] [sic].)
`
`As noted above, Matsumura does not teach a time interval between a first
`
`etch temperature and a second etch temperature. The passages of Matsumura
`
`relied upon by Lam address the timing of certain events, none of which include the
`
`time interval between use of a first temperature and a second temperature. (See Pet.
`
`at 24, element [27.k].) Matsumura does not teach or even discuss a time interval,
`
`much less a “preselected time interval” between two selected temperatures, as
`
`recited in claim 51 (or claims 27 and 37) of the ‘264 patent and Tegal does not
`
`teach any interval between a first and second temperature.
`
`Lam has failed to identify prior art to meet claim elements [27.k], [37.r] or
`
`[51.n]. The failure to identify prior art to meet each claim element is fatal. See
`
`Beckson Marine, Inc., 292 F.3d at 727.
`
`4. Dependent Claims
`
`As discussed above, neither Tegal, Matsumura, nor Narita teach a
`
`“preselected time interval,” which is a necessary element of independent claims 27,
`
`
`
`9
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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
`IPR2015-01764
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`37, and 51. As a consequence, none of the claims that depend from those claims
`
`are rendered obvious by the prior art references asserted in this Second Petition.
`
`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.”).
`
`IV. Conclusion
`
`For the foregoing reasons, the instant petition should be denied.
`
`
`
`
`
`
`
`Date: November 25, 2015
`
`
`
`
`
`
`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
`
`
`
`10
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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
`
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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
`IPR2015-01764
`
`
`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
`
`11
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