UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`LAM RESEARCH CORP.,
`
`Petitioner
`
`v.
`
`DANIEL L. FLAMM,
`
`Patent Owner
`
`CASE Nos. IPR2015-01764; IPR2015-01767; and IPR2015-01767
`U.S. Patent Nos. RE40,264, 6,017,221 AND 5,711,849
`
`JOINT SUMMARY OF RELATED INTER PARTES REVIEWS
`AND RELATED LITIGATIONS
`
`Pursuant to the Board’s request dated December 7, 2016, the Patent Owner,
`
`Daniel L. Flamm, and the Petitioner, Lam Research Corp. (collectively “the
`
`Parties”) provide this summary of the related inter partes reviews described in the
`
`joint motions to terminate IPR2015-01764, IPR2015-01767, and IPR2015-01768
`
`as well as the status of the district court actions listed in the joint motions.
`
`
`
`
`
`

`
`
`
`Petitions Directed Toward
`U.S. Patent No. RE40,264
`
`
`IPR2015-01759
`Petitioner: Lam Research Corp.
`Ground
`Assertion
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`Claims 13, 15, 16, 18-21, 64, and 65 are Rendered
`Obvious by Tegal in View of Matsumura Under
`35 U.S.C. §103(a)
`Claim 14 is Rendered Obvious by Tegal in View of
`Matsumura and Thomas Under 35 U.S.C. §103(a)
`Claim 17 is Rendered Obvious by Tegal in View of
`Matsumura and Narita Under 35 U.S.C. §103(a)
`Claim 22 is Rendered Obvious by Hwang in View
`of Tegal and Matsumura Under 35 U.S.C. §103(a)
`Claims 23 and 24 are Rendered Obvious by Tegal
`in View of Matsumura and Collins Under 35
`U.S.C. §103(a)
`Claims 25 and 26 are Rendered Obvious by Tegal
`in View of Matsumura and Mahawili Under 35
`U.S.C. §103(a)
`
`
`Prior Art References:
` European Patent Application No. 90304724.9 (Tegal)
` U.S. Patent No. 5,151,871 (Matsumura)
` U.S. Patent No. 4,913,790 (Narita)
` U.S. Patent No. 4,680,086 (Thomas)
` U.S. Patent No. 5,174,856 (Hwang)
` European Patent Application No. 93309608.3 (Collins)
` U.S. Patent No. 5,059,770 (Mahawili)
`
`
`
`Institution
`Decision
`Denied
`
`Denied
`
`Denied
`
`Denied
`
`Denied
`
`Denied
`
`2
`
`

`
`Petitions Directed Toward
`U.S. Patent No. RE40,264
`
`IPR2015-01764
`Petitioner: Lam Research Corp.
`Ground
`Assertion
`
`1
`
`2
`
`Claims 27, 28, 30, 33, 35-39, 42, 43, 45, 46, 49, 51-
`54, 66, 67, and 69 are Rendered Obvious by Tegal
`in View of Matsumura and Narita Under 35
`U.S.C. §103(a)
`Claim 29 is Rendered Obvious by Tegal in View of
`Matsumura, Narita, and Ooshio Under 35 U.S.C.
`§103(a)
`
`
`Prior Art References:
` European Patent Application No. 90304724.9 (Tegal)
` U.S. Patent No. 5,151,871 (Matsumura)
` U.S. Patent No. 4,913,790 (Narita)
` U.S. Patent No. 4,645,218 (Ooshio)
`
`IPR2015-01766
`Petitioner: Lam Research Corp.
`Ground
`Assertion
`
`1
`
`2
`
`3
`
`Claims 27, 31, and 32 are Rendered Obvious by
`Hwang in View of Tegal, Matsumura, and Narita
`Under 35 U.S.C. §103(a)
`Claim 34 is Rendered Obvious by Nakamura in
`View of Tegal, Matsumura, and Narita Under 35
`U.S.C. §103(a)
`Claims 37, 40, 41, 44, 47, 48, and 50 are Rendered
`Obvious by Wang in View of Tegal, Matsumura
`and Narita Under 35 U.S.C. §103(a)
`
`Institution
`Decision
`Instituted
`
`Instituted
`
`Institution
`Decision
`Denied
`
`Denied
`
`Denied
`
`
`Prior Art References:
` European Patent Application No. 90304724.9 (Tegal)
` U.S. Patent No. 5,151,871 (Matsumura)
` U.S. Patent No. 4,913,790 (Narita)
` U.S. Patent No. 5,174,856 (Hwang)
` U.S. Patent No. 5,316,616 (Nakamura)
`
`
`
`
`
`3
`
`

`
`Petitions Directed Toward
`U.S. Patent No. RE40,264
`
`IPR2015-01768
`Petitioner: Lam Research Corp.
`Ground
`Assertion
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`Claims 56-58 are Rendered Obvious by Tegal,
`Matsumura, Narita, Thomas, and ‘485 Wang
`Under 35 U.S.C. §103(a)
`Claims 60, 62, 63, and 71 are Rendered Obvious by
`Tegal, Matsumura, Narita, Thomas, and Fischl
`Under 35 U.S.C. §103(a)
`Claims 51, 55, and 68 are Rendered Obvious by
`Tegal, Matsumura, Narita, and Thomas Under 35
`U.S.C. §103(a)
`Claims 56 and 59 are Rendered Obvious by Tegal,
`Matsumura, Narita, ‘391 Wang, Thomas, and
`‘485 Wang Under 35 U.S.C. §103(a)
`Claim 61 is Rendered Obvious by Tegal, in View of
`Matsumura, Narita, Thomas, Fischl, and Ooshio
`Under 35 U.S.C. §103(a)
`Claim 70 is Rendered Obvious by Tegal in View of
`Matsumura, Narita, Thomas, Fischl, and Hwang
`Under 35 U.S.C. §103(a)
`
`Institution
`Decision
`Instituted
`
`Instituted
`
`Instituted
`
`Instituted
`
`Instituted
`
`Instituted
`
`
`Prior Art References:
` European Patent Application No. 90304724.9 (Tegal)
` U.S. Patent No. 5,151,871 (Matsumura)
` U.S. Patent No. 4,913,790 (Narita)
` U.S. Patent No. 4,680,086 (Thomas)
` U.S. Patent No. 5,219,485 (‘485 Wang)
` D.S. Fischl, G.W. Rodrigues, and D.W. Hess, Etching of Tungsten and
`Tungsten Silicide by Chlorine Atoms published in August 1998 by the Journal
`of Electrochemical Society in Vol. 135, No. 8 (Fischl)
` U.S. Patent No. 4,992,391 (‘391 Wang)
` U.S. Patent No. 5,174,856 (Hwang)
` U.S. Patent No. 4,645,218 (Ooshio)
`
`
`
`
`
`4
`
`

`
`Petitions Directed Toward
`U.S. Patent No. RE40,264
`
`IPR2016-0468
`Petitioner: Lam Research Corp.
`Ground
`Assertion
`
`1
`
`2
`
`3
`
`4
`
`Claims 13-21, 23, 64, and 65 are Rendered Obvious
`by Kadomura in View of Moslehi Under 35 U.S.C.
`§103(a)
`Claim 22 is Rendered Obvious by Kadomura in
`View of Moslehi Under 35 U.S.C. §103(a)
`Claim 24 is Rendered Obvious by Kadomura in
`View of Moslehi, and Collins Under 35 U.S.C.
`§103(a)
`Claims 25 and 26 are Rendered Obvious by
`Kadomura in View of Moslehi, and Mahawili
`Under 35 U.S.C. §103(a)
`
`
`Prior Art References:
` U.S. Patent No. 6,063,710 (Kadomura)
` U.S. Patent No. 5,192,849 (Moslehi)
` European Patent Application No. 93309608.3 (Collins)
` U.S. Patent No. 5,059,770 (Mahawili)
`
`Institution
`Decision
`Denied
`
`Denied
`
`Denied
`
`Denied
`
`
`
`5
`
`
`
`
`
`

`
`Petitions Directed Toward
`U.S. Patent No. RE40,264
`
`IPR2016-0469
`Petitioner: Lam Research Corp.
`Ground
`Assertion
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`Claims 51-58 and 68-69 are Rendered Obvious by
`Kadomura, ‘485 Wang, and Kawamura Under 35
`U.S.C. §103(a)
`Claim 59 is Rendered Obvious by Kadomura, ‘485
`Wang, Kawamura, ‘391 Wang, and Thomas
`Under 35 U.S.C. §103(a)
`Claims 60-61 and 71 are Rendered Obvious by
`Kadomura, Kawamura, ‘485 Wang, and Fischl
`and Under 35 U.S.C. §103(a)
`Claim 62 is Rendered Obvious by Kadomura,
`Kawamura, ‘485 Wang, Fischl, and Tegal and
`Under 35 U.S.C. §103(a)
`Claim 63 is Rendered Obvious by Kadomura,
`Kawamura, ‘485 Wang, Fischl, and Narita and
`Under 35 U.S.C. §103(a)
`Claim 70 is Rendered Obvious by Kadomura, ‘485
`Wang, Kawamura, Fischl, and Hwang and Under
`35 U.S.C. §103(a)
`
`Institution
`Decision
`Denied
`
`Denied
`
`Denied
`
`Denied
`
`Denied
`
`Denied
`
`
`Prior Art References:
` U.S. Patent No. 6,063,710 (Kadomura)
` U.S. Patent No. 5,219,485 (‘485 Wang)
` U.S. Patent No. 5,892,207 (Kawamura)
` D.S. Fischl, G.W. Rodrigues, and D.W. Hess, Etching of Tungsten and
`Tungsten Silicide by Chlorine Atoms published in August 1998 by the Journal
`of Electrochemical Society in Vol. 135, No. 8 (Fischl)
` European Patent Application No. 90304724.9 (Tegal)
` U.S. Patent No. 4,913,790 (Narita)
` U.S. Patent No. 4,992,391 (‘391 Wang)
` U.S. Patent No. 4,680,086 (Thomas)
` U.S. Patent No. 5,174,856 (Hwang)
`
`
`
`
`
`6
`
`

`
`Petitions Directed Toward
`U.S. Patent No. RE40,264
`
`Institution
`Decision
`Denied
`
`Denied
`
`Denied
`
`IPR2016-0470
`Petitioner: Lam Research Corp.
`Ground
`Assertion
`
`1
`
`2
`
`3
`
`Claims 27-29, 31-46, 50, 66, and 67 are Rendered
`Obvious by Kadomura in View of ‘485 Wang, and
`Kawamura Under 35 U.S.C. §103(a)
`Kadomura in View of ‘485 Wang, Kawamura,
`and Tegal Teaches All the Limitations of
`Dependent Claims 30 and 49
`Kadomura in View of EP Wang and Kawamura
`Teaches All the Limitations of Dependent Claims
`37, 47, and 48
`
`
`Prior Art References:
` U.S. Patent No. 6,063,710 (Kadomura)
` U.S. Patent No. 5,219,485 (‘485 Wang)
` European Patent Application No. 90304724.9 (Tegal)
` U.S. Patent No. 5,892,207 (Kawamura)
` European Patent Application No. 87311193.4 (EP Wang)
`
`
`
`
`
`7
`
`

`
`Petitions Directed Toward
`U.S. Patent No. RE40,264
`
`IPR2016-01510
`Petitioner: Samsung Electronics Co., Ltd.
`Ground
`Assertion
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`Okada I, Incropera, and Anderson Render Claims
`13, 15, 16, 22, and 64 Obvious
`
`Okada I, Incropera, Anderson, and Thomas
`Render Claim 14 Obvious
`Okada I, Incropera, Anderson, and Narita Render
`Claim 17 Obvious
`Okada I, Incropera, Anderson, and Yin Render
`Claim 18 Obvious
`Okada I, Incropera, Anderson, and Ishikawa
`Render Claims 19 and 20 Obvious
`Okada I, Incropera, Anderson, and Kadomura
`Render Claims 21 and 23 Obvious
`Okada I, Incropera, Anderson, Kadomura, and
`Okada II Render Claim 24 Obvious
`Okada I, Incropera, Anderson, and Mahawili
`Render Claims 25 and 26 Obvious
`Okada I, Incropera, Anderson, and Matsumura
`Render Claim 65 Obvious
`
`Institution
`Decision
`Pending (Patent
`Owner’s
`Preliminary
`Response Filed
`11/25/16)
`Pending
`
`Pending
`
`Pending
`
`Pending
`
`Pending
`
`Pending
`
`Pending
`
`Pending
`
`
`Prior Art References:
` Japanese Patent Publication No. H5-136095 (Okada I)
` Frank P. Incropera et al., Fundamentals of Heat and Mass Transfer, 3d ed., John
`Wiley and Sons Inc., 1990 (Incropera)
` U.S. Statutory Invention Registration No. H1145 (Anderson)
` U.S. Patent No. 4,680,086 (Thomas)
` U.S. Patent No. 5,876,119 (Ishikawa)
` European Publication No. 0665575 (Yin)
` U.S. Patent No. 6,063,710 (Kadomura)
` Japanese Patent Publication No. H5-243191 (Okada II)
` U.S. Patent No. 5,059,770 (Mahawili)
` U.S. Patent No. 5,151,871 (Matsumura)
`
`
`
`
`
`8
`
`

`
`Petitions Directed Toward
`U.S. Patent No. RE40,264
`
`Institution
`Decision
`Pending (Patent
`Owner’s
`Preliminary
`Response Filed
`11/25/16)
`Pending
`
`Pending
`
`Pending
`
`IPR2016-01512
`Petitioner: Samsung Electronics Co., Ltd.
`Ground
`Assertion
`
`1
`
`2
`
`3
`
`4
`
`Kadomura and Matsumura Render Obvious
`Claims 27, 32, 37, and 40
`
`Kadomura, Matsumura, and Narita Render
`Obvious Claims 31 and 50
`Kadomura, Matsumura, and Wang I Render
`Obvious Claims 27, 34, 37, 41, 44
`Kadomura, Matsumura, Wang I, and Wang II
`Render Obvious Claims 47 and 48
`
`
`Prior Art References:
` U.S. Patent No. 6,063,710 (Kadomura)
` U.S. Patent No. 5,151,871 (Matsumura)
` U.S. Patent No. 4,913,790 (Narita)
` U.S. Patent No. 5,219,485 (Wang I)
` European Patent Application No. 87311193.4 (Wang II)
`
`
`
`
`
`9
`
`

`
`Petitions Directed Toward
`U.S. Patent No. RE40,264
`
`IPR2017-0279
`Petitioners: Intel Corporation, GLOBALFOUNDRIES US, Inc.
`and Micron Technology, Inc.
`Ground
`
`Assertion
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`Claims 13-16, 18-19, 21-23, and 64-65 are obvious
`over Muller, Matsumura, Anderson, and Hinman
`Claims 19-20 are obvious over Muller,
`Matsumura, Anderson, Hinman, and Wright
`Claim 17 is obvious over Muller, Matsumura,
`Anderson, Hinman, and Kikuchi
`Claims 24-26 are obvious over Muller,
`Matsumura, Anderson, Hinman, and Moslehi
`‘849
`Claims 13-16, 18-23, and 64-65 are obvious over
`Kadomura, Matsumura, Anderson, and Hinman
`Claim17 is obvious over Kadomura, Matsumura,
`Anderson, Hinman, and Kikuchi
`Claims 24-26 are obvious over Kadomura,
`Matsumura, Anderson, Hinman, and Moslehi
`‘849
`Claim 15 is obvious over Kadomura, Matsumura,
`Anderson, Hinman, and Muller
`
`Institution
`Decision
`Pending (Petition
`Filed 12/2/16)
`Pending
`
`Pending
`
`Pending
`
`Pending
`
`Pending
`
`Pending
`
`Pending
`
`
`Prior Art References:
` U.S. Patent No. 5,605,600 (Muller)
` U.S. Patent No. 5,151,871 (Matsumura)
` U.S. Patent No. 5,226,056 (Kikuchi)
` U.S. Patent No. 6,063,710 (Kadomura)
` Wright, D.R. et al., A Closed Loop Temperature Control System for a Low-
`Temperature Etch Chuck, Advanced Techniques for Integrated Processing II,
`Vol. 1803 (1992) (Wright)
` U.S. Patent No. 5,192,849 (Moslehi ‘849)
` U.S. Patent No. 3,863,049 (Hinman)
` U.S. Statutory Invention Registration No. H1145 (Anderson)
`
`
`
`
`
`10
`
`

`
`Petitions Directed Toward
`U.S. Patent No. RE40,264
`
`IPR2017-0280
`Petitioners: Intel Corporation, GLOBALFOUNDRIES US, Inc.
`and Micron Technology, Inc.
`Ground
`
`Assertion
`
`1
`
`2
`
`3
`
`4
`
`5
`
`Claims 27, 29, 32, 34, 36, and 66 are obvious over
`Kadomura and Matsumura
`Claims 31 and 35 are obvious over Kadomura,
`Matsumura, and Kikuchi
`Claims 28, 30, 33, 51-55, 68, and 69 are obvious
`over Kadomura, Matsumura, and Muller
`Claims 27-28, 31-36, 51-54, 66, and 68-69 are
`obvious over Kikuchi and Matsumura
`Claims 29-30, 34, 55, and 68 are obvious over
`Kikuchi, Matsumura, and Muller
`
`Institution
`Decision
`Pending (Petition
`Filed 12/2/16)
`Pending
`
`Pending
`
`Pending
`
`Pending
`
`
`Prior Art References:
` U.S. Patent No. 5,605,600 (Muller)
` U.S. Patent No. 5,151,871 (Matsumura)
` U.S. Patent No. 5,226,056 (Kikuchi)
` U.S. Patent No. 6,063,710 (Kadomura)
`
`
`
`
`
`11
`
`

`
`Petitions Directed Toward
`U.S. Patent No. RE40,264
`
`IPR2017-0281
`Petitioners: Intel Corporation, GLOBALFOUNDRIES US, Inc.
`and Micron Technology, Inc.
`Ground
`
`Assertion
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`Claims 37-46 are obvious over Kadomura and
`Matsumura
`Claims 40, 42, 45, 49, and 67 are obvious over
`Kadomura, Matsumura, and Muller
`Claim 50 is obvious over Kadomura, Matsumura,
`and Kikuchi
`Claims 37-46, 50, and 67 are obvious over Kikuchi
`and Matsumura
`Claims 41 and 49 are obvious over Kikuchi,
`Matsumura, and Muller
`Claims 37 and 47-48 are obvious over Moslehi
`‘824, Matsumura, and Oka
`
`Institution
`Decision
`Pending (Petition
`Filed 12/2/16)
`Pending
`
`Pending
`
`Pending
`
`Pending
`
`Pending
`
`
`Prior Art References:
` U.S. Patent No. 5,605,600 (Muller)
` U.S. Patent No. 5,151,871 (Matsumura)
` U.S. Patent No. 5,226,056 (Kikuchi)
` U.S. Patent No. 6,063,710 (Kadomura)
` U.S. Patent No. 5,446,824 (Moslehi ‘824)
` U.S. Patent No. 6,235,563 (Oka)
`
`
`
`
`
`12
`
`

`
`Petitions Directed Toward
`U.S. Patent No. RE40,264
`
`IPR2017-0282
`Petitioners: Intel Corporation, GLOBALFOUNDRIES US, Inc.
`and Micron Technology, Inc.
`Ground
`
`Assertion
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`Claims 56 and 58 are obvious over Kadomura and
`Matsumura
`Claim 57 is obvious over Kadomura, Matsumura,
`and Muller
`Claims 59-61 and 71 are obvious over Kadomura,
`Matsumura, and Wang
`Claim 62 is obvious over Kadomura, Matsumura,
`Muller, and Wang
`Claims 63 and 70 are obvious over Kadomura,
`Matsumura, Kikuchi, and Wang
`Claims 56-62 and 71 are obvious over Muller,
`Matsumura, and Wang
`Claims 63 and 70 are obvious over Muller,
`Matsumura, Wang, and Kikuchi
`
`Institution
`Decision
`Pending (Petition
`Filed 12/2/16)
`Pending
`
`Pending
`
`Pending
`
`Pending
`
`Pending
`
`Pending
`
`
`Prior Art References:
` U.S. Patent No. 5,605,600 (Muller)
` U.S. Patent No. 5,151,871 (Matsumura)
` U.S. Patent No. 5,226,056 (Kikuchi)
` U.S. Patent No. 6,063,710 (Kadomura)
` U.S. Patent No. 4,992,391 (Wang)
`
`
`
`
`13
`
`

`
`
`
`Petitions Directed Toward
`U.S. Patent No. 6,017,221
`
`IPR2015-01767
`Petitioner: Lam Research Corp.
`Ground
`Assertion
`
`1
`
`2
`
`3
`
`4
`
`5
`
`Claims 1 and 5-7 are Anticipated by Lieberman93,
`or alternatively Lieberman94, Under 35 U.S.C.
`§102(b)
`Claims 1 and 5-7 are Rendered Obvious by
`Lieberman93, or alternatively Lieberman94, in
`View of Dible Under 35 U.S.C. §103(a)
`Claims 2-3 are Rendered Obvious by Lieberman93,
`or alternatively Lieberman94, in View of Knapp,
`or, in the alternative, by Lieberman in View of
`Dible and Knapp Under 35 U.S.C. §103(a)
`Claim 4 is Rendered Obvious by Lieberman93, or
`alternatively Lieberman94, in View of Collins, or
`Alternatively in View of Dible and Collins Under
`35 U.S.C. §103(a)
`Claim 7 is Rendered Obvious by Lieberman93, or
`Alternatively Lieberman94, in View of Hopwood,
`or Alternatively in View of Dible and Hopwood,
`Under 35 U.S.C. §103(a)
`
`Institution
`Decision
`Instituted
`
`Denied
`
`Denied
`
`Instituted
`
`Instituted
`
`
`Prior Art References:
` Michael A. Lieberman and Richard A. Gottscho, Design of High Density
`Plasma Sources for Materials Processing, UNIVERSITY OF CALIFORNIA,
`BERKELEY TECH. REPORT NO. UCB/ERL M93/3 (Jan. 11, 1993) (Lieberman93)
` U.S. Patent No. 5,573,595 (Dible)
` U.S. Patent No. 4,877,999 (Knapp)
` U.S. Patent No. 5,065,118 (Collins)
` J. Hopwood, Review of Inductively Coupled Plasmas for Plasma Processing,
`Plasma Sources Sci. Technol. 1 (1991) (Hopwood)
` Michael A. Lieberman and Richard A. Gottscho, Design of High-Density
`Plasma Sources for Materials Processing, PLASMA SOURCES FOR THIN FILM
`DEPOSITION AND ETCHING (Physics of Thin Films Vol. 18), Aug. 1994
`(Lieberman94)
`
`
`14
`
`

`
`Petitions Directed Toward
`U.S. Patent No. 6,017,221
`
`IPR2017-0391
`Petitioner: Micron Technology, Inc., Intel Corporation,
`and GLOBALFOUNDRIES U.S, Inc.
`Ground
`Assertion
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`Claims 1 and 5-7 are Rendered Obvious by
`Lieberman Under 35 U.S.C. §103(a)
`Claims 1 and 5-7 are Rendered Obvious by
`Lieberman in View of Dible Under 35 U.S.C.
`§103(a)
`Claims 2-3 are Rendered Obvious by Lieberman
`(Ground 1) or Lieberman in View of Dible
`(Ground 2 Combination), in view of Hanawa Under
`35 U.S.C. §103(a)
`Claim 4 is Rendered Obvious by Lieberman in
`View of Collins, or Alternatively in View of Dible
`and Collins, Under 35 U.S.C. §103(a)
`Claims 1, 5-7 are Rendered Obvious by Qian Under
`35 U.S.C. §103(a)
`Claims 2-3 are Rendered Obvious by Qian in View
`of Hanawa Under 35 U.S.C. §103(a)
`Claim 4 is Rendered Obvious by Qian in View of
`Collins Under 35 U.S.C. §103(a)
`
`Institution
`Decision
`Pending (Petition
`Filed 12/2/16)
`Pending
`
`Pending
`
`Pending
`
`Pending
`
`Pending
`
`Pending
`
`
`Prior Art References:
` Michael A. Lieberman and Richard A. Gottscho, Design of High-Density
`Plasma Sources for Materials Processing (1994) (Lieberman)
` U.S. Patent No. 5,573,595 (Dible)
` U.S. Patent No. 5,065,118 (Collins)
` U.S. Patent No. 5,683,539 (Qian)
` U.S. Patent No. 5,688,357 (Hanawa)
`
`15
`
`
`
`
`
`

`
`
`
`Petitions Directed Toward
`U.S. Patent No. 5,711,849
`
`IPR2016-0466
`Petitioner: Lam Research Corp.
`Ground
`Assertion
`
`1
`
`2
`
`3
`
`Claims 26-28 Are Obvious Over Battey Under 35
`U.S.C. §103(a)
`Claims 1-3, 5, 7-12, 14, 16-21 and 29 are Rendered
`Obvious by Battey in View of Galewski Under 35
`U.S.C. §103(a)
`Claims 4, 6, 13, 15, and 22-25 are Rendered
`Obvious by Battey in View of Galewski and Sawin
`Under 35 U.S.C. §103(a)
`
`Institution
`Decision
`Denied
`
`Denied
`
`Denied
`
`
`Prior Art References:
` James F. Battey, The Effects of Geometry on Diffusion-Controlled Chemical
`Reaction Rates in a Plasma, JOURNAL OF THE ELECTROCHEMICAL SOCIETY:
`SOLID-STATE SCIENCE AND TECHNOLOGY, Vol 124, No. 3 (March 1977)
`(Battey)
` Carl Galewski and William G. Oldham, Modeling of a High Throughput Hot-
`Wall Reactor for Selective Epitaxial Growth of Silicon, IEEE TRANSACTIONS
`ON SEMICONDUCTOR MANUFACTURING, Vol. 5, No. 3 (August 1992) (Galewski)
` U.S. Patent No. 5,450,205 (Sawin)
`
`
`
`16
`
`

`
`Petitions Directed Toward
`U.S. Patent No. 5,711,849
`
`IPR2017-0392
`Petitioners: Intel Corporation, GLOBALFOUNDRIES US, Inc.
`and Micron Technology, Inc.
`Ground
`
`Assertion
`
`1
`
`2
`
`Claims 1-29 of the ‘849 Patent are Unpatentable as
`Obvious Over Alkire in View of Kao
`Claims 1-29 of the ‘849 Patent are Unpatentable as
`Obvious Over Alkire in View of Kao and Flamm
`
`Institution
`Decision
`Pending (Petition
`Filed 12/4/16)
`Pending
`
`
`Prior Art References:
` Alkire et al., Transient Behavior During Film Removal in Diffusion-Controlled
`Plasma Etching, JOURNAL OF THE ELECTROCHEMICAL SOCIETY: SOLID-STATE
`SCIENCE AND TECHNOLOGY (March 1985) (Alkire)
` Kao et al., Analysis of Nonuniformities in the Plasma Etching of Silicon with
`CF4/O2, JOURNAL OF THE ELECTROCHEMICAL SOCIETY, Vol. 137 No. 3 (March
`1990) (Kao)
` Flamm et al., The Reaction of Flourine Atoms with Silicon, Journal of Applied
`Physics, Vol. 52 No. 5 (May 1981) (Flamm)
`
`
`
`IPR2017-0406
`Petitioners: Intel Corporation, GLOBALFOUNDRIES US, Inc.
`and Micron Technology, Inc.
`Ground
`
`Assertion
`
`1
`
`Claims 1-29 of the ‘849 Patent are Unpatentable as
`Obvious Over Alkire in View of Galewski
`
`Institution
`Decision
`Pending (Petition
`Filed 12/4/16)
`
`
`Prior Art References:
` Alkire et al., Transient Behavior During Film Removal in Diffusion-Controlled
`Plasma Etching, JOURNAL OF THE ELECTROCHEMICAL SOCIETY: SOLID-STATE
`SCIENCE AND TECHNOLOGY (March 1985) (Alkire)
` Carl Galewski and William G. Oldham, Modeling of a High Throughput Hot-
`Wall Reactor for Selective Epitaxial Growth of Silicon, IEEE TRANSACTIONS
`ON SEMICONDUCTOR MANUFACTURING, Vol. 5, No. 3 (August 1992) (Galewski)
`
`
`
`
`
`17
`
`

`
`
`
`
`
`
`
`Status of District Court Litigations
`
`Lam Research Corp. v. Daniel L. Flamm, 5:15-cv-01277-BLF
`
`This case, involving only the Patent Owner and the Petitioner, has been
`
`dismissed pursuant to a stipulation between the Parties. A grant of the Joint
`
`Motions would have no impact on this case.
`
`Daniel L. Flamm v. GLOBALFOUNDRIES U.S., Inc., 5:16-cv-01578-
`BLF; Daniel L. Flamm v. Intel Corporation, 5:16-cv-01579-BLF; Daniel
`L. Flamm v. Maxim Integrated Products, Inc., 5:16-cv-01580-BLF;
`Daniel L. Flamm v. Micron Technology, Inc., 5:16-cv-01581-BLF; and
`Daniel L. Flamm v. Samsung Electronics Co., Ltd., Samsung Electronics
`America, Inc., Samsung Semiconductor, Inc., and Samsung Austin
`Semiconductor, LLC, 5:16-cv-02252-BLF
`
`These cases were stayed on August 8, 2016. Copies of the Court's Orders
`
`
`
`implementing the stay are attached as Exhibits A and B.
`
`
`
`
`
`Stage Of The Proceedings
`
`The Court found that these cases are in their early stages. Ex. A at 6. The
`
`Court has not yet set a schedule for these cases. Id. at 5-6. No documents have
`
`been produced and no depositions have occurred. Id. at 6.
`
`
`
`
`
`Impact On Litigation If Joint Motions Were Granted
`
`Patent Owner has filed motions to voluntarily dismiss claims relating to
`
`defendants' use of Petitioner's tools. However, because defendants use tools other
`
`than Petitioner's tools, the '264, '221, and '849 patents will continue to be asserted
`
`18
`
`

`
`
`
`in these litigations, even after the dismissals of claims relating to defendants' use of
`
`Petitioner's tools are entered by the Court.
`
`
`
`The Court conditioned the stay of these litigations upon each of the
`
`defendants agreeing to be bound by an appropriate estoppel:
`
`a. For any customer that had involvement in [Petitioner's] IPR
`petitions, the stay is conditioned on that customer’s consent to
`be estopped from raising any invalidity defense that Lam raised
`or reasonably could have raised in the IPR proceedings.
`
`b. For any customer that did not have any involvement in
`[Petitioner's] IPR petitions, the stay is condition[ed] on that
`customer’s consent to be estopped from asserting any invalidity
`contention that was actually raised and finally adjudicated in
`the IPR proceedings.
`
`Ex. A at 11. Defendants each agreed to be bound by the appropriate estoppels. Ex.
`
`B. If the Board were to grant the Joint Motions, no estoppels would arise because
`
`there would have been no final adjudication of Lam's IPRs.
`
`
`
`Finally, the stay is at the discretion of the Court. The Court's order does not
`
`automatically lift the stay, but requires the Patent Owner and the defendants to file
`
`a joint status report within 21 days of the PTO's final decisions on the IPR petitions
`
`(or presumably earlier, if the Board were to decide not to issue final decisions on
`
`the IPR petitions). Ex. B. The Parties expect that the Court would decide whether
`
`to lift or extend the stay after the joint status report was filed.
`
`19
`
`
`
`
`
`
`
`

`
`
`
`
`
`
`
`
`
`
`
`
`
`Date: December 9, 2016
`
`
`
`By: /Michael Fleming/
`Michael Fleming (Reg. No. 67,933)
`Samuel K. Lu, (Reg. No.40,707)
`Kamran Vakili (Reg. No.64,825)
`Morgan Chu (pro hac vice)
`Talin Gordnia (pro hac vice)
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, California 90067-4276
`Tel: (310) 277-1010
`Email: mfleming@irell.com;
`slu@irell.com; mchu@irell.com;
`tgordnia@irell.com
`
`Counsel for Petitioner Lam Research
`Corp.
`
`Respectfully Submitted,
`
`
`By: /Christopher Frerking/
`Christopher Frerking, reg. no. 42,557
`174 Rumford Street
`Concord, New Hampshire 03301
`Tel: (603) 706-3127
`Email: chris@ntknet.com
`
`George Summerfield (pro hac vice)
`STADHEIM & GREAR, LTD.
`400 N. Michigan Ave., Suite 2200
`Chicago, Illinois 60611
`Tel: (312) 755-4400
`Email:
`summerfield@stadheimgrear.com
`
`Counsel for Patent Owner Daniel L.
`Flamm
`
`
`20
`
`
`
`
`
`

`
`
`
`EXHIBIT A
`EXHIBIT A
`
`

`
`Case 5:15-cv-01277-BLF Document 142 Filed 08/08/16 Page 1 of 11
`
`
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`SAN JOSE DIVISION
`
`Case No. 15-cv-01277-BLF
`Related Case Nos. 16-cv-01578-BLF; 16-cv-
`01579-BLF; 16-cv-01580-BLF; 16-cv-
`01581-BLF; 16-cv-02252-BLF
`
`ORDER (1) CONDITIONALLY
`GRANTING JOINT MOTION TO STAY
`PROCEEDINGS (2) DENYING
`WITHOUT PREJUDICE MOTION TO
`DISMISS
`
`[RE: ECF 134]
`
`
`
`
`
`
`
`
`
`
`
`LAM RESEARCH CORPORATION,
`
`Plaintiff,
`
`v.
`
`DANIEL L. FLAMM, et al.,
`
`Defendants.
`
`
`DANIEL L. FLAMM,
`
`Plaintiff,
`
`v.
`
`GLOBAL FOUNDRIES U.S. INC.,
`
`Defendant.
`
`
`DANIEL L. FLAMM,
`
`Plaintiff,
`
`v.
`
`INTEL CORPORATION,
`
`Defendant.
`
`
`DANIEL L. FLAMM,
`
`Plaintiff,
`
`v.
`
`MAXIM INTEGRATED PRODUCTS,
`INC.,
`
`Defendant.
`
`
`
`
`
`
`
`
`
`
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`

`
`Case 5:15-cv-01277-BLF Document 142 Filed 08/08/16 Page 2 of 11
`
`
`
`
`
`
`
`
`DANIEL L. FLAMM,
`
`Plaintiff,
`
`v.
`
`MICRON TECHNOLOGY, INC.,
`
`Defendant.
`
`
`DANIEL L. FLAMM,
`
`Plaintiff,
`
`v.
`
`SAMSUNG ELECTRONICS CO LTD, et
`al.,
`
`Defendants.
`
`
`
`
`
`The above-captioned patent infringement actions involve the patent holder, Dr. Daniel L.
`
`Dr. Flamm (“Dr. Flamm”) who owns patents relating to methods used in the fabrication of
`
`semiconductors; the manufacturer, Lam Research Corporation (“Lam”) who makes and sells
`
`semiconductor fabrication equipment; and a number of Lam’s customers including,
`
`GLOBALFOUNDRIES U.S. Inc. (“GLOBALFOUNDRIES”), Intel Corporation (“Intel”), Maxim
`
`Integrated Products, Inc. (“Maxim”), Micron Technology, Inc. (“Micron”), and Samsung
`
`Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung Semiconductor, Inc., and
`
`Samsung Austin Semiconductor, LLC (collectively, “Samsung”) (collectively together,
`
`“customers”) who use Lam’s products. The Court refers to Lam and its customers, collectively as
`
`“chipmakers.” Case No. 15-1277 is a declaratory judgment action filed by Lam against Dr.
`
`Flamm asserting non-infringement of Dr. Flamm’s U.S. Patent Nos. 5,711,849 (“the ’849 patent”),
`
`6,017,221 (“the ’221 patent”), and RE 40,264 (“the ’264 patent”) (collectively, the “asserted
`
`patents”). The remaining cases are Dr. Flamm’s actions claiming infringement of the asserted
`
`patents against each of the customers.
`
`Pending before the Court are Dr. Flamm’s motion to dismiss Lam’s declaratory judgment
`
`action and a joint motion to stay by the chipmakers in all of the cases. For the reasons stated
`
`2
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`

`
`Case 5:15-cv-01277-BLF Document 142 Filed 08/08/16 Page 3 of 11
`
`
`
`below, the Court CONDITIONALLY GRANTS the joint motion to stay. As a result, the Court
`
`DENIES without prejudice Dr. Flamm’s motion to dismiss. When the stay is lifted, Dr. Flamm
`
`may re-notice its motion to dismiss or file a new motion to dismiss.
`
`I. BACKGROUND1
`
`
`
`Dr. Flamm is the owner and inventor of the ’849, ’221, and ’264 patents, which claim
`
`methods used in manufacturing semiconductors. Exhs. A-C to SAC, ECF 52-4-52-6. Lam
`
`designs, manufactures, and sells semiconductor processing tools that are used to fabricate
`
`semiconductors. SAC ¶ 2, ECF 52-8; Ans. to SAC ¶ 2, ECF 66.
`
`
`
`Around September 2014, Dr. Flamm’s attorneys sent letters to some of Lam’s
`
`customers accusing them of infringing the patents-in-suit. SAC ¶¶ 29-30, Ans. to SAC ¶¶ 29-
`
`30. Lam, alleging that it may be required to indemnify its customers, SAC ¶ 47, filed Case No.
`
`15-1277 seeking declaratory judgment of non-infringement on its own part and in regards to its
`
`customers. Dr. Flamm responded by filing a Third-Party Complaint against the customers
`
`GLOBALFOUNDRIES, Intel, Maxim, and Micron. Third-Party Complaint, ECF 50-4. Dr.
`
`Flamm also filed a complaint in the Western District of Texas against Lam’s customer
`
`Samsung. Case No. 1:15-cv-00613 (W.D. Tx.) at ECF 1. The Court severed Dr. Flamm’s claims
`
`against GLOBALFOUNDRIES, Intel, Maxim, and Micron, ECF 120, and Dr. Flamm filed new
`
`complaints against each of those entities, Case No. 15-1578, 15-1579, 15-1580, 15-1581. On
`
`April 22, 2016, the court in the Western District of Texas granted Samsung’s motion to transfer
`
`the case to the Northern District of California. Case No. 15-2252, ECF 53.
`
`
`
`At the same time the parties were engaging in litigation in the district courts, in August
`
`2015, Lam filed five petitions for inter partes review directed to all claims of the ’221 and ’264
`
`patents. In January 2016, Lam filed four additional IPR petitions that are directed towards the
`
`’849 and ’264 patents. The status of each of the IPR petitions is summarized in the chart below:
`
`
`
`
`1 All citations refer to docket entries in Case No. 15-1277 unless otherwise specified.
`3
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`

`
`Case 5:15-cv-01277-BLF Document 142 Filed 08/08/16 Page 4 of 11
`
`
`
`
`
`Patent
`
`’849
`’221
`
`’264
`
`IPR Request
`Covering Asserted
`Claim
`2016-00466
`2015-01767
`2015-01759
`2015-01764
`2015-01766
`2015-01768
`2016-00468
`2016-00469
`2016-00470
`
`Instituted?
`
`No
`Yes
`No
`Yes
`No
`Yes
`No
`No
`No
`
`Anticipated Date of
`Final Written
`Decision
`
`February 24, 2017
`
`February 24, 2017
`
`February 24, 2017
`
`
`
`
`
`
`Although the customers did not request any of the instituted IPRs or file motions to join
`
`them, they have represented that they are willing to agree not to reargue invalidity grounds in the
`
`above-captioned cases that the PTAB considers and overrules in final written decisions on the
`
`instituted IPR petitions. Reply 1, 3, ECF 138.
`
`II. LEGAL STANDARD
`
`
`
`A district court has inherent power to manage its own docket and stay proceedings,
`
`“including the authority to order a stay pending conclusion of a PTO reexamination.” Ethicon,
`
`Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988). A court is under no obligation to stay
`
`proceedings pending parallel litigation in the PTAB. See Aylus Networks, Inc. v. Apple, Inc., No.
`
`C-13-4700 EMC, 2014 WL 5809053, at *1 (N.D. Cal. Nov. 6, 2014). The factors that courts in
`
`this district consider when determining whether to stay litigation are: “(1) whether discovery is
`
`complete and whether a trial date has been set; (2) whether a stay will simplify the issues in
`
`question and trial of the case; and (3) whether a stay would unduly prejudice or present a clear
`
`tactical disadvantage to the nonmoving party.” PersonalWeb Techs., LLC v. Apple, Inc., 69 F.
`
`Supp. 3d 1022, 1025 (N.D. Cal. 2014).
`
`III. DISCUSSION
`
`
`
`The parties dispute whether the Court should defer ruling on the motion to stay until Dr.
`
`Flamm’s motion to dismiss Lam’s Second Amended Complaint is resolved. Dr. Flamm argues
`
`that it would not be fair for the Court to stay proceedings without resolving the question of
`
`4
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`

`
`Case 5:15-cv-01277-BLF Document 142 Filed 08/08/16 Page 5 of 11
`
`
`
`whether federal subject matter jurisdiction has been established especially since the motion to
`
`dismiss was filed first. Opp. 2-3, ECF 137. The chipmakers argue that Dr. Flamm’s argument
`
`overlooks the fact that Dr. Flamm has admitted that regardless of the outcome of the motion to
`
`dismiss, subject matter jurisdiction will still exist over Lam’s declaratory judgment action. Reply
`
`1, ECF 138 (citing Mot. to Dismiss 4, ECF 64 (noting that “Lam successfully alleges the existence
`
`of a case or controversy regarding claim 10 of the ’