throbber
Paper 10
`
`Trials@uspto.gov
`571-272-7822 Entered: April 12, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TDK CORPORATION,
`Petitioner,
`
`v.
`
`LAMBETH MAGNETIC STRUCTURES LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00013
`Patent 7,128,988
`____________
`
`
`Before SALLY C. MEDLEY, BRIAN MURPHY, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`McGRAW, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`I. INTRODUCTION
`
`
`
`Petitioner, TDK Corporation, filed a Petition requesting an inter
`
`partes review of claims 1–3, 6–19, 21–31, 34, 38, and 39 of U.S. Patent No.
`
`7,128,988 B2 (Ex. 1001, “the ’988 patent”). Paper 2 (“Pet.”). Patent
`
`Owner, Lambeth Magnetic Structures, LLC filed a Preliminary Response.
`
`

`
`IPR 2016-00013
`Patent 7,128,988 B2
`
`
`Paper 6 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a),
`
`which provides that an inter partes review may not be instituted “unless
`
`. . . the information presented in the petition . . . shows that there is a
`
`reasonable likelihood that the petitioner would prevail with respect to at least
`
`1 of the claims challenged in the petition.”
`
`
`
`Upon consideration of the Petition and the Preliminary Response, we
`
`conclude the information presented does not show there is a reasonable
`
`likelihood that Petitioner would prevail in establishing the unpatentability of
`
`claims 1–3, 6–19, 21–31, 34, 38, and 39. Accordingly, we do not authorize
`
`an inter partes review.
`
`A. Related Proceedings
`
`According to Patent Owner, the ’988 patent is involved in the
`
`following lawsuits:
`
`(1) Lambeth Magnetic Structures, LLC v. Toshiba Corp., Civil Action
`
`No. 2:14-cv-01526-CB (W.D. Pa.)(“Pennsylvania Action”). Pet. 1; Paper 5,
`
`2-3. On October 12, 2015, Patent Owner filed a motion seeking leave to
`
`amend its complaint to add TDK Corporation, TDK U.S.A. Corporation
`
`(“TDK USA”), TDK Corporation of America, Headway, Husko, Inc.
`
`(“Husko”), and SAE Magnetics (H.K.) Ltd. (“SAE”) as defendants in this
`
`action. Paper 5, 2-3.
`
`(2) Headway Technologies, Inc. v. Lambeth Magnetic Structures,
`
`LLC, Civil Action No. 2:15-cv-07987-DSF (C.D. Cal.). Id.
`
`B. The ’988 Patent (Ex. 1001)
`
`The ’988 patent, titled “Magnetic Material Structures, Devices and
`
`Methods” is directed to improving the magnetic properties in magnetic films
`
`2
`
`

`
`IPR 2016-00013
`Patent 7,128,988 B2
`
`
`and related devices by using a template to achieve a desired atomic structure
`
`for a magnetic film layer that exhibits uniaxial magnetic properties. See Ex.
`
`1001, Abstract. The ’988 patent explains that carefully controlling the
`
`epitaxial growth conditions of (110) crystalline textured bcc or bcc
`
`derivative (“bcc-d”) thin film materials on highly oriented (111) hexagonal
`
`atomic templates results in six crystalline variants with special orientational
`
`relationships. Id. at 14:48–52. The selection and growth of an exchange
`
`coupled subset of these variants results in a bcc-d layer forming a symmetry
`
`broken structure. Id. at 14:52–55. A subset of these bcc-d symmetry broken
`
`structures exhibit uniaxial behavior. See, e.g., id. at 20:14–23.
`
`C. Illustrative Claims
`
`Petitioner challenges claims 1–3, 6–19, 21–31, 34, 38, and 39. Claims
`
`1 and 27 are independent and reproduced below:
`
`1.
`
`
`
` A magnetic material structure comprising:
`
`a substrate;
`
`at least one bcc-d layer which is magnetic, forming a
`
`uniaxial symmetry broken structure; and
`
`at least one layer providing a (111) textured hexagonal
`
`atomic template disposed between said substrate and said bcc-d
`layer.
`
`
`
`27. A magnetic device having incorporated therein a
`magnetic material structure comprising:
`
`
`
`a substrate;
`
`at least one bcc-d layer which is magnetic, forming a
`
`uniaxial symmetry broken structure; and
`
`3
`
`

`
`IPR 2016-00013
`Patent 7,128,988 B2
`
`
`at least one layer providing a (111) textured hexagonal
`
`atomic template disposed between said substrate and said bcc-d
`layer.
`
`D. Claim Construction
`
`
`
`Petitioner argues, and Patent Owner does not dispute, that one skilled
`
`in the art would have understood the ordinary meaning of a “symmetry
`
`broken” structure is a “structure with unequal volumes of crystallographic
`
`variants in either a three or six variant system.” Pet. 14 (citing Ex. 1006,
`
`¶ 37); see Prelim. Resp. 28–32, 51–52. This construction is consistent with
`
`the Specification which states that a “symmetry broken” structure exists in
`
`the three variant system shown in FIG. 3 “[w]hen the volumes of the three
`
`variants are not equal” (Ex. 1001, 16:34–36) and in six variant systems that
`
`“do not contain an equal amount of all six of the (110) textured bcc-d
`
`variants” (id., 23:37–41). Accordingly, for purposes of this decision, we
`
`construe “symmetry broken” structure as a “structure with unequal volumes
`
`of crystallographic variants in either a three or six variant system.”
`
`E.
`
`Asserted Grounds of Unpatentability
`
`Petitioner argues the challenged claims are unpatentable based upon
`
`the following grounds:
`
`
`
`References
`
`Basis
`
`Challenged Claims
`
`Shen1 and Dill2
`
`Dill and Shen
`
`
`
`§ 103
`
`§ 103
`
`1 and 27
`1, 3, 6–11, 13, 14,
`17–19, 22, 24, 27–30,
`34, and 38
`
`1 J. Shen et al., Structural and magnetic phase transitions of Fe on stepped
`Cu (111), 56 Phys. Rev. B 134–43 (1997) (Ex. 1011, “Shen”).
`2 U.S. Patent No. 6,023,395, issued Feb. 8, 2000 (Ex. 1009, “Dill”).
`
`4
`
`

`
`IPR 2016-00013
`Patent 7,128,988 B2
`
`
`References
`
`Basis
`
`Challenged Claims
`
`Dill, Shen, and Heim3
`Dill, Shen, and Lambeth I4
`Dill, Shen, and Noguchi5
`
`
`Pet. 15.
`
`§ 103
`
`§ 103
`
`§ 103
`
`12, 15, 16, 21, and 23
`
`2, 25, 26, and 31
`
`39
`
`II. ANALYSIS
`
`Obviousness Claims 1 and 27
`
`Petitioner contends that independent claims 1 and 27 are unpatentable
`
`under 35 U.S.C. § 103 over the combination of Shen and Dill. Pet. 16–25
`
`(Ground 1: Shen in View of Dill); Pet. 25–33 (Ground 2: Dill in View of
`
`Shen). To support its contention, Petitioner provides explanations as to how
`
`the prior art allegedly meets each claim limitation of the challenged claims.
`
`Id. Petitioner also relies upon a Declaration of Dr. Robert Sinclair, who has
`
`been retained as an expert witness by Petitioner for the instant proceeding.
`
`Ex. 1006.
`
`A dispositive issue is whether the Petitioner has sufficiently
`
`established the cited art teaches or suggests a magnetic bcc-d layer forming a
`
`uniaxial “symmetry broken structure” recited in independent claims 1 and
`
`27.
`
`
`
`3 U.S. Patent No. 5,465,185, issued Nov. 7, 1995 (Ex. 1012, “Heim”).
`4 D.N. Lambeth, et al., Magnetic Media Performance: Control Methods for
`Crystalline Texture and Orientation, 517 Material Res. Soc’y Symp. Proc.,
`181–192 (1998) (Ex. 1013, Lambeth I).
`5 U.S. Patent No. 5,862,022, issued Jan. 19, 1999 (Ex. 1014, “Noguchi”).
`
`
`5
`
`

`
`IPR 2016-00013
`Patent 7,128,988 B2
`
`
`Petitioner relies solely upon Shen as teaching the bcc-d layer having a
`
`symmetry broken structure.6 Petitioner asserts Shen teaches crystallographic
`
`variants in a six variant system as Shen describes the Fe(110)(bcc) film as
`
`having “bcc (110) domains in the Kurdjumov-Sach (KS) orientation” and
`
`that these KS domains “reflect the six kinds of atomic relationship between
`
`the bcc(110) and fcc(111) structure[s] as shown in the bottom of Fig. 4.”
`
`Pet. 20 (citing Shen, Ex. 1011, p. 1377, ¶ 1, FIG. 4).
`
`Petitioner contends Shen discloses breaking the symmetry of the six
`
`KS variants, arguing Shen’s method of growing the Fe layer on the “steps”
`
`of the hexagonal Cu(111) layer results in “favoring two” of the six
`
`crystallographic KS variants. See Pet. 20, 28. Specifically, Petitioner
`
`explains that Shen states “growing the Fe layer [1b] on ‘steps’ of the
`
`hexagonal Cu(111) layer [1e] creates a ‘dominance of the two particular KS
`
`domains’ out of the ‘six kinds of atomic relationship between the bcc(100)
`
`and fcc(111).’” Pet. 20 (citing Ex. 1011, p. 137, ¶ 1); see also id. (citing
`
`FIG. 4, p. 136, ¶ 1, FIG. 2); Ex. 1006, ¶ 52 (citing Ex. 1011, p. 137 ¶ 1, FIG.
`
`4). Petitioner asserts that this happens because the two allegedly dominant
`
`(110) textured bcc variants of Fe are aligned with the two <011> directions
`
`corresponding to the steps on the Cu(111) layer. Id. at 20 (citing Ex. 1011,
`
`p. 137, ¶ 1, Fig. 2, p. 136, ¶ 1); see also Ex. 1006 (citing Ex. 1011, p. 137,
`
`¶1, FIG. 4). Petitioner’s expert, Dr. Sinclair, states “symmetry is broken
`
`
`
`6 Petitioner admits that Dill does not explicitly disclose a symmetry broken
`structure (Pet. 28, 34) and relies upon Shen for teaching this limitation (Pet.
`20, 28).
`7 Petitioner cites to the original page numbers of Ex. 1011. For consistency,
`we will use the same pagination as Petitioner.
`
`6
`
`

`
`IPR 2016-00013
`Patent 7,128,988 B2
`
`
`because of a preference for two of the (bcc) ferromagnetic layer’s six
`
`possible variants.” Ex. 1006, ¶ 52.
`
`Petitioner’s arguments and evidence do not sufficiently establish that
`
`a person of ordinary skill in the art would have understood that the Fe films
`
`of Shen exhibit a broken structure. Rather, Shen merely hypothesizes that
`
`the “two domain configurations which are parallel to the steps should be
`
`more favored as compared to the other domains” and that the dominance of
`
`two particular KS domains should, in principle, result in satellite spots on
`
`the LEED having different intensity. Ex. 1011, p. 137, ¶ 1 (emphasis
`
`added). However, Shen admits that the LEED data is inconclusive and does
`
`not show that this asymmetric growth has in fact occurred. Id. Specifically,
`
`Shen states:
`
`The dominance of the two particular KS domains should, in
`principle, make the corresponding satellite spots have different
`intensity as compared to the rest [of the] satellite spots.
`However, as a result of the limited resolution and the rather
`rough surface, it is difficult to conclude this from our LEED
`data.
`
`Id. (emphasis added).
`
`A review of the LEED pattern of the 2.7 ML film at a beam energy of
`
`90 eV of Shen appears to show six satellite spots reflecting all six of the six
`
`KS variants. Ex. 1011, p. 137 (describing upper left image of Fig. 4 and
`
`stating the “six satellite spots reflect the six kinds of atomic relationship
`
`between the bcc(110) and fcc(111) structure as shown in the bottom picture
`
`of Fig. 4”). Thus, the descriptions in Shen to which Petitioner and Dr.
`
`Sinclair direct attention, are not sufficient to indicate that the Fe layers do in
`
`7
`
`

`
`IPR 2016-00013
`Patent 7,128,988 B2
`
`
`fact exhibit a dominance of two of the KS domains or a symmetry broken
`
`structure.
`
`Petitioner also contends that the Fe films of Shen exhibit dramatically
`
`higher magnetization when they have the asserted symmetry broken (bcc)
`
`structure than they do with the (fcc) structure. Pet. 16 (citing Ex. 1001, p.
`
`134, ¶ 4 (5) and Ex. 1006, ¶ 52). Petitioner explains the symmetry breaking
`
`that occurs during the (fcc) to (bcc) transition causes a “‘four to five times’
`
`increase in magnetization of the Fe films.” Pet. 20 (citing Ex. 1011, p. 134,
`
`¶ 4(5)).
`
`However, Petitioner has not provided sufficient evidence to show that
`
`the described increase in magnetization in Shen is the result of symmetry
`
`breaking as opposed to the transition from an (fcc) structure to a (bcc)
`
`structure. For example, Petitioner has not identified where in Shen there is a
`
`description that an increase in magnetization of the Fe films is due to
`
`symmetry breaking. Rather paragraph 4 (5) on page 134 cited by Petitioner
`
`generally states that the magnetization of the Fe films sharply increase “in
`
`the fcc to bcc transformation regime” and that the increase in magnetization
`
`of the transformed bcc films is four to five times larger than the values
`
`extrapolated from the low thickness fcc Fe films. Similarly, Petitioner’s
`
`expert, Dr. Sinclair, merely states that the “structural transition includes
`
`symmetry breaking and causes ‘[t]he magnetization of the transformed bcc
`
`Fe films [to sharply increase by] about four to five times larger than the
`
`extrapolated value from the low thickness fcc Fe films.”. Ex. 1006, ¶ 52.
`
`Dr. Sinclair’s testimony is conclusory and does not present a factual basis
`
`for us to conclude that Shen’s increase in magnetization is due to symmetry
`
`breaking. Thus, Petitioner has not shown sufficiently whether the increase
`
`8
`
`

`
`IPR 2016-00013
`Patent 7,128,988 B2
`
`
`in magnetization is due to symmetry breaking or a transition from an fcc to a
`
`bcc structure.
`
`In connection with Petitioner’s arguments for Ground 2, Petitioner
`
`also asserts that Shen teaches that the symmetry breaking of the
`
`“(111)(fcc)(bcc) structure” of Shen “increases the magnetic field required to
`
`saturate the layer and contributes to the (bcc) layer’s uniaxial anisotropy.”
`
`Pet. 28 (citing Ex. 1011, p. 139; Ex. 1006, ¶¶ 48, 104). Petitioner’s claim
`
`chart cites to page 139, left column, which states: “With increasing
`
`thickness, the saturation field increases from 400 Oe for the 2.0-ML film to
`
`850 Oe for the 2.5-ML film.” Pet. 32. However, Petitioner does not explain
`
`how Shen’s teaching of increasing the saturation field from 400 Oe for the
`
`2.0-ML film to 850 Oe for the 2.5-ML film, or any other teaching on page
`
`139, teaches a bcc-d layer forming a uniaxial symmetry broken structure as
`
`required by claims 1 and 27.
`
`It is the Petitioner’s burden to explain how Shen allegedly teaches a
`
`bcc-d layer forming a uniaxial “symmetry broken structure.” Petitioner did
`
`not carry this burden. Accordingly, the record before us does not establish a
`
`reasonable likelihood that Petitioner would prevail in establishing that
`
`claims 1 and 27 would have been obvious over Shen and Dill.
`
`Obviousness Grounds for Dependent Claims Based on Dill and Shen
`or Dill and Shen combined with Heim, Lambeth or Noguchi
`
`Petitioner contends that claims 3, 6–11, 13, 14, 17–19, 22, 24, 28–30,
`
`
`
`34, 38, and 39, which depend directly or indirectly from either claim 1 or 27
`
`are unpatentable for obviousness over Dill and Shen. Pet. 33–43. Petitioner
`
`also contends that claims 12, 15, 16, 21, and 23 are unpatentable over Dill,
`
`Shen, and Heim; claims 2, 25, 26, and 31 are unpatentable over Dill, Shen,
`
`9
`
`

`
`IPR 2016-00013
`Patent 7,128,988 B2
`
`
`and Lambeth I; and claim 39 is unpatentable over Dill, Shen, and Noguchi.
`
`Pet. Pet. 43–59. As discussed above, Petitioner has not sufficiently shown
`
`that Shen or Dill, alone or in combination, teaches a magnetic bcc-d layer
`
`forming a uniaxial “symmetry broken structure” as required by the
`
`independent claims. Petitioner does not present any arguments that Heim,
`
`Lambeth I, or Noguchi teach the symmetry broken structure limitation,
`
`relying on the additional references only for the additional limitations recited
`
`in the dependent claims. See Pet. 43–59. Therefore, on this record, the
`
`information presented does not show a reasonable likelihood that Petitioner
`
`would prevail in establishing that claims 3, 6–11, 13, 14, 17–19, 22, 24, 28–
`
`30, 34, and 38 are unpatentable for obviousness over the combinations of
`
`references that include Dill and Shen.
`
`III. CONCLUSION
`
`For the foregoing reasons, we conclude that there is not a reasonable
`
`likelihood that Petitioner would prevail in challenging claims 1–3, 6–19, 21–
`
`31, 34, 38, and 39 of the ’988 patent.8
`
`IV. ORDER
`
`Accordingly, it is:
`
`ORDERED that the Petition is denied and no trial is instituted.
`
`
`
`8 Because we determine that Petitioner has not demonstrated a reasonable
`likelihood of prevailing in challenging claims 1–3, 6–19, 21–31, 34, 38, and
`39 of the ’988 patent for the reasons set forth above, we need not address
`Patent Owner’s remaining arguments.
`
`10
`
`

`
`11
`
`IPR 2016-00013
`Patent 7,128,988 B2
`
`
`FOR PETITIONER:
`
`Hector Gallegos
`Jon Bockman
`35704-988-IPR@mofo.com
`
`FOR PATENT OWNER:
`Orville Cockings
`ocockings@lernerdavid.com
`
`Gregory Gonsalves
`gonsalves@gonsalveslawfirm.com

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