`U.S. Patent No. 6,538,324
`
`
`Filed on behalf of Godo Kaisha IP Bridge 1
`
`By: Michael J. Fink (mfink@gbpatent.com)
`Greenblum & Bernstein, P.L.C.
`1950 Roland Clarke Place
`Reston, Virginia 20191
`Tel: (703) 716-1191
`Fax: (703) 716-1180
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.
`and GLOBALFOUNDRIES U.S. INC.,
`Petitioners,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`____________
`
`Case IPR2016-012491
`U.S. Patent No. 6,538,324
`____________
`
`
`PATENT OWNER’S MOTION FOR OBSERVATIONS REGARDING THE
`CROSS-EXAMINATION OF SANJAY K. BANERJEE, PH.D.
`
`
`
`
`
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`1 GlobalFoundries U.S. Inc.’s motion for joinder in Case IPR2017-00919 was
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`granted.
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`
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`Case IPR2016-01249 for
`U.S. Patent No. 6,538,324
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`Pursuant to the Scheduling Order dated December 21, 2016 (Paper 8), Patent
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`Owner provides the following observations on the cross-examination testimony of
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`Sanjay K. Banerjee, Ph. D., a reply declarant of Petitioner. The transcript of this
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`cross-examination testimony was previously filed as Exhibit 2044.
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`Observation No. 1:
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`
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`In Exhibit 2044, on p. 53:3-16, the witness testified that the broadest
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`reasonable interpretation of “composed of” as recited in the challenged claims of
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`the ‘324 patent and the proposed Substitute Claims (together “Claims”) means
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`“consisting essentially of” or “consisting of”:
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`Q So composed of can mean either consisting of or consisting
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`essentially of, correct?
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`A Yes.
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`Id., p. 53:14-16.
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`The testimony is relevant to the issue of claim construction. The testimony
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`contradicts Petitioner’s argument that “composed of” does not mean “consisting
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`essentially of.” Reply, Paper 19, p. 6. The testimony also supports Patent Owner’s
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`claim construction (PO Response, Paper 14, pp. 11-13), and evidences how a
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`person of ordinary skill in the art (“POSITA”) would have understood and
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`construed “composed of” as recited in the Claims.
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`1
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`Observation No. 2:
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`Case IPR2016-01249 for
`U.S. Patent No. 6,538,324
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`In Exhibit 2044, on p. 54:7-18, the witness testified that “composed of” as
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`recited in the Claims of the ‘324 patent means “consisting essentially of” as stated
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`in the MPEP (Exhibit 2012):
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`Q So my question is, how are you applying your understanding of
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`the term "composed of"? Is it more in line with comprising, which is
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`open ended, or more limited as consisting essentially of, which we
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`saw on the previous page means it’s limited to the scope of a claim
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`to the specified materials or steps and those that do not materially
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`affect the basic and novel characteristics of the claimed invention?
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`MR. KABAKOFF: Objection, form.
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`THE WITNESS: I interpreted that as described in page 9 [of the
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`MPEP section, Exhibit 2012], consisting essentially of.
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`Id., p. 54:7-18.
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`The testimony is relevant to the issue of claim construction. The testimony
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`contradicts Petitioner’s argument that “composed of” does not mean “consisting
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`essentially of.” Reply, Paper 19, p. 6. The testimony also supports Patent Owner’s
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`claim construction (PO Response, Paper 14, pp. 11-13), and evidences how a
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`POSITA would have understood and construed “composed of” as recited in the
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`Claims.
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`2
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`Observation No. 3:
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`Case IPR2016-01249 for
`U.S. Patent No. 6,538,324
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`In Exhibit 2044, on p. 56:4-13, the witness testified:
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`Q So we’re just talking about a first film composed of crystalline
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`metal containing nitrogen therein, and claim 11 adds the nitrogen
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`being present throughout the first film. Again, I just want to make
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`sure that you agree that composed of as used in that claim
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`limitation would be properly construed to mean consisting
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`essentially of as set forth in the MPEP section that we read, Exhibit
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`2012.
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`A Yes.
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`The testimony is relevant to the issue of claim construction. The testimony
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`contradicts Petitioner’s argument that “composed of” does not mean “consisting
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`essentially of.” Reply, Paper 19, p. 6. The testimony also supports Patent Owner’s
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`claim construction (PO Response, Paper 14, pp. 11-13), and evidences how a
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`POSITA would have understood and construed “composed of” as recited in the
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`Claims.
`Observation No. 4:
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`
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`In Exhibit 2044, on pp. 115:1-116:15, the witness testified that the district
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`court’s claim construction of a film being composed of crystalline metal containing
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`nitrogen therein, which in pertinent part states that “the first film consists
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`essentially of a mixture of crystalline or polycrystalline metal with nitrogen
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`throughout” looks reasonable:
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`Q Okay. Do you disagree with the court’s construction?
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`3
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`A As I said, I didn’t analyze it in depth, but offhand it looks reasonable.
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`Case IPR2016-01249 for
`U.S. Patent No. 6,538,324
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`Id., p. 116:12-15.
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`The testimony is relevant to Petitioner’s arguments regarding claim
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`construction. Petitioner’s Reply, Paper 19, pp. 2-6. The testimony is relevant
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`because it contradicts Petitioner’s claim construction arguments, and supports
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`Patent Owner’s claim construction arguments. PO Response, Paper 14, pp. 8-18.
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`Observation No. 5:
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`
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`In Exhibit 2044, on pp. 48:6-51:12, the witness testified that “consisting
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`essentially of” means that the material can consist of what’s specified in the claim
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`limitations and other components which do not impact those limitations, and that
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`amorphous tantalum nitride added to a film composed of crystalline metal
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`containing nitrogen therein would impact the properties of the film:
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`Q Do you understand what the definition here of consisting
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`essentially of means?
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`A Yes.
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`Q And what does it mean to you that it limits the scope of the
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`claim to the specified materials or steps and those that do not
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`materially affect the basic and novel characteristics of the claimed
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`invention?
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`MR. KABAKOFF: Objection, scope.
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`4
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`Case IPR2016-01249 for
`U.S. Patent No. 6,538,324
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`THE WITNESS: To me it means that the material can consist of
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`what’s specified in the claim limitations, but then it can also add
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`components which do not impact those limitations.
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`***
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`BY MR. FINK:
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`Q So going back to the example we said earlier where a first film
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`being composed of crystalline metal containing nitrogen therein, if
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`you added amorphous metal nitride to that same film, that would
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`materially affect the basic and novel characteristics of that first
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`film; is that correct?
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`MR. KABAKOFF: Objection, scope.
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`THE WITNESS: Yes, if you added amorphous tantalum nitride,
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`that would impact the adhesion properties of the copper to the film,
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`and in that sense it would impact properties.
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`The testimony is relevant to Petitioner’s arguments regarding claim
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`construction. The testimony is also relevant because it contradicts Petitioner’s
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`arguments about the composition of Zhang’s top film 32, and further contradicts
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`Petitioner’s arguments of unpatentability based on combinations with Zhang.
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`Reply, Paper 19, pp. 9-12; Opposition To Patent Owner’s Contingent Motion To
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`Amend, Paper 20, pp. 7-11.
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`Observation No. 6:
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`In Exhibit 2044, on p. 17:3-10, the witness testified that he does not have
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`actual experience with the sputtering of tantalum or tantalum nitride layers:
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`5
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`Case IPR2016-01249 for
`U.S. Patent No. 6,538,324
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`Q Dr. Banerjee, do you have any recollection of any actual
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`experience with the sputtering of tantalum or tantalum nitride
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`layers?
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`MR. KABAKOFF: Objection.
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`THE WITNESS: Offhand at this point, I do not recall […]
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`The testimony is relevant because it shows the witness’ lack of actual
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`experience with the sputtering of tantalum or tantalum nitride layers.
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`Observation No. 7:
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`
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`In Exhibit 2044, on pp. 18:12-19:7, the witness testified that he does not
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`have experience working with a combination of tantalum and nitrogen, and does
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`not have experience where there was a flow of nitrogen and the nitrogen was
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`turned off:
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`Q As far as you know, you’ve not conducted any procedures
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`involving nitrogen with tantalum or titanium or a similar metal?
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`MR. KABAKOFF: Objection to form.
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`THE WITNESS: I cannot remember working specifically with a
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`combination of tantalum and nitrogen.
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`BY MR. FINK:
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`Q Have you been involved in any sputtering processes where there
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`was a flow of nitrogen and the nitrogen was turned off?
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`MR. KABAKOFF: Objection to form.
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`THE WITNESS: At this point offhand, I do not recall, but I have
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`worked with sputtering systems involving reactive sputtering
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`where we change the flow of one gas at some point or the other,
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`6
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`Case IPR2016-01249 for
`U.S. Patent No. 6,538,324
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`but I don’t recall specifically turning off nitrogen in the middle of
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`the process.
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`The testimony is relevant because it shows the witness’ lack of actual
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`experience with any procedures involving nitrogen with tantalum, or any sputtering
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`processes where there was a flow of nitrogen and the nitrogen was turned off.
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`Observation No. 8:
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`
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`In Exhibit 2044, on pp. 94:8-96:14, the witness testified that one would
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`know to cut off the nitrogen flow in a sputtering chamber to form a layer of pure
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`tantalum. At p. 96:8-14, the witness testified:
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`Q But the purpose of shutting off the nitrogen is so you can get a
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`pure surface of tantalum?
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`MR. KABAKOFF: Objection to form.
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`THE WITNESS: You want to shut off the nitrogen in this case to
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`get a tantalum film devoid of nitrogen, yes.
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`The testimony is relevant because it contradicts Petitioner’s unpatentability
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`arguments, e.g., see Reply, Paper 19, pp. 7-22, by further evidencing that a
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`POSITA would have known that shutting off the nitrogen flow during the
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`sputtering process results in a layer of tantalum devoid of nitrogen.
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`Observation No. 9:
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`In Exhibit 2044, on p. 36:4-16, the witness testified that a film which is an
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`admixture of amorphous tantalum nitride and crystalline tantalum with nitrogen in
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`7
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`Case IPR2016-01249 for
`U.S. Patent No. 6,538,324
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`it, would not satisfy the limitation “said first film being composed of crystalline
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`metal containing nitrogen therein.” That testimony is relevant because it
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`contradicts Petitioner’s unpatentability assertions. Petition; Reply, Paper 19, pp. 7-
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`22; Opposition To Motion To Amend, Paper 20, pp. 7-11.
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`Observation No. 10:
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`In Exhibit 2044, on p. 100:6-13, the witness testified that pure tantalum will
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`adhere better to copper than tantalum nitride:
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`Q So is it true that pure tantalum will adhere better to copper than
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`tantalum nitride?
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`MR. KABAKOFF: Objection to form.
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`THE WITNESS: Everything else being the same?
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`BY MR. FINK:
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`Q Yes.
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`A Yes. In most cases, yes.
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`The testimony is relevant because it contradicts Petitioner’s unpatentability
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`arguments as evidence that a POSITA would not have added nitrogen to a film
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`with a surface of pure tantalum where better adherence to copper is desired. Reply,
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`Paper 19, pp. 7-22; Opposition To Motion To Amend, Paper 20, pp. 7-11.
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`8
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`Observation No. 11:
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`Case IPR2016-01249 for
`U.S. Patent No. 6,538,324
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`In Exhibit 2044, on pp. 101:3-102:7, the witness testified that adding a
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`sufficient amount of nitrogen to a crystalline layer of pure tantalum is going to
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`mess up the crystalline structure and impact the adhesion properties:
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`Q So at the time of the invention of the ‘324 patent, would the
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`understanding of a person of ordinary skill in the art be that a
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`surface of pure tantalum would give better adhesion than a layer of
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`tantalum with nitrogen, all things the same?
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`MR. KABAKOFF: Objection, form.
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`THE WITNESS: A surface of pure tantalum would give better
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`adhesion than tantalum with nitrogen if the amount of nitrogen that
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`you added messed up the crystalline structure of the tantalum
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`nitride -- I shouldn’t use the word "tantalum nitride" -- the
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`tantalum nitrogen alloy to the extent that it messed up the wetting
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`and the adhesion properties of the copper.
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`BY MR. FINK:
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`Q So adding nitrogen to tantalum can mess up, using your words,
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`the adhesion properties of the crystalline structure to copper?
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`A If you added sufficient nitrogen. I mean, hypothetically if you
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`had a layer of tantalum and you added a single nitrogen atom, that
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`wouldn’t mess it up obviously. So there’s thresholds.
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`Q So if there’s a sufficient amount of nitrogen, however, it is
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`going to mess up the crystalline structure of the pure tantalum
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`layer?
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`9
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`Case IPR2016-01249 for
`U.S. Patent No. 6,538,324
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`A Yes, and if that happened, then that would impact the adhesion
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`properties.
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`The testimony is relevant because it contradicts Petitioner’s unpatentability
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`arguments by evidencing that a POSITA would have known that adding nitrogen
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`could mess up the crystalline structure of a pure tantalum layer and impact the
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`adhesion properties. Reply, Paper 19, pp. 7-22; Opposition To Motion To Amend,
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`Paper 20, pp. 7-11.
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`Observation No. 12:
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`
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`In Exhibit 2044, on pp. 109:5-111:15, the witness testified that Ex.1033
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`teaches that the resistivity of a pure tantalum film or a tantalum film having no
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`nitrogen is lower than the tantalum film containing nitrogen, and that adding
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`nitrogen increases the resistivity of a film and you want the resistivity to be as low
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`as possible. At p.111:6-15, the witness testified:
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`Q Do you have an understanding why all of the less-preferred
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`alternative embodiments or methods are disclosed as including
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`nitrogen as compared to the preferred embodiments which use pure
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`tantalum or just 98 percent pure tantalum films?
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`A Okay. The context of this patent, that’s because the addition of
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`nitrogen increases the resistivity of the film, and in general in these
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`interconnects, you want the resistivity to be as low as possible.
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`The testimony is relevant to Petitioner’s argument as to whether a POSITA
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`would have added nitrogen to a pure tantalum film. The testimony is relevant
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`10
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`Case IPR2016-01249 for
`U.S. Patent No. 6,538,324
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`because it contradicts Petitioner’s argument (Reply, Paper 19, pp. 17-18), supports
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`Patent Owner’s argument (PO Response, Paper 14, pp. 50-52), and evidences that
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`the general understanding of a POSITA at the time of invention was that adding
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`nitrogen increases the resistivity of a film.
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`Observation No. 13:
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`
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`In Exhibit 2044, on p. 119:1-18, the witness testified
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`Q In general, what effect does adding a small amount of nitrogen
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`to a tantalum film have on the resistivity of the film?
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`MR. FINK: Object to form.
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`THE WITNESS: But in the ‘324 patent there’s actually a figure.
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`Figure 9 is an exemplary plot of how resistivity depends on
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`nitrogen flow rate and sputtering power, and it shows that for low
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`nitrogen concentrations there’s a decrease of resistivity, but then
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`higher nitrogen concentrations, the resistivity goes up.
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`BY MR. KABAKOFF:
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`Q Would a person of ordinary skill in the art at the time of the
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`‘324 patent have understood that adding a small content of
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`nitrogen to a tantalum film would reduce resistivity and then
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`increase it as shown in figure 9?
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`A Yes, as shown in this figure.
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`The testimony is relevant to Petitioner’s argument (Reply, Paper 19, pp. 17-
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`18, 23-24), because it evidences that Petitioner is relying on the teachings of the
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`‘324 patent for motivation to add a small amount of nitrogen to a tantalum film.
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`11
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`Observation No. 14:
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`Case IPR2016-01249 for
`U.S. Patent No. 6,538,324
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`In Exhibit 2044, on pp. 36:18-39:4, the witness testified that he did not apply
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`the ordinary and accustomed meanings of “crystalline” and “amorphous” as used
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`in solid state physics in his analysis. The testimony is relevant to all of Petitioner’s
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`arguments as Petitioner’s expert did not apply the broadest reasonable
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`interpretation to either of these claim terms. The testimony is additionally relevant
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`as it evidences that Petitioner’s arguments and the statements and opinions
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`contained in the supporting declarations referring to “crystalline” and
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`“amorphous”, Exhibits 1003 and 1038, use the same words but ascribe different
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`meanings to those words.
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`Observation No. 15:
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`
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`In Exhibit 2044, on pp. 94:4-95:1, the witness testified that Nogami
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`discloses that the top layer 16 [Fig. 1] can be pure tantalum or tantalum nitride.
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`The testimony is relevant to the argument in Petitioner’s Opposition To Patent
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`Owner’s Contingent Motion To Amend, Paper 20, pp. 11-19, regarding the
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`patentability of the Substitute Claims over Zhang and Ding in view of Nogami.
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`The testimony is relevant because it evidences that a POSITA would have known
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`that Nogami discloses that the top layer 16 can be pure tantalum.
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`12
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`Observation No. 16:
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`Case IPR2016-01249 for
`U.S. Patent No. 6,538,324
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`In Exhibit 2044, on pp. 87:14-88:5, the witness testified that “Ta” is the
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`symbol for tantalum, which means tantalum with no nitrogen. The testimony is
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`relevant as it evidences that a POSITA would understand the symbol “Ta”
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`appearing in prior art documents as meaning tantalum not containing nitrogen.
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`Observation No. 17:
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`
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`In Exhibit 2044, on p. 67:9-17, the witness testified:
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`Q Okay. When you read the words “the nitrogen being present
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`throughout the first film,” what is your understanding? I don’t
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`want what you think IP Bridge means. I want your understanding
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`of that phrase.
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`A Yeah, I interpret that as being present everywhere.
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`Q Meaning top surface included?
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`A Yeah, top to the bottom.
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`The testimony is relevant to the issue of claim construction of proposed
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`Substitute Claim 11. The testimony supports Patent Owner’s claim construction of
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`the term “throughout.” PO Contingent Motion To Amend, Paper 16, p. 9.
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`Observation No. 18:
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`
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`In Exhibit 2044, on pp. 57:4-63:8, the witness testified about the
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`specification of the ‘324 patent teaching nitrogen present throughout the first film.
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`Excerpts from this portion of testimony include:
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`13
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`
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`Q Okay. Would the tantalum nitrogen .1 be throughout the film?
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`There’d be some on the top; some on the bottom; some in the middle.
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`Case IPR2016-01249 for
`U.S. Patent No. 6,538,324
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`MR. KABAKOFF: Objection to form.
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`THE WITNESS: Presumably.
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`Id., pp. 60:20-61:2, and:
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`Q Right. But there’s still going to be nitrogen throughout the film;
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`isn’t that true?
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`A There'd be nitrogen in the tantalum nitrogen .1s, which would
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`be randomly distributed toward [sic] the film.
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`Id., p. 63:4-8.
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`The testimony is relevant because it supports Patent Owner’s claim
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`construction that “said first film being composed of crystalline metal containing
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`nitrogen therein,” should be construed to mean “a first film consisting essentially
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`of a mixture of crystalline or polycrystalline metal with nitrogen throughout.” PO
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`Response, Paper 14, pp. 13-15; Reply, Paper 19, pp. 2-6.
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`Observation No. 19:
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`In Exhibit 2044, on pp. 76:12-80:3, pp. 83:19-84:1, and pp. 85:11-16, the
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`witness testified that a “solid solution” can consist of one solid phase dispersed
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`homogenously in another solid phase, and that a POSITA would understand the
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`meaning of the term “solid solution.” The testimony is relevant to the argument in
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`Petitioner’s Opposition To Patent Owner’s Contingent Motion To Amend, Paper
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`20, pp. 19-22, regarding adequate written description for Substitute Claim 13. The
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`14
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`Case IPR2016-01249 for
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`testimony is relevant because it contradicts Petitioner’s arguments and evidences
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`that there is adequate written description of “solid solution” in the ‘324 patent.
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`
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`Dated: July 12, 2017
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`Respectfully Submitted by:
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`
`
`/Michael J. Fink/
`Michael J. Fink
`Registration No. 31,827
`Greenblum & Bernstein, P.L.C.
`1950 Roland Clarke Place
`Reston, Virginia 20191
`Tel: 703-716-1191
`Fax: 703-716-1180
`Email: mfink@gbpatent.com
`
`Attorney for Patent Owner,
`IP Bridge
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`15
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`{R50501 03141991.DOC 5}
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`Case IPR2016-01249 for
`U.S. Patent No. 6,538,324
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true copy of the foregoing:
`
`PATENT OWNER’S MOTION FOR OBSERVATIONS REGARDING THE
`CROSS-EXAMINATION OF SANJAY K. BANERJEE, PH.D.
`
`was served by electronic mail on this 12th day of July, 2017, upon Counsel for
`
`Petitioners, as follows:
`
`E. Robert Yoches (bob.yoches@finnegan.com);
`Stephen E. Kabakoff (stephen.kabakoff@finnegan.com);
`Joshua L. Goldberg (joshua.goldberg@finnegan.com);
`TSMC-IPB-PTAB@finnegan.com;
`Christopher P. Carroll (christopher.carroll@whitecase.com); and
`Shamita Etienne-Cummings (setienne@whitecase.com).
`
`
`
`
`
`/Michael J. Fink/
`Michael J. Fink
`Registration No. 31,827
`Greenblum & Bernstein, P.L.C.
`1950 Roland Clarke Place
`Reston, Virginia 20191
`Tel: 703-716-1191
`Fax: 703-716-1180
`Email: mfink@gbpatent.com
`
`Attorney for Patent Owner,
`IP Bridge
`
`
`
`
`
`
`