Trials@uspto.gov
`571.272.7822
`
`
` Paper No. 6
`
`Filed: February 14, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`DANIEL L. FLAMM,
`Patent Owner.
`
`____________
`
`Case IPR2016-01510
`Patent RE40,264 E
`____________
`
`
`
`Before MICHAEL R. ZECHER, CHRISTOPHER L. CRUMBLEY, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`
`DECISION
` Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`
`571.272.7822
`
`
` Paper No. 6
`
`Filed: February 14, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`DANIEL L. FLAMM,
`Patent Owner.
`
`____________
`
`Case IPR2016-01510
`Patent RE40,264 E
`____________
`
`
`
`Before MICHAEL R. ZECHER, CHRISTOPHER L. CRUMBLEY, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`
`DECISION
` Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2016-01510
`Patent RE40,264 E
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`I. INTRODUCTION
`
`Petitioner, Samsung Electronics Co., Ltd. (“Samsung”), filed a
`
`Petition requesting an inter partes review of claims 13–26, 64, and 65 (“the
`
`challenged claims”) of U.S. Patent No. RE40,264 E (Ex. 1001, “the ’264
`
`patent”). Paper 1 (“Pet.”). Patent Owner, Daniel L. Flamm (“Flamm”),
`
`filed a Preliminary Response. Paper 5 (“Prelim. Resp.”).
`
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`
`unless the information presented in the Petition shows “there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challenged in the petition.” Taking into account the arguments
`
`presented in Flamm’s Preliminary Response, we conclude that the
`
`information presented in the Petition does not establish that there is a
`
`reasonable likelihood that Samsung would prevail in challenging any of
`
`claims 13–26, 64, and 65 of the ’264 patent as unpatentable under 35 U.S.C.
`
`§ 103(a). We, therefore, deny the Petition.
`
`A. Related Matters
`
`The parties represent that the ’264 patent is at issue in a district court
`
`case captioned Flamm v. Samsung Electronics Co., No. 1:15-cv-613-LY
`
`(W.D. Tex.), which was transferred to the Northern District of California on
`
`April 27, 2016, where it was re-captioned No. 5:16-cv-2252-BLF (N.D.
`
`Cal.). Pet. 1; Paper 4, 2. Samsung further represents that the ’264 patent
`
`was at issue in a number of inter partes review proceedings filed by a
`
`different petitioner; however, the Board only granted institution in two
`
`proceedings, each of which has since terminated following settlement. See
`
`Pet. 1 n.1. In addition to this Petition, Samsung filed another petition
`
`2
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`Patent RE40,264 E
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`challenging the patentability of claims 27, 31, 32, 34, 37, 40, 41, 44, 47, 48,
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`and 50 of the ’264 patent in Case IPR2016-01512. Id. at 1–2.
`
`B. The ’264 Patent
`
`The ’264 patent, titled “Multi-Temperature Processing,” reissued
`
`April 29, 2008, from U.S. Patent Application No. 10/439,245 (“the ’245
`
`application”), filed on May 14, 2003. Ex. 1001, at [54], [45], [21], [22].
`
`The ’264 patent is a reissue of U.S. Patent No. 6,231,776 B1 (“the ’776
`
`patent”), which issued May 15, 2001, from U.S. Patent Application No.
`
`09/151,163 (“the ’163 application”), filed September 10, 1998. Id. at [64].
`
`The ’264 patent is directed to a method “for etching a substrate in the
`
`manufacture of a device,” where the method “provide[s] different processing
`
`temperatures during an etching process or the like.” Id. at Abstract. The
`
`apparatus used in the method is shown in Figure 1, reproduced below.
`
`Figure 1 depicts a substrate (product 28, such as a wafer to be etched) on a
`
`substrate holder (product support chuck or pedestal 18) in a chamber
`
`(chamber 12 of plasma etch apparatus 10). Id. at 3:24–25, 3:32–33, 3:40–
`
`
`
`41.
`
`3
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`IPR2016-01510
`Patent RE40,264 E
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`Figures 6 and 7, reproduced below, depict a temperature-controlled
`
`substrate holder and temperature control systems.
`
`
`
`Figures 6 and 7 depict temperature-controlled fluid flowing through
`
`substrate holder (600, 701), guided by baffles 605, where “[t]he fluid [is]
`
`used to heat or cool the upper surface of the substrate holder.” Ex. 1001,
`
`14:28–63, 16:5–67. Figure 6 also depicts heating elements 607 underneath
`
`the substrate holder, where “[t]he heating elements can selectively heat one
`
`or more zones in a desirable manner.” Id. at 15:10–26. Referring to Figure
`
`7, the operation of the temperature control system is described as follows:
`
`The desired fluid temperature is determined by comparing the
`desired wafer or wafer chuck set point temperature to a measured
`wafer or wafer chuck temperature . . . . The heat exchanger, fluid
`flow rate, coolant-side fluid temperature, heater power, chuck,
`etc. should be designed using conventional means to permit the
`heater to bring the fluid to a setpoint temperature and bring the
`temperature of
`the chuck and wafer
`to predetermined
`
`4
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`IPR2016-01510
`Patent RE40,264 E
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`temperatures within specified time intervals and within specified
`uniformity limits.
`
`Id. at 16:36–39, 16:50–67.
`
`An example of a semiconductor substrate to be patterned is shown in
`
`Figure 9, reproduced below.
`
`Figure 9 depicts substrate 901 having a stack of layers including oxide layer
`
`903, polysilicon layer 905, tungsten silicide layer 907, and photoresist
`
`masking layer 909 with opening 911, from the treatment method shown in
`
`Figure 10, reproduced below. Ex. 1001, 17:58–18:57.
`
`
`
`5
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`Figure 10 depicts the tungsten silicide layer being etched between
`
`points B and D at a constant temperature; the polysilicon layer being
`
`exposed between Points D and E; the polysilicon layer being etched at a
`
`constant temperature beyond point E; and the resist being ashed beyond
`
`Point I. Ex. 1001, 18:58–19:64. The plasma’s optical emission at 530
`
`nanometers is monitored to determine when there is breakthrough to the
`
`polysilicon layer (Point D) and a lower etch temperature is required to etch
`
`the polysilicon layer (Point E). Id. at 19:8–24, 19:45–52.
`
`6
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`Patent RE40,264 E
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`C. Illustrative Claim
`
`
`
`Of the challenged claims, claim 13 is the only independent claim at
`
`issue. Independent claim 13 is directed to a method of etching a substrate in
`
`the manufacture of a device. Claims 14–26, 64, and 65 directly or indirectly
`
`depend from independent claim 13. Independent claim 13 is illustrative of
`
`the challenged claims and is reproduced below:
`
`13. A method of etching a substrate in the manufacture of a
`device, the method comprising:
`
`placing a substrate having a film thereon on a substrate holder
`in a chamber, the substrate holder having a selected
`thermal mass;
`
`setting the substrate holder to a selected first substrate holder
`temperature with a heat transfer device;
`
`etching a first portion of the film while the substrate holder is
`at the selected first substrate holder temperature;
`
`with the heat transfer device, changing the substrate holder
`temperature from the selected first substrate holder
`temperature
`to a selected second substrate holder
`temperature; and
`
`etching a second portion of the film while the substrate holder
`is at the selected second substrate holder temperature;
`
`wherein the thermal mass of the substrate holder is selected
`for a predetermined temperature change within a specific
`interval of time during processing; the predetermined
`temperature change comprises the change from the
`selected first substrate holder temperature to the selected
`second substrate holder temperature, and the specified
`time interval comprises the time for changing from the
`selected first substrate holder temperature to the selected
`second substrate holder temperature.
`
`Ex. 1001, 20:50–21:10 (italics omitted).
`
`7
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`D. Prior Art Relied Upon
`
`Samsung relies upon the following prior art references:
`
`Inventor or
`Applicant1
`Okada I
`
`Anderson
`
`Thomas
`
`Ishikawa
`
`Yin
`
`Patent or
`Publication No.
`JP Patent Pub.
`No. H5-136095
`U.S. Statutory
`Invention
`Registration No.
`H1145
`U.S. Patent No.
`4,680,086
`U.S. Patent No.
`5,876,119
`EP Patent Pub.
`No.
`0665575 A1
`Kadomura U.S. Patent No.
`6,063,710
`JP Patent Pub.
`No. H5-243191
`U.S. Patent No.
`5,059,770
`Matsumura U.S. Patent No.
`5,151,871
`U.S. Patent No.
`4,913,790
`
`Okada II
`
`Mahawili
`
`Narita
`
`Relevant Dates
`
`Exhibit No.
`
`published June 1, 1993,
`filed Nov. 14, 1991
`published Mar. 2, 1993,
`filed Nov. 6, 1991
`
`issued July 14, 1987,
`filed Mar. 20, 1986
`issue Mar. 2, 1999,
`filed Dec. 19, 1995
`published Aug. 2, 1995,
`filed Jan. 25, 1995
`
`issued May 16, 2000,
`filed Feb. 21, 1997
`published Sept. 21, 1993,
`filed Feb. 26, 1992
`issued Oct. 22, 1991,
`filed Sept. 19, 1989
`issued Sept. 29, 1992,
`filed June 15, 1990
`issued Apr. 3, 1990,
`filed Mar. 21, 1989
`
`1006
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1019
`
`
`
`
`
`1 For clarity and ease of reference, we only list the first named inventor or
`applicant.
`
`8
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`Patent RE40,264 E
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`Non-Patent Literature
`
`FRANK P. INCROPERA & DAVID P. DE WITT,
`FUNDAMENTALS OF HEAT AND MASS TRANSFER
`226–310 (John Wiley & Sons, 3d ed. 1990)
`(“Incropera”)
`
`Exhibit No.
`
`1007
`
`
`
`
`
`E. Asserted Grounds of Unpatentability
`
`Samsung challenges claims 13–26, 64, and 65 of the ’264 patent
`
`based on the asserted grounds of unpatentability (“grounds”) set forth in the
`
`table below. Pet. 2–4, 20–70.
`
`References
`
`Basis
`
`Challenged Claim(s)
`
`Okada I, Incropera, and Anderson
`
`§ 103(a) 13, 15, 16, 22, and 64
`
`Okada I, Incropera, Anderson, and
`Thomas
`Okada I, Incropera, Anderson, and
`Narita
`Okada I, Incropera, Anderson, and Yin
`
`§ 103(a) 14
`
`§ 103(a) 17
`
`§ 103(a) 18
`
`Okada I, Incropera, Anderson, and
`Ishikawa
`Okada I, Incropera, Anderson, and
`Kadomura
`Okada I, Incropera, Anderson,
`Kadomura, and Okada II
`Okada I, Incropera, Anderson, and
`Mahawili
`Okada I, Incropera, Anderson, and
`Matsumura2
`
`§ 103(a) 19 and 20
`
`§ 103(a) 21 and 23
`
`§ 103(a) 24
`
`§ 103(a) 25 and 26
`
`§ 103(a) 65
`
`
`
`2 Samsung does not identify Anderson as part of the ground challenging
`dependent claim 65 in the section of the Petition titled “Statutory Grounds of
`Challenge” (Pet. 2–4), but it nonetheless identifies Anderson as part of the
`ground in its corresponding analysis of this claim (id. at 67).
`
`9
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`II. ANALYSIS
`
`A. Claim Construction
`
`As an initial matter, we determine the proper standard of construction
`
`to apply. The term of a patent grant begins on the date on which the patent
`
`issues and ends twenty (20) years from the date on which the application for
`
`the patent was filed in the United States, “or, if the application contains a
`
`specific reference to an earlier filed application or applications under section
`
`120, 121, 365(c), or 386(c), from the date on which the earliest such
`
`application was filed.” 35 U.S.C. § 154(a)(2) (2012 & Supp. III 2015). The
`
`earliest patent application referenced for the benefit of priority under
`
`35 U.S.C. § 120 for the ’264 patent was filed on December 4, 1995, and the
`
`patent has no term extensions. The term of the ’264 patent, therefore,
`
`expired no later than December 4, 2015.
`
`On this record, because we conclude that the term of the ’264 patent
`
`expired prior to the filing of the Petition, for purposes of this Decision we
`
`construe the claims of the ’264 patent under the standard applicable to
`
`expired patents. For claims of an expired patent, our claim interpretation is
`
`similar to that of a district court. See In re Rambus Inc., 694 F.3d 42, 46
`
`(Fed. Cir. 2012). “In determining the meaning of the disputed claim
`
`limitation, we look principally to the intrinsic evidence of record, examining
`
`the claim language itself, the written description, and the prosecution
`
`history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
`
`Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips v. AWH Corp.,
`
`415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc)). There is, however, a
`
`“heavy presumption” that a claim term carries its ordinary and customary
`
`10
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`meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.
`
`Cir. 2002).
`
`The parties do not propose constructions for any claim terms recited
`
`in the challenged claims of the ’264 patent. See generally Pet. 16–18;
`
`PO Resp. 1–13. Because there is no dispute between the parties regarding
`
`claim construction, we need not construe explicitly any claim term of the
`
`’264 patent at this time. See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (explaining that only those claim
`
`terms or phrases that are in controversy need to be construed, and only to the
`
`extent necessary to resolve the controversy).
`
`B. Priority Date for the Challenged Claims of the ’264 Patent
`
`
`
`As explained previously, the ’264 patent reissued from the ’245
`
`application, filed on May 14, 2003. Ex. 1001, at [21], [22]. The ’245
`
`application is a reissue of the ’776 patent, which issued May 15, 2001 from
`
`the ’163 application, which was filed September 10, 1998. Id. at [64]. The
`
`’163 application is a continuation-in-part of the following two applications:
`
`(1) U.S. Provisional Application No. 60/058,650 (“the ’650 provisional
`
`application”), filed on September 11, 1997; and (2) U.S. Patent Application
`
`No. 08/567,224 (“the ’224 application”), filed on December 4, 1995. Id. at
`
`[60], [63], 1:11–15.
`
`
`
`Samsung contends that Flamm may only claim the benefit of the filing
`
`date of the ’650 provisional application (i.e., September 11, 1997) because
`
`this is the earliest filed application in the priority chain that includes
`
`sufficient written description support for certain limitations recited in the
`
`challenged claims. Pet. 9. Relying upon the testimony of its Declarant, Dr.
`
`11
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`Stanley Shanfield, Samsung explains how the ’224 application fails to
`
`disclose selecting the thermal mass of the substrate holder, or changing the
`
`substrate holder temperature from a first substrate holder temperature to a
`
`second substrate holder temperature, as required by independent claim 13.
`
`Id. at 10 (citing Ex. 1005, 45, 46;3 Ex. 1002 ¶¶ 22–24). Consequently,
`
`Samsung asserts that, because the ’224 application does not provide
`
`sufficient written description support for certain limitations required by
`
`independent claim 13, the challenged claims only are entitled to the priority
`
`date of the ’650 provisional application (i.e., September 11, 1997). See id. at
`
`9–10. Flamm does not present arguments as to whether the ’264 patent is
`
`entitled to claim a priority date earlier than September 11, 1997.
`
`
`
`On this record, we are persuaded by Samsung’s argument that the
`
`’224 application does not provide sufficient written description support for
`
`selecting the thermal mass of the substrate holder, or changing the substrate
`
`holder temperature from a first substrate holder temperature to a second
`
`substrate holder temperature, as required by independent claim 13. For
`
`purposes of this Decision, Samsung has presented sufficient evidence
`
`indicating that the challenged claims of the ’264 patent only are entitled to
`
`claim the benefit of the filing date of the ’650 provisional application (i.e.,
`
`September 11, 1997).
`
`With the exception of Ishikawa and Kadomura, all the references that
`
`serve as the basis of the grounds asserted by Samsung in this proceeding
`
`
`
`3 All references to the page numbers in the ’224 application refer to the page
`numbers inserted by Samsung at the bottom, left-hand corner of each page in
`Exhibit 1005.
`
`12
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`were filed before December 4, 1995—the filing date of the ’224
`
`application—and, therefore, qualify as prior art to the challenged claims of
`
`the ’264 patent. On this record, it appears that both Ishikawa and Kadomura
`
`also qualify as prior art to the challenged claims of the ’264 patent.
`
`C. Obviousness Based on the Combination of Okada I, Incropera, and
`Anderson
`
`
`
`Samsung contends that claims 13, 15, 16, 22, and 64 are unpatentable
`
`under § 103(a) over the combination of Okada I, Incropera, and Anderson.
`
`Pet. 20–39. Samsung explains how this proffered combination purportedly
`
`teaches the subject matter of each challenged claim, and asserts that a person
`
`of ordinary skill in the art would have had reason to combine or modify
`
`Okada I with the teachings from Incropera and Anderson. Id. Samsung also
`
`relies upon the Declaration of Dr. Shanfield to support its positions.
`
`Ex. 1002 ¶¶ 48–75. On this record, we are not persuaded that Samsung’s
`
`proffered combination teaches “the thermal mass of the substrate holder is
`
`selected for a predetermined temperature change within a specific interval of
`
`time during processing,” as recited in independent claim 13.
`
`
`
`We begin our analysis with the principles of law that generally apply
`
`to a ground based on obviousness, followed by brief overviews of Okada I,
`
`Incropera, and Anderson, and then we address the parties’ contentions with
`
`respect to independent claim 13.
`
`1. Principles of Law
`
`A claim is unpatentable under § 103(a) if the differences between the
`
`claimed subject matter and the prior art are such that the subject matter, as a
`
`whole, would have been obvious at the time the invention was made to a
`
`person having ordinary skill in the art to which said subject matter pertains.
`
`13
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`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
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`obviousness is resolved on the basis of underlying factual determinations,
`
`including (1) the scope and content of the prior art; (2) any differences
`
`between the claimed subject matter and the prior art; (3) the level of skill in
`
`the art;4 and (4) when in evidence, so-called secondary considerations.
`
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We analyze this
`
`asserted ground based on obviousness with the principles identified above in
`
`mind.
`
`2. Okada I Overview
`
`Okada I generally relates to a semiconductor controlling device and,
`
`in particular, to a temperature controlling system that controls the
`
`temperature of an electrode on which a substrate is placed in a dry etching
`
`apparatus. Ex. 1006 ¶ 1. According to Okada I, conventional apparatuses
`
`include a temperature controlling system for a single stage cooling device.
`
`Id. ¶ 5. When changing the temperature of an electrode contained therein
`
`during each individual etching step, the responsiveness of the single stage
`
`cooling device is poor. Id. ¶ 6.
`
`The invention disclosed in Okada I addresses this problem associated
`
`with conventional apparatuses by providing a dry etching apparatus with
`
`adequate responsiveness in temperature control of an electrode. Ex. 1006
`
`¶ 7. An annotated version of Figure 1 of Okada I, reproduced below,
`
`
`
`4 Relying upon the testimony of Dr. Shanfield, Samsung offers an
`assessment as to the level of skill in the art. Pet. 5 (citing Ex. 1002 ¶ 18).
`Flamm does not challenge this assessment of the level of skill in the art or
`propose an alternative. For purposes of this Decision, and to the extent
`necessary, we accept the assessment offered by Samsung and Dr. Shanfield.
`
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`illustrates a structural diagram of one embodiment of the disclosed
`
`invention. Id. ¶ 10.
`
`
`
`As shown in Figure 1 above, a vacuum process chamber (outlined in red)
`
`includes electrode 25 on which semiconductor 29 is placed. Id. ¶ 11.
`
`Coolant tanks 7, 8, and 9, which are controlled using single stage cooling
`
`devices 1, 2, and 3, respectively, each are capable of supplying coolant to
`
`electrode 25. Id. For instance, when setting electrode 25 to temperature A,
`
`valves 16 and 19 are opened so that coolant from tank 7, which maintains
`
`temperature A, is fed to the electrode by pump 13. Id. ¶ 15. When setting
`
`electrode 25 to temperature B, valves 16 and 19 are closed simultaneously
`
`before valves 17 and 20 are opened so that coolant from tank 8, which
`
`maintains temperature B, is fed to the electrode by pump 14. Id. ¶ 16.
`
`According to Okada I, the time required for electrode 25 to change from
`
`temperature A to B is between two and ten seconds. Id.
`
`15
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`3. Incropera Overview
`
`Incropera is a textbook that discloses fundamental principles of heat
`
`transfer in objects. Ex. 1007, Title. In Chapter 5, tilted “Transient
`
`Conduction,” Incropera addresses a transient conduction problem in which a
`
`solid experiences a sudden change in its thermal environment. Id. at 226.5
`
`Incropera discloses that, if an object is at an initial temperature Ti, and then
`
`is cooled to temperature T∞, the rate of temperature change (i.e., the change
`
`in temperature of the object within a specified time period) depends on the
`
`“thermal capacitance” of the object. Id. at 226–28. For instance, Incropera
`
`discloses that equation 5.6, reproduced below, “may be used to compute the
`
`temperature reached by the solid at some time t.” Id. at 228.
`
`
`
`As shown in equation 5.6, the time t it takes for the object to change from an
`
`initial temperature Ti to a temperature T∞ depends, at least in part, on ρ (i.e.,
`
`density), c (i.e., specific heat), and V (i.e., volume). See id.
`
`4. Anderson Overview
`
`Anderson generally relates to the field of semiconductor
`
`manufacturing devices and, in particular, to chucks for controlling wafer
`
`temperature. Ex. 1008, 1:10–12. Anderson discloses that, in order to
`
`achieve maximum throughput of a tool in certain high energy processes,
`
`such as plasma processes that include plasma etching, it is “imperative” that
`
`
`
`5 All references to the page numbers in Incropera are the original page
`numbers in either the top left-hand or top right-hand corner of each page in
`Exhibit 1007.
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`16
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`a wafer be set to its operating temperature as soon as possible and, once the
`
`operating temperature has been reached, to remove the process that
`
`generates heat for the wafer in a controlled manner. Id. at 2:60–65. For
`
`instance, Anderson discloses that, in one embodiment employing a low
`
`thermal mass heater, a chuck may be heated from room temperature to an
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`operating temperature of 100º to 500º Celsius (“C”) in a matter of seconds.
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`Id. at 6:24–28.
`
`5. Claim 13
`
`
`
`In its Petition, Samsung relies upon Okada I to teach all the
`
`limitations recited in independent claim 13, except “the substrate holder
`
`having a selected thermal mass,” and “the thermal mass of the substrate
`
`holder is selected for a predetermined temperature change within a specific
`
`interval of time during processing.” Pet. 20–34. Samsung turns to Okada
`
`I’s disclosure of changing the temperature of electrode 25 from temperature
`
`A (e.g., -50º C) to temperature B (e.g., -30º C) in a time period between two
`
`and ten seconds, along with Incropera’s disclosure that the thermal mass of
`
`an object impacts the rate of temperature change of the object, to teach these
`
`two remaining claim limitations. Id. at 22, 26–30 (citing Ex. 1006 ¶¶ 16, 18,
`
`19; Ex. 1007, 226–28; Ex. 1002 ¶¶ 54, 61–68).
`
`Samsung presents Anderson as further evidence that the teachings of
`
`Okada I and Incropera are applicable because Anderson discloses that
`
`thermal mass selection, as taught by Incropera, is a critical feature in
`
`selecting a substrate holder or chuck, such as Okada I’s electrode 25,
`
`especially when considering that thermal mass impacts the rate of the
`
`temperature increase or decrease of the substrate holder. Pet. 30–31 (citing
`
`17
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`IPR2016-01510
`Patent RE40,264 E
`
`
`Ex. 1008, Abstract, 1:27–36, 2:60–65, 6:24–28). Samsung then proceeds to
`
`provide a number of additional rationales as to why a person of ordinary
`
`skill in the art would have had reason to combine or modify Okada I with the
`
`teachings from Incropera and Anderson. Id. at 31–34.
`
`Flamm raises several arguments in response. First, Flamm notes that
`
`Samsung is not the first party to challenge claims 13–26, 64, and 65 of the
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`’264 patent. Prelim. Resp. 1 (citing App. A). Flamm asserts that these same
`
`claims were the subject of both Cases IPR2015-01759 and IPR2016-00468,
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`and in these cases the Board declined to institute an inter partes review. Id.
`
`at 2. Second, Flamm contends that Samsung’s reliance on the teachings of
`
`both Incropera and Anderson is misplaced. Id. at 9. Flamm asserts that
`
`Incropera simply stands for the proposition that objects with low thermal
`
`mass have the ability to change temperatures more rapidly than objects with
`
`high thermal mass. Id. Flamm also asserts that Anderson’s disclosure of a
`
`“low thermal mass heater” is not sufficient, by itself, to recognize the use of
`
`a “low thermal mass for the substrate holder.” Id. at 11.
`
`As an initial matter, Flamm correctly notes that this is not the first
`
`time that claims 13–26, 64, and 65 of the ’264 patent have been at issue in
`
`an inter partes review proceeding. In each of Cases IPR2015-01759 and
`
`IPR2016-00468, Lam Research Corporation (“Lam”) filed a petition
`
`requesting an inter partes review of these same claims. Lam Research Corp.
`
`v. Flamm, Case IPR2015-01759 (PTAB Aug. 18, 2015) (Paper 1); Lam
`
`Research Corp. v. Flamm, Case IPR2016-00468 (PTAB Jan. 14, 2016)
`
`(Paper 1). In each Decision to Institute, a Board panel declined to institute
`
`an inter partes review primarily because Lam’s analysis improperly broke
`
`the elements of independent claim 13 into small phrases, and then attempted
`
`18
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`IPR2016-01510
`Patent RE40,264 E
`
`
`to match disclosures from the prior art to those phrases taken out of context.
`
`Lam Research Corp. v. Flamm, Case IPR2015-01759 (PTAB Feb. 24, 2016)
`
`(Paper 7); Lam Research Corp. v. Flamm, Case IPR2016-00468 (PTAB
`
`June 30, 2016) (Paper 6).
`
`Putting aside that this is the third challenge to claims 13–26, 64, and
`
`65 of the ’264 patent, albeit by a different petitioner, the instant Petition
`
`suffers from the same thematic problem present in the previous petitions
`
`filed by Lam, because the proffered combination does not account properly
`
`for “the thermal mass of the substrate holder is selected for a predetermined
`
`temperature change within a specific interval of time during processing,” as
`
`recited in independent claim 13. Although Okada I teaches changing the
`
`temperature of electrode 25 from temperature A (e.g., -50º C) to temperature
`
`B (e.g., -30º C) in a time period between two and ten seconds (Ex. 1006
`
`¶¶ 16, 18, 19), it is silent as to any selection of the mass of electrode 25 in
`
`order to ensure that the electrode changes a specific temperature (i.e., 20º C)
`
`over a discrete period of time (i.e., between two and ten seconds).
`
`Neither Incropera nor Anderson remedy the deficiency in Okada I
`
`identified above, because Samsung’s reliance on their respective teachings is
`
`tenuous at best. In our view, Incropera and Anderson both stand for
`
`essentially the same proposition—namely, whether a solid object is of low
`
`or high thermal mass impacts the rate at which it changes temperature.
`
`Compare Ex. 1007, 228 (disclosing that equation 5.6 “may be used to
`
`compute the temperature reached by a solid at some time t”), with Ex. 1008,
`
`6:24–28 (disclosing changing temperate in a matter of seconds, which
`
`requires a chuck with “low thermal mass”). This particular proposition tells
`
`us little, if anything, about selecting the mass of a substrate holder in order
`
`19
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`IPR2016-01510
`Patent RE40,264 E
`
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`to ensure that the substrate holder changes a specific temperature over a
`
`discrete period of time. For instance, merely demonstrating that a chuck
`
`with low thermal mass has the ability to change temperatures rapidly is no
`
`more a specific teaching of the limitation at issue than demonstrating that a
`
`chuck with high thermal mass is less conducive to rapid temperature change.
`
`In other words, although Incropera and Anderson both demonstrate that
`
`there is a mathematical relationship between thermal mass and the rate of
`
`temperature change, these references do not disclose that it was known to
`
`select a substrate holder having a particular thermal mass based on this
`
`mathematical relationship.
`
`We also do not find Dr. Shanfield’s supporting testimony on this
`
`particular issue to be persuasive. See Ex. 1002 ¶¶ 54, 61–68. Dr.
`
`Shanfield’s analysis essentially repeats the arguments advanced in the
`
`Petition. For these reasons, we do not credit his testimony that the combined
`
`teachings of Okada I, Incropera, and Anderson account for “the thermal
`
`mass of the substrate holder is selected for a predetermined temperature
`
`change within a specific interval of time during processing,” as recited in
`
`independent claim 13.
`
`Based on this record, Samsung has not demonstrated a reasonable
`
`likelihood that it would prevail on its assertion that independent claim 13
`
`would have been obvious over the combination of Okada I, Incropera, and
`
`Anderson.
`
`6. Claims 15, 16, 22, and 64
`
`By virtue of their dependency, claims 15, 16, 22, and 64 include the
`
`same limitations as independent claim 13. Therefore, for the same reasons
`
`20
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`IPR2016-01510
`Patent RE40,264 E
`
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`discussed above with respect to independent claim 13, Samsung has not
`
`demonstrated a reasonable likelihood that it will prevail on its assertion that
`
`dependent claims 15, 16, 22, and 64 would have been obvious over the
`
`combination of Okada I, Incropera, and Anderson.
`
`D. Remaining Grounds
`
`Samsung also contends that dependent claims 14, 17–21, 23–26, and
`
`65 are unpatentable under § 103(a) over various asserted combinations of
`
`prior art references, each of which is based, at least in part, on the teachings
`
`of Okada I, Incropera, and Anderson. Pet. 39–70. By virtue of their
`
`dependency, claims 14, 17–21, 23–26, and 65 include the same limitations
`
`as independent claim 13. As applied by Samsung, none of the remaining
`
`prior art references remedy the deficiencies in the combined teachings of
`
`Okada I, Incropera, and Anderson identified above. Consequently, Samsung
`
`has not demonstrated a reasonable likelihood that it will prevail on its
`
`assertion that claims 14, 17–21, 23–26, and 65 would have been obvious
`
`over the various asserted combinations of prior art references, each of which
`
`is based, at least in part, on the teachings of Okada I, Incropera, and
`
`Anderson.
`
`
`
`III. CONCLUSION
`
`Taking into account the arguments presented in Flamm’s Preliminary
`
`Response, we conclude that the information presented in the Petition does
`
`not establish that there is a reasonable likelihood that Samsung will prevail
`
`in challenging any of claims 13–26, 64, and 65 of the ’264 patent as
`
`unpatentable under § 103(a).
`
`21
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`IPR2016-01510
`Patent RE40,264 E
`
`
`
`
`IV. ORDER
`
`In consideration of the foregoing, it is ORDERED that the Petition is
`
`DENIED and no trial is instituted.
`
`22
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`
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`IPR2016-01510
`Patent RE40,264 E
`
`
`For PETITIONER:
`
`
`Naveen Modi
`Joseph E. Palys
`Chetan R. Bansal
`Paul Hastings LLP
`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`chetanbansal@paulhastings.com
`PH-Samsung-Flamm-IPR@paulhastings.com
`
`
`
`For PATENT OWNER:
`
`Christopher Frerking
`chris@ntknet.com
`
`
`
`23
`
`
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