Paper No. __
`Filed: July 24, 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 IPR2016-01512
`Patent No. RE 40,264 E
`____________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`Filed: July 24, 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 IPR2016-01512
`Patent No. RE 40,264 E
`____________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`IPR2016-01512
`Patent No. RE 40,264
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`I.
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`II.
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`TABLE OF CONTENTS
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`Introduction ...................................................................................................... 1
`
`The Evidence Shows That Independent Claims 27 and 37 Are
`Unpatentable .................................................................................................... 3
`
`A.
`
`Patent Owner Is Incorrect That There Would Have Been No
`Benefit to Combining the Teachings of Kadomura and
`Matsumura ............................................................................................. 4
`
`B.
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`Patent Owner’s Other Arguments Are Equally Unavailing ................ 11
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`III. The Evidence Shows That Dependent Claims 31, 32, 34, 40, 41, 44,
`47, 48, and 50 Are Unpatentable .................................................................. 17
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`A. Kadomura, Matsumura, and Narita Render Obvious Claims 31
`and 50 .................................................................................................. 17
`
`B.
`
`C.
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`D.
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`Kadomura, Matsumura, Wang I, and Wang II Render Obvious
`Claims 47 and 48 ................................................................................. 22
`
`Kadomura, Matsumura, Wang I, and Wang II Render Obvious
`Claims 34 and 41 ................................................................................. 25
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`Patent Owner Does Not Respond to Instituted Grounds
`Invalidating Claims 32, 40, And 44 .................................................... 26
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`IV. Dr. Flamm’s Opinions Should Be Entitled To Little, If Any Weight ........... 26
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`V.
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`Conclusion ..................................................................................................... 27
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`TABLE OF AUTHORITIES
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`IPR2016-01512
`Patent No. RE 40,264
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` Page(s)
`
`Cases
`
`Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC,
`825 F.3d 1373 (Fed. Cir. 2016) .................................................................... 14, 16
`
`Cumberland Pharm. Inc. v. Mylan Institutional LLC,
`846 F.3d 1213 (Fed. Cir. 2017) .................................................................... 15, 17
`
`Meiresonne v. Google, Inc.,
`849 F.3d 1379 (Fed. Cir. 2017) .......................................................................... 11
`
`Smith & Nephew, Inc. et al v. Arthrex, Inc.,
`IPR2016-00505, Paper No. 10 (July 27, 2016) .................................................. 12
`
`Unwired Planet, LLC v. Google Inc.,
`841 F.3d 995 (Fed. Cir. 2016) ...................................................................... 15, 16
`
`In re Van Geuns,
`988 F.2d 1181 (Fed. Cir. 1993) .......................................................................... 11
`
`Other Authorities
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`37 C.F.R. § 42.65(a) ..................................................................................... 18, 20, 24
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`ii
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`IPR2016-01512
`Patent No. RE 40,264
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`LIST OF EXHIBITS
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`Description
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`Exhibit
`No.
`1001 U.S. Patent No. 40,264 E
`1002 Declaration of Stanley Shanfield, Ph.D.
`1003
`Prosecution History of Reissue Patent 40,264
`1004
`Prosecution History of U.S. Patent Application No.
`09/151,163
`File History of U.S. Patent Application No. 08/567,224
`1005
`1006 U.S. Patent No. 6,063,710 to Kadomura et al.
`1007 U.S. Patent No. 5,151,871 to Matsumura et al.
`
`1008 U.S. Patent No. 4,913,790 to Narita et al.
`1009 U.S. Patent No. 5,219,485 to Wang
`European Patent Application No. 87311193.4 to Wang et.
`1010
`al.
`1011 Deposition Transcript of Dr. Daniel Flamm
`1012
`Shih et al., “Patterned, Photon-driven Cryoetching of
`GaAs and AlGaAs,” J. Vac. Sci. Technol. B 13(1), pp.
`43-54 (1995).
`Rebuttal Declaration of Dr. Stanley Shanfield
`
`
`
`
`1013
`
`Previously
`Submitted
`X
`X
`X
`X
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`X
`X
`X
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`X
`X
`X
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`iii
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`IPR2016-01512
`Patent No. RE 40,264
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`I.
`
`Introduction
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`Petitioner Samsung Electronics Co., Ltd. (“Petitioner”) submits
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`the
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`following reply to the Patent Owner Response (Paper No. 9, “Response”) of U.S.
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`Patent No. RE 40,264 (“the ’264 patent”) (Ex. 1001). Patent Owner’s arguments
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`should be rejected and challenged claims 27, 31, 32, 34, 37, 40, 41, 44, 47, 48, and
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`50 of the ’264 patent found unpatentable and canceled for at least the reasons set
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`forth in the Petition (Paper No. 1) and accompanying exhibits, the Board’s decision
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`to institute inter partes review (Paper No. 6, “Decision”), cross-examination
`
`testimony, and the additional reasons below.
`
`Patent Owner does not dispute that the asserted combinations of prior art
`
`disclose the features recited in the challenged claims. Instead, Patent Owner
`
`focuses on whether the asserted combinations are proper. However, Patent
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`Owner’s attacks on Petitioner’s obviousness positions lack legal and factual bases
`
`and do not overcome the evidence demonstrating that the challenged claims are
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`unpatentable.
`
` For
`
`instance, Patent Owner’s primary argument regarding
`
`independent claims 27 and 37 is that controlling the time for changing the substrate
`
`temperature in Kadomura is of “no importance” and therefore, there would be no
`
`benefit to use Matsumura’s recipes in Kadomura. (See Response at 5, 9-10, 19-20,
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`22.) But, Patent Owner overlooks Kadomura’s disclosure that the time for
`
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`1
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`Patent No. RE 40,264
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`changing the temperature is an important factor that must be controlled in order to
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`prevent deterioration of throughput – a fact that even Dr. Daniel E. Flamm, the
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`named inventor of the ’264 patent who submitted a declaration in support of the
`
`response, acknowledged during his deposition. (Ex. 1011 at 101:20-25.)
`
`Patent Owner’s other arguments for claims 27 and 37 are equally
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`unpersuasive as they focus on unclaimed features and a misunderstanding of the
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`adopted grounds and conflict with the record evidence. (See, e.g., Response at 5,
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`10-18.)
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`Patent Owner’s arguments regarding the dependent claims are also
`
`unavailing. For instance, regarding claims 31 and 50, Patent Owner asserts
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`(without any evidence or explanation) that Narita’s lamp heater cannot be
`
`combined with Matsumura because Narita and Matsumura allegedly have different
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`temperature control systems. (Response at 23-24.) But these arguments are not
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`responsive to the instituted grounds involving the use of Narita’s lamp heater in
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`Kadomura’s apparatus (as modified by Matsumura). For claims 47 and 48, Patent
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`Owner asserts that the high temperature process of Wang II would be incompatible
`
`with the alleged cryogenic etching of Kadomura. (Response at 25-26.) But Patent
`
`Owner’s position is unsupported and conflicts with both Kadomura’s disclosure
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`and evidence demonstrating that a cryogenic etching process was not incompatible
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`2
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`Patent No. RE 40,264
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`with a high temperature process. Finally, Patent Owner’s arguments regarding
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`claims 34 and 41 are incorrect because they fail to appreciate that a layer including
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`tungsten silicide (WSix) and polysilicon has a different material composition
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`compared to a layer including only polysilicon. (Response at 26-30.)
`
`As explained in detail below, the record supports the instituted grounds in
`
`the Petition and the Board should find each of the challenged claims 27, 31, 32, 34,
`
`37, 40, 41, 44, 47, 48, and 50 of the ’264 unpatentable and cancel those claims.
`
`II. The Evidence Shows That Independent Claims 27 and 37 Are
`Unpatentable
`
`In the Decision, the Board agreed with the Petition’s showings that the use
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`of Matsumura’s “recipes” in Kadomura’s etching apparatus would have resulted in
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`an apparatus that changes the temperature of a specimen from a first substrate
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`temperature to a second substrate temperature “over a preselected time interval or
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`period.” (Decision at 20-21; Petition at 31-33.) The Board found that “using
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`Matsumura’s control ‘recipes’ in Kadomura’s dry etching apparatus and method is
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`a predictable use of prior art elements according to their established functions—an
`
`obvious combination that would improve Kadomura’s abilities to process different
`
`types of materials and substrates and provide better temperature control.”
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`(Decision at 22; Petition at 31-33.)
`
`In its Response, Patent Owner does not contest that the combination
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`discloses all limitations of independent claims 27 and 37. (See generally
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`Response; see also id., 6-8.) Rather, Patent Owner asserts that one of ordinary
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`skill would not have combined Kadomura and Matsumura and does so focusing on
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`limitations relating to changing the temperature of the substrate “within a
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`preselected time interval for processing” (claim 27) or “within a preselected time
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`period to process the film” (claim 37). (Response at 1.) For instance, Patent
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`Owner asserts there would have been no benefit or motivation to combine
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`Matsumura’s recipe with Kadomura such that the substrate temperature is changed
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`“within a preselected time interval.” (Id. at 9-10, 15-23.) Patent Owner also
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`alleges that “the obstacle in the way of modifying Kadomura with Matsumura’s
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`recipes is Kadomura’s teaching of changing the gas between etches.” (Id. at 10.)
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`These arguments, as well as the other positions Patent Owner presents, lack legal
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`and factual bases as explained further below.
`
`A.
`
`Patent Owner Is Incorrect That There Would Have Been No
`Benefit to Combining the Teachings of Kadomura and Matsumura
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`Patent Owner’s primary argument is that there would be no benefit to
`
`combining the teachings of Kadomura and Matsumura because Kadomura
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`allegedly teaches that “the specific time interval to change the temperature between
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`etches is of no importance.” (Response at 5, 9-10, 19-20, 22.) Patent Owner
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`contends that, in Kadomura, the time required to change the substrate temperature
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`4
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`Patent No. RE 40,264
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`between two etches “does not constitute a factor.” (Id. at 9-10, 19-20 (citing Ex.
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`1006 at 6:55-62, 7:22-30, 8:43-50, and 10:13-16).) Patent Owner’s argument boils
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`down to the following: it is not important to control the time for the substrate
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`temperature change in Kadomura and therefore, there would be no use of
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`Matsumura’s recipes (which control precise time-temperature relationships) in
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`Kadomura. Patent Owner is incorrect because, as acknowledged by both
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`Kadomura and Dr. Flamm (during his deposition), the time required to change the
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`substrate temperature must be controlled accurately to achieve Kadomura’s goal
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`of not lowering throughput. (See, e.g., Ex. 1006 at 7:19-30; see also Ex. 1013 at ¶
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`3.)
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`Kadomura explains that the following two steps occur between etches: (1)
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`the gases in the processing chamber are changed, and (2) while the gases are being
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`changed, the temperature of the substrate is changed. (Ex. 1006 at 6:36-62, 8:24-
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`50, 10:4-16; Petition at 26, 54; Response at 3-4; see also Ex. 1013 at ¶ 4.1)
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`According to Kadomura, the time required to change the temperature is “equal
`
`with or more than the time required for” changing the substrate temperature. (Ex.
`
`
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` 1
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` Petitioner submits the Rebuttal Declaration of Dr. Shanfield, which responds to
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`certain positions taken by Dr. Flamm. (Ex. 1013 at ¶¶1-18.)
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`5
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`1006 at 6:58-60, emphasis added.) As acknowledged by Dr. Flamm during his
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`deposition, because the time to change the gases (time “A”2) is more than or equal
`
`to the time to change the specimen temperature (time “B”3), the throughput is not
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`adversely affected:
`
`Kadomura discloses that A is either equal to
`Q.
`or more than B, correct?
`A.
`Correct; inclusive of, yes.
`Then Kadomura explains that because A is
`Q.
`greater than or equal to B, B does not end up lowering
`the throughput?
`A.
`That sounds accurate.
`
`(Ex. 1011 at 101:13-19; Ex. 1006 at 7:19-30.)
`
`Therefore, controlling the specific time interval for changing temperature
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`(i.e., time “B” in the hypothetical posed to Dr. Flamm during his deposition) is
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`important in Kadomura because if time “B” were not controlled accurately and
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`“B” exceeded “A” (i.e., the time to change gases), the throughput would
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`deteriorate:
`
`
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` 2
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` (See Ex. 1011 at 100:9-13 (referring to the gas change step as the “purge” step),
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`101:3-7 (referring to the “purge” step as time interval “A”).)
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`3 (See Ex. 1011 at 101:8-12.)
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`So if B was greater than A, then B would be
`Q.
`rate limiting, correct?
`A.
`In those – in that terminology, yes.
`Q. And if B exceeded A, then B would lower
`the throughput --
`A.
`Sure.
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`(Ex. 1011 at 101:20-25; see also Ex. 1013 at ¶¶ 5-6.)
`
`In sum, Patent Owner’s argument that “the specific time interval to change
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`the temperature between etches is of no importance” (Response at 5, 19-20) is
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`contradicted by Dr. Flamm’s own testimony and Kadomura. Moreover, Patent
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`Owner’s assertion that the time interval to change temperature does “not constitute
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`a factor in the process,” (id. at 9, citing, inter alia, Ex. 1006 at 6:55-62) misreads
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`Kadomura’s disclosure, which simply states that the time interval does “not
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`constitute a factor of delaying” (Ex. 1006 at 6:55-62, emphasis added) the etch
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`process.4 The time interval to change the temperature is a “factor” affecting the
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`process and must be controlled as evidenced by Dr. Flamm’s testimony. (Ex. 1011
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`at 101:20-25; see also Ex. 1013 at ¶¶ 6-7.)
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`As pointed out in the Petition and acknowledged in the Decision, one of
`
`ordinary skill would have understood the need to accurately control the time for the
`
`temperature change and would have been motivated to use Matsumura’s “recipes”
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`to improve Kadomura’s process because these “recipes” would “provide better
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`temperature control” and allow the substrate temperature to be changed “in a
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`controlled manner.” (Petition at 32; Decision at 21-22; Ex. 1002 at ¶ 61.) Even
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`Dr. Flamm seemed to recognize that controlling the time to change the substrate
`
`temperature would have been necessary in order to ensure that throughput is not
`
`deteriorated. (Ex. 1011 at 101:20-25.) As explained in the Petition, one of
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` 4
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` Patent Owner offered similar arguments in the Preliminary Response, which the
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`Board rejected in support of a finding that the application of Matsumura’s
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`“recipes” in Kadomura is simply a “predictable use of prior art elements according
`
`to their established functions – an obvious combination that would improve
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`Kadomura’s abilities to process different types of materials and substrates and
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`provide better temperature control.” (Decision at 21-22.)
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`ordinary skill would have known that Matsumura’s recipes would have been able
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`to provide such accurate temperature control because the recipes allow an
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`“accurate control” of the “thermal history curve.” (See Petition at 13, 21, 28-29;
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`Ex. 1002 at ¶¶ 31-35, 57-61 (explaining that Matsumura’s disclosed methods, i.e.,
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`“recipes,” allow for accurately controlling the thermal history curve); see also Ex.
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`1007 at 2:60-65, 10:21-29; see also Ex. 1013 at ¶¶ 7-8.)
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`Patent Owner also contends that “[t]here would be no benefit from
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`attempting to preselect a time period to change the Kadomura temperature
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`since . . . foreshortening the time for changing temperature would not otherwise
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`improve the Kadomura process.” (Response at 4.) But Petitioner never advocated
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`that the use of recipes would be for shortening the time to change the substrate
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`temperature. Rather, as discussed above, Petitioner explained that one of ordinary
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`skill would have used Matsumura’s “recipe” for better control of Kadomura’s
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`temperature setting process. (Petition at 31-33; Decision at 22.)
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`Patent Owner also takes issue with the position that the use of Matsumura’s
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`“recipes” would have improved the utility of Kadomura’s system to process
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`different types of materials and substrates and alleges that this rationale is
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`“conclusory.” (Response at 20-21; see also Petition at 32; Decision at 22.)
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`However, as admitted by Patent Owner, Kadomura discloses processing different
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`9
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`materials: “polysilicon layer 32 and WSix layer 33” in the first embodiment, “SiO2
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`layer 41” in the second embodiment, and a “polysilicon layer 51” in the third
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`embodiment. (Response at 21.) Each of these embodiments involves two etching
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`steps where the temperature of the substrate has to be changed to different values
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`in each embodiment: from 20° C to -30° C (1st embodiment), from -20° C to -50°
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`C (2nd embodiment), and from -30° C to 50° C (3rd embodiment). (Response at
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`19; Ex. 1006 at 6:17-7:7, 8:5-64, 9:54-10:27.) For each of these different
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`processes involving different materials, the time to change the substrate
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`temperature is different, e.g., about 30 seconds for the 2nd embodiment and about
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`50 second for the 3rd embodiment (Ex. 1006 at 6:52-54, 10:11-13), and must be
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`controlled, which the “recipes” taught by Matsumura would have allowed
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`Kadomura to do. (Petition at 32, “allowing the specimen W to be set to several
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`different temperatures in a controlled manner”; see also Decision at 22.) And as
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`noted above, Dr. Flamm even realized that the time to change the substrate
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`temperature in Kadomura must be controlled to prevent deteriorating throughput.
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`Therefore, contrary to Patent Owner’s positions, using “recipes” like those taught
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`by Matsumura would have provided a benefit of improving the utility of
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`Kadomura’s system to process different types of materials and substrates. (See
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`e.g., Petition at 32; Ex. 1002 at ¶¶ 60-61.)
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`Patent Owner’s Other Arguments Are Equally Unavailing
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`B.
`Patent Owner’s other arguments against the combination of Kadomura and
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`Matsumura are equally unavailing for the reasons below. (Response at 5, 10-23.)
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`For instance, Patent Owner contends that Kadomura “teaches away from the
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`’264 patent” because the time between Kadomura’s etches is “about 30 seconds”
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`and that the ’264 patent discloses a time interval between etches of “several
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`seconds,” which is “an order of magnitude shorter than anything in Kadomura.”
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`(Response at 5.) But none of the challenged claims recite the time duration
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`between the first etch and second etch and “[a]lthough the claims are interpreted in
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`light of the specification, limitations from the specification are not read into the
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`claims.” In re Van Geuns, 988 F.2d 1181 (Fed. Cir. 1993). Patent Owner’s so-
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`called “teach away” argument is merely an unsubstantiated individual attack on
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`Kadomura and lacks any legal basis. Indeed, for a finding of teaching away,
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`Patent Owner would have to show that Kadomura criticizes, discredits, or
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`otherwise disparages the claimed invention. Meiresonne v. Google, Inc., 849 F.3d
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`1379, 1382 (Fed. Cir. 2017) (internal citations omitted). Patent Owner does not
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`even come close to meeting that burden.
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`Patent Owner also contends that “a proposal that Kadomura be modified to
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`eliminate its gas exchange procedure would change the principle of operation of
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`the prior art invention being modified.” (Ex. 2001 at ¶ 21; Response at 10-14.)
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`But this is a straw man argument and should be dismissed. Nowhere did Petitioner
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`or the Board even suggest removing the gas change step between etches in the
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`combination of Kadomura and Matsumura.5
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`Patent Owner further contends that “Matsumura’s recipes would do nothing
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`beneficial for Kadomura” because “they have no utility at all for plasma etching.”
`
`(Response at 15.) But Matsumura explicitly discloses that its processes can be
`
`applied to “any of the ion implantation, CVD, etching and ashing processes.” (Ex.
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`1007 at 10:3-7, emphases added; see also Petition at 13; Ex. 1002 at ¶¶ 31, 49.) As
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`acknowledged by Dr. Flamm, an “ashing process” is a plasma etching process for
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`removing photoresist. (Ex. 1011 at 62:25-63:3.) Thus, Patent Owner’s argument
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`against combining the prior art as set forth in the Petition on this basis should be
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`disregarded.
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`
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` 5
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` Patent Owner’s reliance on the M.P.E.P. for relief (see Response at 10-13) is
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`misplaced as the M.P.E.P. is not binding in inter partes reviews. See Smith &
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`Nephew, Inc. et al v. Arthrex, Inc., IPR2016-00505, Paper No. 10 at 15, 25 (July
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`27, 2016).
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`Additionally, Patent Owner asserts that “a Matsumura type temperature
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`control apparatus would have degraded
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`the reproducibility, control, and
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`temperature uniformity of Kadomura’s system.” (Response at 16.) This is
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`allegedly because Kadomura uses “feedback control to adjust heating/cooling to
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`maintain the desired substrate temperature . . . [while] Matsumura on the other
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`hand, taught ‘open loop’ control of his substrate temperature . . . ha[ving] nothing
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`capable of maintaining a temperature in the presence of external heating.” (Id.,
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`emphases added.) Patent Owner’s assertion is incorrect.
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`Contrary to Patent Owner’s assertion, Matsumura discloses a feedback
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`control system to control its substrate temperature. (See Ex. 1007, 7:19-32 (“The
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`temperature measured is determined on the basis of the detection signal in the
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`digital adder 202 and the amount of current supplied to the conductive thin film 14
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`is feedback-controlled responsive to the temperature measured”); see also id at
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`8:25-35, 9:9-15; Petition at 40.) Because Matsumura utilizes a feedback system to
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`control its process, one of ordinary skill would have understood that its system
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`accounts for external heating (e.g. plasma and ion bombardment, highly
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`exothermic etching reactions) given that Matsumura explicitly discloses that its
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`invention can be applied to “any of the ion implantation, CVD, etching and
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`13
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`ashing6 processes.” (Petition at 13, citing Ex. 1007 at 10:3-7; Ex. 1002 at ¶¶31-35,
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`49.)
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`Patent Owner also argues against the asserted combination because
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`Matsumura allegedly “us[es] nothing at all to control the thermal resistance”
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`between the substrate and its holder, while Kadomura does. (Response at 16-17.)
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`But Patent Owner does not explain the significance of these differences in
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`connection with the asserted combination as the challenged claims do not require
`
`controlling thermal resistance. Moreover, Patent Owner’s argument ignores that
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`“the test for obviousness is not whether the features of a secondary reference may
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`be bodily incorporated into the structure of the primary reference,” and it is not
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`necessary” that the references “be physically combinable” to render obvious the
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`claimed invention. Allied Erecting & Dismantling Co. v. Genesis Attachments,
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`LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (internal citations omitted). As long as
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`there was a reason why one of ordinary skill in the art would have modified the
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`prior art to obtain the claimed invention and could have done so with a reasonable
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`expectation of success, the claimed invention would have been obvious. See
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` 6
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` As discussed above, Dr. Flamm acknowledges that an ashing process is a plasma
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`etching process. (Ex. 1011 at 62:25-63:3.)
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`14
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`Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1003, 1004 (Fed. Cir. 2016);
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`Cumberland Pharm. Inc. v. Mylan Institutional LLC, 846 F.3d 1213, 1221, 1222
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`(Fed. Cir. 2017) (internal citations omitted). That is the case here as the evidence
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`demonstrates.
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`Additionally, even assuming the alleged difference in thermal resistance
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`control in Kadomura and Matsumura is relevant (it is not), Patent Owner misreads
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`Matsumura. Matsumura discloses that its substrate holder (stage 12) can be made
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`of alumina or ceramics having “character of insulation and thermal conductivity.”
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`(Ex. 1007 at 5:34-37.)
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` Further, Matsumura discloses “[t]he temperature
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`distribution on the surface of the upper plate 13a can be made uniform” and “[t]he
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`loss of heat energy can be thus reduced smaller than 5% . . . mak[ing] it possible to
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`neglect heat loss at the wafer-heating time” such that the temperature difference of
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`the substrate and its holder is within “± 0.5° C.” (Ex. 1007 at 9:33-43.) Thus,
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`thermal resistance in both Kadomura and Matsumura are property controlled –
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`ensuring the heat is adequately conducted from the substrate holders to the
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`substrates, and vice versa.
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`Moreover, the Petition did not propose using Matsumura’s holder as
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`suggested by Patent Owner. Rather, the proposed combination simply involves the
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`use of a “recipe” like Matsumura’s for controlling the temperature changes in
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`15
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`Kadomura. (See Petition at 31-33; Decision at 22.) Patent Owner’s argument is
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`simply a piecemeal attack on the references and does not address the combination
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`as proposed in the Petition and considered by the Board in its Institution Decision.
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`Patent Owner makes similar errors in its contention that “Kadomura’s
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`control system is adapted to control the cryogenic temperatures in a low pressure
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`etching environment in his recipes” and that the “materials and design of the
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`Matsumura system are incompatible with such an environment.” (Response at 17-
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`18.) Petitioner did not propose replacing Kadomura’s materials or design with
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`Matsumura’s. Rather, the proposed combination involves the use of a “recipe”
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`like Matsumura’s for controlling the temperature changes in Kadomura. (See
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`Petition at 31-33; Decision at 22.) Patent Owner’s argument is also legally
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`incorrect because Kadomura and Matsumura do not have to physically combinable
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`and obviousness does not require that the features of Matsumura’s system be
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`bodily incorporated into Kadomura. See Allied Erecting & Dismantling Co., 825
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`F.3d at 1381. As the evidence demonstrates, there was a reason why one of
`
`ordinary skill in the art would have modified the prior art to obtain the claimed
`
`invention and could have done so with a reasonable expectation of success – that is
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`sufficient to render the claimed invention obvious. See Unwired Planet, LLC v.
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`16
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`Google Inc., 841 F.3d at 1003, 1004; Cumberland Pharm. Inc., 846 F.3d at 1221,
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`1222.
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`Lastly, Patent Owner asserts that Petitioner “presented no evidence to
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`support its motivation contention and has wholly failed to ‘articulate a reason why
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`a PHOSITA would combine the prior art references.’” (Response at 22-23.)
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`Contrary to Patent Owner’s assertion, the disclosures of the prior art pointed out in
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`the Petition and its supporting expert testimony supports and explains why one of
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`ordinary skill would have combined Kadomura and Matsumura in the manner set
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`forth in the Petition. (See e.g., Petition at 10-15, 19-33; see also e.g., Ex. 1002 at
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`¶¶ 26-35, 47-50, 60-61.)
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`For all of the above reasons and those set forth in the Petition, the Decision,
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`and other evidence of record, Patent Owner’s arguments regarding independent
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`claims 27 and 37 lack merit. The evidence in this proceeding demonstrates that
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`these claims are unpatentable over the Kadomura and Matsumura combination,
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`and therefore these claims should be canceled.
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`III. The Evidence Shows That Dependent Claims 31, 32, 34, 40, 41, 44, 47,
`48, and 50 Are Unpatentable
`A. Kadomura, Matsumura, and Narita Render Obvious Claims 31
`and 50
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`Claims 31 and 50 depend from independent claims 27 and 37, respectively,
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`and recite “wherein the first substrate temperature is changed to the second
`17
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`substrate temperature by transferring energy using at least radiation.” As
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`explained in the Petition and the Decision, one of ordinary skill would have found
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`it obvious to include Narita’s heater (e.g., infrared ray lamp, halogen lamp, or
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`normal heater) that heats a workpiece using radiation in Kadomura’s apparatus.
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`(Decision at 24-25; Petition at 48; Ex. 1008, 2:63-65.) Patent Owner disagrees for
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`three reasons, each of which is incorrect.
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`First, relying on the testimony of Dr. Flamm, Patent Owner contends that
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`“Matsumura’s control system depends on his heater temperature being determinate
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`of wafer temperature” and that “Narita’s radiant heat source would defeat
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`Matsumura basis for control.” (Response at 23, citing Ex. 2001 at ¶ 33.) But
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`neither Patent Owner nor Dr. Flamm provides any evidence or explanation to
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`support that Narita’s radiant heat source would defeat Matsumura’s basis for
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`control. (See Ex. 2001 at ¶ 33.) Therefore, Dr. Flamm’s testimony relied upon by
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`Patent Owner should be entitled to little or no weight. 37 C.F.R. § 42.65(a).
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`(“Expert testimony that does not disclose the underlying facts or data on which the
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`opinion is based is entitled to little or no weight.”) Moreover, Patent Owner’s
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`argument is not responsive to the combination set forth in the Petition and the
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`Decision. Specifically, the combination relies on the incorporation of a heater
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`similar to Narita’s in Kadomura’s apparatus (as modified by Matsumura) to serve
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`18
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`as a heat source (Decision at 24-25; Petition at 48) and therefore, Petitioner’s
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`attack on an alleged failure of Matsumura’s control system because of Narita’s
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`heat source is improper.
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`Further, to the extent that Matsumura’s control system factors into the
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`assessment of the proposed combination, one of ordinary skill would have
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`understood Narita’s radiant heat source is compatible with both Kadomura and
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`Matsumura bases for control. (See also Ex. 1013 at ¶¶ 9-10.) For instance, Narita
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`discloses using sensors (i.e., pyrometer and thermocouple) to detect wafer
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`temperature and to provide feedback to an IR lamp current controller for
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`controlling the output of the IP lamp. (See Ex. 1008 at FIG. 3, 5:11-42; see also
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`Ex. 1013 at ¶ 10.) Similar to Narita, each of Kadomura and Matsumura, as
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`discussed in Section II.B. above, also uses a feedback system to control the
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`heating/cooling of the wafer. (See Ex. 1002 at ¶¶ 71-73; Ex. 1006 at 12:37-48; Ex.
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`1007 at 7:19-32; see also Ex. 1013 at ¶ 10.) Accordingly, Narita demonstrates its
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`radiation heat source is compatible with the feedback control systems disclosed in
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`Kadomura and Matsumura. (See also Ex. 1013 at ¶ 10.) Patent Owner’s assertion
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`that “Narita’s radiant heat source would defeat Matsumura basis for control” is
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`therefore incorrect.
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`Second, Patent Owner contends that Narita’s infrared ray lamp or halogen
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`lamp could not have been combined with Kadomura because of concerns that such
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`a combination would degrade “uniformity and control.” (Response at 24, citing
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`Ex. 2001 at ¶ 34.) Patent Owner’s only support for this allegation is a citation to
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`Dr. Flamm’s declaration, which is conclusory and provides no evidence or
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`explanation and thus is entitled to little or no weight. 37 C.F.R. § 42.65(a). For
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`instance, Dr. Flamm offered no explanation as to what he means by “uniformity
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`and control,” how Kadomura achieves “uniformity and control,” and why such
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`“uniformity and control” would be degraded by the use of a heat source (e.g., a
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`lamp) similar to Narita’s. To the extent Dr. Flamm refers to temperature
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`uniformity and control, he ignores that Narita discloses that, even using a lamp, the
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`wafer can have a uniform temperature distribution. (See Ex. 1008, 4:61-67, “The
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`mount base 3 has a
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